Introduction
Patent prosecution is the process of obtaining a patent from a patent office. In the United States, patent prosecution involves communicating with the United States Patent and Trademark Office (USPTO) after filing a patent application until the application is either allowed or finally abandoned; the process may include appeal, continuations, or Request for Continued Examination (RCE).
Although the process may appear complicated at first, understanding each stage can help inventors, entrepreneurs, engineers, and businesses navigate the patent system more effectively.
This guide explains the typical procedure for patent prosecution in the United States.
What Is Patent Prosecution?
Patent prosecution refers to the interactions between a patent applicant (or the applicant’s representative) and the patent examiner during examination of a patent application.
The examiner reviews the application to determine whether it satisfies the legal requirements for patentability, in which anticipation and obviousness are the most frequent reasons for rejecting a claim.
Patent prosecution generally does not include patent infringement lawsuits or disputes between private parties. Those matters fall under patent litigation.
Step 1: Preparing the Patent Application
Patent prosecution begins with preparing a patent application.
A complete utility patent application typically includes:
- A specification describing the invention
- One or more patent claims
- Drawings, when required
- An abstract
- Required application forms
- Applicable filing fees
The specification should describe the invention in enough detail to enable a person having ordinary skill in the relevant technology to make and use the invention (35 U.S.C 112(a)).
Well-drafted claims are particularly important because they define the legal scope of patent protection.
Question: Which federal agency deals with a patent application?
Answer: United States Patent and Trademark Office
Step 2: Filing the Patent Application
Once the application is complete, it is filed with the USPTO.
After filing, the applicant receives:
- An application number
- A filing date
- An official filing receipt
The filing date is especially important because it often establishes priority over later-filed applications.
Question: What is required in order to receive a filing date?
Answer: an adequate specification, at least one claim, and drawing, if necessary.
An oath or declaration, a fee, a document written in English, and a transaction are not required to receive a filing date.
Step 3: Patent Application Publication
Most U.S. utility patent applications are published approximately 18 months after the earliest claimed priority date unless a valid non-publication request has been filed.
Publication makes the application available to the public while examination may still be ongoing.
Question: (Fill in the blank) Most U.S. utility patent applications are published approximately _________ after the earliest claimed priority date unless a valid non-publication request has been filed.
Answer: 18 months
Step 4: Assignment to a Patent Examiner
The USPTO assigns the application to an examiner who specializes in the relevant technology.
The examiner studies the application and conducts a search for prior art, including:
- Earlier patents
- Published patent applications
- Technical publications
- Other publicly available information
The examiner then determines whether the claimed invention satisfies the statutory requirements for patentability (e.g., 35 U.S.C. § 101, § 112, § 102 and § 103).
Question: Specify prior art?
Answer: Admissions by the applicant, printed publications published by a person(s) other than the inventor prior to the application’s filing date, and common knowledge in the art.
Step 5: Receiving the First Office Action
The examiner usually issues an Office Action, which explains the examiner’s findings.
An Office Action may include:
- Rejections based on prior art (35 U.S.C. § 102 and 35 U.S.C. § 103)
- Objections to drawings or specification
- Indefiniteness issues (35 U.S.C. § 112(b))
- Subject matter eligibility concerns (35 U.S.C. § 101)
- Double patenting issues (35 U.S.C. § 101)
- Formality requirements
Receiving an Office Action is a routine part of patent prosecution and does not necessarily mean the application will be denied.
Question: What type(s) of rejection(s) is/are required for prior art to determine patentability?
Answer: 35 U.S.C. § 102 and 35 U.S.C. § 103
Question: (True or False) Claimed inventions are presumed to be patentable until the examiner can establish a prima facie case that one of the patentability requirements is not met.
Answer: True
Question: What are statutory basis under 35 U.S.C. § 112?
Answer:
- Specification: written description, enablement, and best mode
- Claims are not vague and indefinite
- Independent, dependent and multiple dependent claims
- Definition of dependent claims
- Multiple dependent claims: formal requirement
- Means plus function
Question: What is a basis for a prior art for obviousness rejection, i.e., Graham v. John Deere?
Answer:
- Determine the scope and contents of the prior art
- Determine the differences between the prior art and the claims
- Determine the level of ordinary skill in the pertinent art
- Evaluate evidence of secondary considerations, such as commercial success, long felt but unsolved needs, or failure of others
Question: What five elements are involved for a prior art rejection using a secondary reference under 35 U.S.C. § 103?
Answer:
- A description of what the primary reference teaches relative to the claimed invention
- An identification of what the differences are between the claimed invention and the primary reference
- An indication of what the secondary references teach relative to the differences and the purpose/rationale for such a teaching
- An explanation of how the primary reference is to be modified by the secondary(s) to arrive at the claimed invention
- An explanation of why the proposes modification or combination would have been obvious to PHOSITA in view of the teachings of the prior art
Question: (True or False) Under 35 U.S.C. 103, the invention must be different from the prior art in an obvious manner from what was previously known in the public domain in order to be patentable.
Answer: False (obvious -> nonobvious)
Step 6: Responding to the Office Action
The applicant generally has an opportunity to respond.
Possible responses include:
- Amending the claims
- Revising the specification
- Presenting legal arguments
- Explaining why the examiner’s interpretation is incorrect
- Providing evidence supporting patentability, where appropriate
A persuasive response often addresses each rejection individually and explains why the application satisfies the applicable legal requirements.
Question: What should Applicant do when Applicant submits arguments or an amendment as an reply?
Answer: Applicant must distinctly and specifically point out the supposed errors in examiner’s action and respond to every ground of objection and rejection in the Office action.
Step 7: Examiner Interview (Optional)
Applicants may request an interview with the patent examiner.
Examiner interviews often help:
- Clarify misunderstandings
- Discuss proposed claim amendments
- Identify allowable subject matter
- Improve communication between the applicant and examiner
Many applications reach allowance after productive examiner interviews combined with appropriate claim amendments.
Question: (True or False) Interview may be granted before the first Office action for a regular, nonprovisional application.
Answer: False
Step 8: Final Office Action
If the examiner remains unpersuaded, a Final Office Action may be issued.
Despite its name, a Final Office Action does not necessarily end prosecution.
Applicants may still pursue several options, including:
- Filing a response that places the application in condition for allowance
- Filing a Request for Continued Examination (RCE) which keeps the existing application active by reopening examination
- Appealing to the Patent Trial and Appeal Board (PTAB), when appropriate
- Filing a continuation application which creates a new, separate application with the same disclosure, if strategically beneficial
Question: (True or False) A final rejection may only be sent out as a final Office action.
Answer: False
Step 9: Notice of Allowance
When the examiner concludes that the application meets the statutory requirements, the USPTO issues a Notice of Allowance.
The applicant must pay the required issue fee within the specified time which is 3 months from the mailing date of the USPTO Notice of Allowance and cannot be extended.
Failure to pay the issue fee may result in abandonment of the application.
Question: (True or False) If the issue fee is not paid within 3 months after the Notice of Allowance is sent, the appiication will be abandoned.
Answer: True
Step 10: Patent Issuance
After payment of the issue fee, the USPTO grants the patent.
The issued patent includes:
- A patent number
- An issue date
- The approved claims
- The specification
- Any drawings
From that point forward, the patent owner generally has the right to exclude others from making, using, selling, offering to sell, or importing the claimed invention in the United States, subject to the applicable law.
Question: (True or False) Patent Term Adjustments are applied when the PTO fails to issue a patent within three years of actual filing date of an application.
Answer: True
Step 11: Maintenance Fees
For most U.S. utility patents, maintenance fees must be paid to keep the patent in force.
Maintenance fees are generally due:
- 3½ years after issuance
- 7½ years after issuance
- 11½ years after issuance
Failure to pay maintenance fees within the permitted time may result in patent expiration before the end of its normal term.
Design patents and plant patents are generally not subject to U.S. maintenance fees.
Question: When are maintenance fees due from the date a patent is granted?
Answer: 3.5. 7.5, and 11.5 years from the date a patent is granted.
Common Reasons for Patent Rejections
Patent applications are commonly rejected for reasons such as:
- Lack of novelty (35 U.S.C. § 102)
- Obviousness (35 U.S.C. § 103)
- Ineligible subject matter (35 U.S.C. § 101)
- Indefinite claim language (35 U.S.C. § 112(b))
- Insufficient written description (35 U.S.C. § 112(a))
- Lack of enablement (35 U.S.C. § 112(a))
Many of these issues can be addressed through amendments and well-supported legal arguments.
Tips for Successful Patent Prosecution
To improve the chances of obtaining a patent:
- Conduct a prior art search before filing.
- Clearly describe the invention.
- Draft claims with appropriate breadth and support.
- Respond to Office Actions thoroughly and on time.
- Consider examiner interviews when useful.
- Keep accurate records throughout the prosecution process.
- Work with a qualified patent practitioner when appropriate.
Frequently Asked Questions
How long does patent prosecution take?
The time varies depending on the technology, the USPTO’s workload, and the complexity of the application. Many utility applications remain pending for several years before final disposition.
Can an application be rejected more than once?
Yes. Multiple Office Actions may be issued during examination before the application is allowed or abandoned.
Is every Office Action bad news?
No. Office Actions are a normal part of examination. Many patents issue after one or more Office Actions.
What happens if an application is abandoned?
Depending on the circumstances, applicants may file a petition to revive the abandoned application under 37 CFR § 1.137 if the delay was unintentional.
Conclusion
Patent prosecution is a structured process designed to ensure that patents are granted only for inventions that satisfy the legal requirements for patentability. While examination often involves one or more Office Actions, amendments, and discussions with the patent examiner, many applications ultimately proceed to allowance after careful prosecution.
Understanding each stage—from preparing the application through issuance and maintenance—helps inventors make informed decisions, communicate effectively with the USPTO, and maximize the value of their intellectual property.
References
The following authoritative resources provide additional information about U.S. patent prosecution:
- United States Patent and Trademark Office (USPTO). General Information Concerning Patents. https://www.uspto.gov/patents
- USPTO. Manual of Patent Examining Procedure (MPEP). https://www.uspto.gov/web/offices/pac/mpep/
- Title 35, United States Code (Patents). https://uscode.house.gov/
- Title 37, Code of Federal Regulations, Part 1 – Rules of Practice in Patent Cases.
- USPTO Patent Center User Guide. https://www.uspto.gov/patents/apply/patent-center
- Patent Trial and Appeal Board (PTAB). https://www.uspto.gov/patents/ptab
Educational disclaimer: This article provides general educational information about U.S. patent prosecution. It is not legal advice and does not create an attorney-client relationship.