- What Happens After Your Non-Provisional Patent Application Is Filed?
- March 9, 2017
- Law Firm: Law Offices of Roland Tong - Irvine Office
Now that you have filed your non-provisional patent application, what will happen next? Upon filing your application, you should get an application serial number. This is your proof that you have a patent pending. You can now start marketing your products as "patent pending." You can also include the phrase "patent pending" in your legal disclaimers. If you have not done so, you must disclose to the U.S. Patent and Trademark Office (USPTO) all the relevant prior art that you know. The patent application process is an ex parte process, and therefore imparts a duty of candor to the applicants and their attorneys. Part of your duty of candor to the USPTO is disclosing to them the relevant prior that you are aware of. This is submitted through an Information Disclosure Statement. A patent can be invalidated later on if you fail to disclose known relevant prior art to the USPTO.
A few months after your patent application is filed, the USPTO assigns your patent application to an art unit according to the type of technology your invention fits in. The USPTO also assigns an examiner to examine your application. After about 2-3 years, you will receive your first substantive correspondence from the Examiner. Your first correspondence may be a restriction requirement or a non-final office action.
A restriction requirement is issued when the Examiner finds multiple inventions being claimed. Typically, when your claims fall into one or more technology classes and require the Examiner to search in different fields of technology, the Examiner will issue the restriction requirement. The restriction requirement will list several groups of claims, and you have to elect one group that you want examined. The groups that you did not elect will be withdrawn. You have to file a divisional application if you want them examined. The Examiner will start the examination process after receiving your election and you will receive a non-final office action.
The non-final office action typically includes any objections the examiner may have on the drawings, the specification, or the claims. The Examiner typically makes these objections when the formalities are not being observed, or if something is not clear from the application. These objections can typically be fixed by filing the appropriate amendments. The non-final office action may also include rejections of the claims based on improper subject matter 35 U.S.C. Section 101, lack of novelty under 35 U.S.C. Section 102 or obviousness under 35 U.S.C. Section 103. These rejections will include a recitation of the legal bases, including the prior patent reference or publication that the Examiner is relying on and an explanation why the Examiner believes the claims do not meet the requirements. Oftentimes, these rejections can be overcome by amending the claims and/or submitting convincing arguments as to why the claims are novel or non-obvious over the prior art.
It is important that you review the cited prior art and discuss all the differences that you find between the prior art and your invention with your Patent Attorney. A good and experienced Patent Attorney can find ways to use these differences to convince the Examiner and/or to amend the claims to overcome the rejections. The response is due three months from the mailing date of the office action. An extension of time of up to 3 months is available by paying the USPTO's extension of time fees.
If you overcome the rejections, then you will receive a Notice of Allowance from the USPTO. The certificate of patent will be issued after you pay the issue fee. If you did not overcome the rejections, you will receive a final office action. You have additional opportunities to overcome the rejections at this point. You should consult with your Patent Attorney whether to file an after final amendment, request for continued examination, or file an appeal.