After a patent application is submitted, the U.S. Patent and Trademark Office (USPTO) performs a series of reviews. The first set of reviews is conducted by the Application Assistance Unit (formerly OIPE). They check for two things:
- That the application meets minimum requirements, such as having a description, claim(s) and drawing(s), etc. They don’t assess the quality of your submission, but instead simply make sure that you’ve followed the basic rules.
- That the application will not somehow threaten national security if published
Prior Art Check
Patent examiners conduct the second set of reviews, in which they read the patent claims, examine the included drawings, and search for the material in the claims. This material is referred to as ‘prior art.’ A patent application can only claim any innovations that exceed (1) innovations introduced in previous innovations—prior art—and (2) obvious inferences and ideas that a ‘person of ordinary skill in the art’ (POSITA) would come up with.
The examiner then rejects any claims that fall below this threshold—referred to as the ‘inventive step’—and allows any claims that exceed it in a ‘first office action.’ At this point, the applicant can respond by either disputing the examiner’s contentions, or by agreeing with it and adjusting the claims as necessary.
If the applicant chooses to argue the claim, the examiner will then review the arguments and claims before making a ‘final office action.’ The applicant can then, once again, dispute or agree with the final office action. However, if the applicant wants to have the examiner review the substance of the patent application again, then the applicant will have to file a Request for Continued Examination (RCEs), or appeal the action to the Patent Trial and Appeal Board (PTAB).
Assistance with Submitting Responses to First and Final Office Actions
Successfully arguing against a decision made by a patent office examiner is a difficult matter that depends upon the expertise and skill of the person making the argument. It’s very easy to make mistakes that have a profound effect on your patent claim.
For example, if the applicant argues that the preamble limits the claim, the applicant is forever bound by this assertion. Similarly, if the applicant narrows their claims to avoid a rejection, the material in the former claims is lost due to the ‘rule against recapture.’ While inventors may be able to write an application by themselves, they usually have a lot of difficulty in the examination phase. An errant statement can completely thwart an otherwise meritorious application.
A typical office action response costs about $2,000 plus whatever fees the USPTO asks for. Some common fees include extensions of time (if you dragged your feet in responding the USPTO charges a fee) and additional examination fees.
A registered patent lawyer can help you obtain the broadest protection possible without making errors that cost you valuable patent protection. The Law Office of Michael O’Brien has the knowledge necessary to assist inventors in obtaining patent protection for their inventions, and we would love to speak to you about your latest creation.