The Patent Examination Process

Once your patent application is properly filed with the United States Patent Office, the Patent Office will issue an Official Filing Receipt with the United States Application Serial Number and the Filing Date. This official Filing Date is important because when it relates to Patents, dates are very meaningful in classifying Prior Art. The Patent Office will then classify the application based upon the technology involved and allocate it to a Patent Examiner for search and review.

After the Examiner receives the patent application, they read the specification and claims. Based upon their review of the patent application, the Examiner then compiles a search strategy and searches the prior art to determine if the claims define a new and useful invention.

The Examiner will then usually issue an Official Action that may include objections and rejections to the specification, drawings and claims. These objections and rejections will normally consist of positions taken under 35 USC Section 101 (Statutory Subject Matter), Section 102 (lack of novelty and direct anticipation of the claims by the Prior Art), Section 103 (lack of novelty because the claims are considered obvious from the Prior Art), or Section 112 (problems with how the specification describes the invention).

One type of Official Action is known as a Restriction Requirement. In a Restriction Requirement, the Examiner determines that there are two or more inventions claimed within your patent application. The United States Patent Office only allows one (1) invention to be claimed within a patent application. If the Examiner has determined that there are multiple distinct inventions claimed within one patent application and they will require you to choose one of the noted inventions and restrict the others out. You will be allowed to pursue the restricted claims in Divisional patent applications, where you must pay additional fees to have those restricted inventions examined.

You should not be disappointed that you received an Official Action from the United States Patent Office. An Official Action citing Prior Art means that you are negotiating with the Patent Examiner about claim scope and validity. A “first action Allowance” means that you either claimed your invention so that the Patent Examiner could not find any relevant Prior Art that could conflict with your claimed invention, or you may have claimed your invention too narrowly.

You should consider the patent application process as a negotiation that you are undertaking with the United States Government about the scope of your Patent Rights. It involves a back and forth discussion regarding your claim scope and involves real economic value, just like any other negotiation you undertake in your life.

At each stage you should be deciding whether continuing the negotiation is economically worthwhile in obtaining the scope of rights you are seeking or whether you should capitulate to the scope of rights being offered by the Patent Examiner on behalf of the United States Government. The failure to get any Official Action means that you were never really negotiating. You simply sold too low!! SHERMAN IP Attorneys are trained to help you understand what you are fighting for, the likelihood of getting wider claim scope and the cost you will undertake in proceeding.

Once you receive the Official Action, you have six (6) months to prepare and file a response to most Official Actions. However, generally any responses filed more than three (3) months after the Official Action require you to pay increasing monthly extension fees and should be avoided.

Your response will take the form of an Amendment or Response addressing the Examiner’s objections and rejections’, including amending the claims to avoid the Examiner’s cited Prior Art and making arguments about why the Examiner’s positions are mis-placed. In many ways, the preparation of the appropriate response strategy is an art form in convincing the Examiner to allow the application, and SHERMAN IP attorneys are well versed in techniques to obtain the largest claim scope in the quickest manner at the most efficient cost. However, often the success of the response depends on the subjective opinion of the Patent Examiner that is assigned your patent application. An Examiner Interview may also be held in the process, and your SHERMAN IP attorney may recommend holding an Examiner Interview to advance your case.

At some point in the process, the Examiner may issue a Final Rejection. In a Final Rejection, the Examiner believes that a clear issue has developed between the Examiner and the Applicant. You simply disagree as to whether the claims in their stated form present allowable subject matter. Again, SHERMAN IP attorneys are trained to help you understand the issue so that you can make a business decision whether to Appeal the Examiner’s decision, to capitulate to the Examiner’s position or to pursue some other avenue to continue pursuing your desired claim scope.