What happens with a patent application after it is filed?

Once a utility or design patent application is filed, it is assigned to an Examiner at the Patent and Trademark Office who is thereafter responsible for that application. It is not uncommon for it to take eighteen months or more to receive a first substantive action on the application. This takes the form of a written communication, called an "Office Action," that states any reasons for rejecting your application. In the vast majority of applications, a rejection of some or all of the application is received. The Examiner will have conducted his or her own search and will invariably find some different prior art than that provided by the inventors. If there is a substantive rejection, an applicant is normally permitted three months to respond, although extensions can be obtained by payment of a fee up to a total of six months. Responses are most often in the form of a written argument, although a personal or telephonic interview can be conducted with the Examiner and followed up with a written argument. The form of response is governed by the rejection made by the Examiner, in addition to the value of the invention and timing considerations.

Based on the arguments and any amendments to the claims presented in a response, the Examiner may or may not allow the claims. Another round of Examiner's rejections and attorney's arguments is fairly common. If the application proceeds to a final rejection of the claims, at least one more amendment can be made to further argue and amend, if necessary. If the next response is unsuccessful and the inventor and inventor's attorney are in agreement, an appeal can be made to the Board of Appeals. The Board of Appeals is a group of administrative judges, the majority of whom were patent examiners. An appeal, however, can be a relatively costly route. Once agreement is reached on the claimed protection, the application is allowed and an issue fee is paid for the patent to be granted. The fees charged by the U.S. Patent Office, however, are adjusted on a periodic basis.