Project Description

What Happens After I File A Patent Application?

Filing a patent:
Once your patent application is filed with the United States Patent and Trademark Office (“Patent Office”), the Patent Office will assign your patent application a technology classification and place your application into the queue of applications to be reviewed in the assigned technology center. After your application is reviewed, the Patent Office will issue an “Office action” that either states your claims are allowable or states that your claims are rejected for a number of possible reasons. In most cases, your claims will be rejected for one reason or another and your patent attorney will have to respond to the rejection on your behalf. Note, it’s completely normal for your claims to be rejected. It happens to (nearly) every patent application.

The filing fee that you pay filing a patent application entitles you to two Office action communications from the Patent Office, a non-final Office action and a subsequent final Office action. That’s two bites at the apple to convince the Patent office that your claims are allowable. Once you have exhausted the allotted two Office action communications, you will likely be required to pay for an additional round of prosecution by filing a Request for Continued Examination (“RCE”). Filing an RCE entitles you to an additional non-final Office action and an additional subsequent final Office action. There is no limit to the number of RCEs that can be filed. Failing to file an RCE without getting any claims allowed will result in your application becoming abandoned.

“The filing fee you pay to the Patent office gets you two bites at the apple.”

The first, non-final, Office action:
The first Office action will likely reject the claims of your patent application on the grounds that another patent, or a few patents viewed in combination, already teach the invention. A deeper discussion of why your patent may be rejected can be read about in the question on our Start Here page entitled “What do novelty and obviousness mean?” In response to the first Office action, your patent attorney will either argue that the claims are allowable as they stand or they may have to amend your claims.

The subsequent, Final, Office action:
With few exceptions, the Patent Office will respond to your arguments with a Final Office action. Like the non-final Office action, the Final Office action may reject your claims. The Final Office action technically closes prosecution unless an RCE is filed. However, in practice, this is a good point in time for your patent attorney and the Examiner to talk over the phone and see if they can agree on allowable claims.

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