Patent Prosecution: The Road to Allowance

Acquiring a patent is a little like playing a board game. If you are the applicant, you must move the invention through the U.S. Patent & Trademark Office (USPTO) examination process, avoiding certain obstacles, such as technical errors or delays, while preserving the strongest possible claims for patent protection. The process of shepherding a patent application through the USPTO is known as patent prosecution. In this article and others, we discuss the common elements of patent prosecution and provide background on USPTO procedures.

Examiners and applicants rely on three resources during patent prosecution:

• Patent statutes. The patent laws passed by Congress are found in Title 35 of the United States Code (35 U.S.C.).
• Patent Rules of Practice. The Patent Rules of Practice are administrative regulations located in Volume 37 of the Code of Federal Regulations (37 C.F.R. Sec.1).
• Manual of Patent Examining Procedure (MPEP). The MPEP is often referred to as the “examiner’s bible” because it covers almost any situation encountered in patent prosecution. It contains the USPTO’s Rules of Practice and the patent statutes described below. These resources can be obtained from the USPTO’s website, www.uspto.gov.

The Steps of Patent Prosecution

Patent prosecution usually proceeds through the following steps:

• the USPTO receives and catalogs the patent application
• a USPTO examiner examines and
• initially rejects (or sometimes “allows,” that is, “accepts”) the claims of the application
• the applicant responds to the rejection with an amendment, and
• the USPTO examiner reviews the amendment and either issues a Notice of Allowance or makes a final rejection of the application.

The goal during patent prosecution is to obtain a Notice of Allowance, a statement from a USPTO examiner that the application meets the legal requirements of patentability. Of course, not all applications meet this standard. In the event the examiner sends a “final office action,” there are still several options as discussed in in the articles listed below.

Receipt of Application

If you filed your application electronically using the EFS-WEB system, you’ll get an Acknowledgment Receipt, which is analogous to the receipt postcard (discussed below) which was used for mailed filings. The Acknowledgment Receipt will list the Application (Serial) Number, the Confirmation Number, the application data and parts that you’ve filed. If a paper application is file and a return postcard is enclosed with the application, the USPTO will stamp and return this and it becomes the first correspondence from the USPTO. The postcard usually arrives within two to four weeks of filing. It is stamped with a date and an eight-digit number, for example, “U.S. Patent & TM Office, 22 August 2011; 09/801,666.” The date is the “deposit” date, or date of receipt, and the number is the serial number (sometimes called “application number”) of the inventor’s application. The serial number and filing date should be maintained in confidence.

If an administrative error was made in the application, such as failing to sign a form or pay the fee, the USPTO’s Application Branch will send a deficiency notice explaining what’s required and sometimes also requiring a penalty fee. Once the applicant complies, the USPTO will mail the filing receipt.

The following articles address issues that commonly arise in patent prosecution:

• Responding to a First Office Action
• Responding to a Final Office Action
• Patent Prosecution Problems:  Interferences, Divisionals, Reissues, Substitutes and Double Patenting

Portions of this article are derived from Nolo's Patents for Beginners.