So your utility non-provisional patent application has been filed. Now what?

Waiting Game

You can say “patent pending” as soon as your application has been filed. As of mid-2015, the median wait time for a patent examiner to review a non-provisional application was approximately 18 months after the initial filing. In the meantime, you will receive a Filing Receipt identifying your application number and filing date.

Hearing Back from the USPTO – First Communication From the Patent Examiner

Each patent examiner focuses on a particular subject matter and belongs to a specific group in the USPTO called an “art unit.” Depending upon which art unit your application is assigned, there is roughly a 80-90% chance your patent application will be rejected in the first communication from the patent examiner. This is very common, so it’s nothing to get disheartened about. You will likely receive a letter called a non-final Office Action rejecting your patent claims and citing prior art references upon which the claim rejections are based. This first Office Action will may also contain rejections based on indefinite claim language. If you’re applying for a software or business method patent, you may also receive a rejection under Section 101 on the grounds that your invention is ineligible for patent protection.

Responding to an Office Action

The cost for responding to an Office Action will depend largely upon the nature of the rejections and the number of prior art references. The more prior art references to argue against, the greater the cost. Section 112 indefinite rejections are typically simpler and cheaper to resolve. The cost of an Office Action response can range from under $1,000 to $3,000, not including any USPTO fees. The most common USPTO fees for Office Action responses include fees for extensions of time and excess claims.

When Must an Office Action Response Be Filed?

You typically have the first three months to respond to a non-final Office Action without having to pay for an extension of time. Thereafter, you may file the response with an appropriate extension request and payment. For substantive Office Actions, you will have a maximum of six months to respond to an Office Action if you request a 3-month extension of time.

Costs of Ongoing Prosecution of Your Patent Application

The filing and ongoing handling of a pending application is referred to as “patent prosecution.” Apart from the cost of the initial filing, the total cost of the back-and-forth communications with the patent examiner can add up to $10,000 or more. It’s not uncommon to respond to three or more Office Actions, and there’s no guarantee you will get any claims allowed after all those responses. If no progress is made after a certain point, you’ll need to give serious consideration to filing an appeal.

Notice of Allowance

If and when your application is allowed, the examiner will issue a Notice of Allowance setting forth a deadline for paying the issue fee. After paying the issue fee, you will receive an Issue Notification identifying the patent number and exact date your patent will be granted.

Cash Flow Considerations

If cash flow is a major consideration (which is almost always the case for early stage startups), then there’s a certain relief in knowing that you won’t have to shell out a bunch of cash soon after the initial filing (for which you may already spent a sizable sum). Since you have roughly a year-and-a-half to receive the first Office Action, you’ll have some time to save or raise more capital before having to spend $1-3K for each Office Action response.

Ongoing Duty to Disclose Known Prior Art

While an application is pending, the applicant has an ongoing duty to disclose to the Patent Office any known prior art that is material to patentability. The obligation is not to search the prior art, but to disclose relevant prior art that is already known to the applicant or its counsel. If you have related patent applications pending in the US or in foreign countries, you will likely be filing at least one Information Disclosure Statement (IDS) to disclose to the examiner the prior art references uncovered in those related cases.

 

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.
Vic Lin

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