Maiorana, P.C.

What happens after I file my US patent application?

Once a non-provisional patent application has been filed, the Patent Office (USPTO or PTO) will send an Official Filing Receipt (OFR). The OFR will list the serial number and filing date along with the inventor information specific to the patent application. After receiving the filing receipt, the Patent Office generally does not send out anything for an average of 6 months to 2 years.

Once the Patent Office starts the prosecution phase, things move quicker. There will be additional attorney fees and Patent Office fees at each step. You should budget accordingly.

The Patent Office will generally start by sending an Office Action. An Office Action can reject all of the claims or some of the claims (or allow all of the claims in a Notice of Allowance). Most of the time, the first Office Action rejects at least some of the claims. This is nothing to worry about. An amendment (or response) is normally needed to address the rejections the Patent Office has presented in the Office Action.

If the amendment/response is successful, the Patent Office will mail a Notice of Allowance in roughly 1-2 months. The next step is to pay the Issue Fee. There is a 90 day period from the mailing date of the Notice of Allowance to make the payment. After the payment, a patent will issue in about 4 weeks. Patents in the United States always issue on Tuesdays. Any continuations need to be filed before the patent issues, and preferably before the issue fee is paid.

If the amendment/response is not successful in persuading the Patent Examiner that the claims in the application are allowable, a final Office Action will be mailed. At this point, either another amendment/response can be filed, or an appeal process can be started. If the claims are amended after a final Office Action, a Request for Continued Examination (RCE) will likely be needed. If the amendment/response is successful, a Notice of Allowance will be mailed. If the amendment/response after final is not successful in persuading the Patent Examiner that the application is in order, an Advisory Action will be mailed. An RCE or notice of appeal would need to be filed, both of which have additional Patent Office fees and Attorney fees. After an RCE is filed, the Patent Office will respond by sending either a Notice of Allowance or a new Office Action.

Once the application issues as a patent, the patent will be subject to maintenance fees to keep the patent in force. The Patent Office charges these maintenance fees at 3.5, 7.5, and 11.5 years from the issue date of the patent. You will always have the option of not paying the maintenance fee if it proves not to be beneficial to you to keep the patent in force. However, the patent will lapse as of the time six months after the maintenance fee is due and not paid.

You can always ask one of our Patent Lawyers for additional information. Please call us at MI - 586-498-0670 or CA - 408-890-6549