What is the life cycle of a utility patent application?
It may help to think of the life cycle of a utility patent application as having a beginning, middle and end:
- Beginning: Initial filing of non-provisional patent application (approx. 1-2 months);
- Middle: Prosecution of patent application (approx. 1-5 years); and
- End: Grant or abandonment of application.
Beginning: Initial filing of non-provisional application
Utility patent protection starts with the initial filing of a non-provisional patent application. While a provisional application may be filed to preserve an earlier filing date, the provisional application serves as only a temporary placeholder. Unless and until the applicant files a non-provisional application, the utility application will go nowhere.
Cost of drafting a non-provisional application
Initial filing costs range widely and depend largely upon the complexity of the invention and the number of examples (aka “embodiments” in legalese). For simpler inventions with one to three embodiments, initial filing costs may range from $7-11K. Inventions of medium complexity may range from $11-17K, while highly complex inventions may exceed $17K.
Keep in mind these estimates cover only the initial filing, and not the middle stage of the application which we call “patent prosecution.”
How long does it take to file a non-provisional application?
In most cases, it can take 1-2 months to prepare and file a non-provisional application. At our firm, the process starts by receiving the invention disclosures.
Middle: Prosecuting the patent application
The middle stage of the patent life cycle consists of going back and forth with the USPTO. This is a years-long process that will ultimately make or break your patent.
The USPTO patent examiner focuses on the claims located towards the end of the written specification. Those claims define the scope of utility patent protection sought by the applicant.
After the initial filing of a non-provisional application, this is a fairly typical sequence of events:
- Non-final Office Action
- Final Office Action
- If case is not allowed after responding to first Final Office Action, file Request for Continued Examation (RCE) and repeat step 1 above.
- If case is not allowed after responding to second Final Office, consider second RCE or appeal.
How long does the middle stage of a patent application take?
The median time from the initial filing to a first Office Action is approximately 19 months. The deadline to respond to a substantive Office Action is 3 months without an extension, and up to 6 months with a request for extension of time.
It’s easy to see how the ongoing prosecution of a patent application can easily take 2-4 years, especially after a handful of Office Actions.
How to know when to appeal or abandon
This is not an easy decision, and certainly not one you should make without consulting with your patent attorney. One question our team will often ask is whether if there are still any further meaningful claim amendments we can make without sacrificing too much scope. If so, it may be worthwhile to file another amendment.
If not, you should assess your probability of success in appealing the rejection. If any claims were rejected under Section 103 as being obvious, consider whether you have introduced into the record sufficient secondary evidence of non-obviousness.
Before filing the appeal, it may be worthwhile to conduct at least one Examiner Interview if your agent hasn’t done so already. Sometimes, a great deal of clarity and progress may be accomplished by simply talking to an examiner.
End: Grant or abandon
Hopefully, your journey will lead to an issued US patent. If you’ve received a Notice of Allowance, you will want to consider whether it may be worthwhile to file placeholder continuation to pursue additional claims.
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