Acquiring a patent is a little like playing a board game. If you are the applicant, you must move the invention through the U.S. Patent & Trademark Office (USPTO) examination process, avoiding certain obstacles, such as technical errors or delays, while preserving the strongest possible claims for patent protection.
The process of shepherding a patent application through the USPTO is known as patent prosecution. Obtaining a patent can be a lengthy and sometimes bureaucratic endeavor, and it is important to understand the rough timeline of what steps to expect before you begin. It typically takes between two and three years to obtain a patent, and sometimes longer if there are particular challenges to your application.
Examiners and applicants rely on three resources—rules of the board game, if you will—during patent prosecution:
Patent prosecution usually proceeds through the following steps:
The goal during patent prosecution is to obtain a Notice of Allowance, a statement from a USPTO examiner that the application meets the legal requirements of patentability. Of course, not all applications meet this standard. (For more on this, see Qualifying for a Patent FAQs). In the event the examiner sends a “final office action,” there are still several options open to you.
Like any federal bureaucracy, the USPTO manages an enormous amount of data. To keep your application easily trackable, you should retain the "receipt" and various information that's automatically generated when you submit your application. This information will be critical in all your future correspondence with the USPTO.
If you filed your application electronically using the EFS-WEB system, you’ll get an Acknowledgment Receipt, which is analogous to a receipt postcard, used for mailed filings. The Acknowledgment Receipt will list the Application (Serial) Number, the Confirmation Number, the application data, and parts that you’ve filed.
If you filed through a paper application and enclosed a return postcard with the application, the USPTO will stamp and return this and it becomes the first correspondence from the USPTO. The postcard usually arrives within two to four weeks of filing. It is stamped with a date and an eight-digit number, for example, “U.S. Patent & TM Office, 22 August 2018; 09/801,666.” The date is the “deposit” date, or date of receipt, and the number is the serial number (sometimes called “application number”) of the inventor’s application. The serial number and filing date should be maintained in confidence.
If an administrative error was made in the application, such as failing to sign a form or pay the fee, the USPTO’s Application Branch will send a deficiency notice explaining what’s required and sometimes also requiring a penalty fee. Once the applicant complies, the USPTO will mail the filing receipt.
Remember, you will need all of this information each time you correspond with the USPTO regarding the status of your application.
For more on the patent application process, see Nolo's Patents for Beginners by David Pressman and Richard Stim.