IP Law Bulletin

Provisional Patent Applications

A provisional patent application is filed, among other reasons, to establish an early effective filing date for a later-filed non-provisional patent application. The later-filed application must be filed within one year of the provisional to claim this benefit. Provisional applications are fundamentally different from a non-provisional application, not least because provisional applications are not examined by the U.S. Patent and Trademark Office (USPTO). Accordingly, once a provisional application is filed, there is no responsibility and timeline other than to prepare and file a non-provisional application within one year of the provisional application filing date.

With that said, it may be advantageous to execute and record an assignment document (i.e., transferring the rights in the patent from the inventor to another entity) before the one-year date of the provisional application, especially if pursuing international patent protection is under consideration.

Non-Provisional Patent Applications

Formal Documents and Pre-examination Notices (Time to Patent: 2-3 Years)

As soon as a non-provisional application is filed, the USPTO assigns the application a serial number and determines if all required documents and fees are present and correct. Not all documents are equal: some can be submitted any time before the application is ready to issue, but others, such as complete payment of the fees, must be provided before the USPTO will start the formal examination process. If any document required by the USPTO is missing, a notice will be issued with a two-month extendable deadline. That notice typically issues within a week or two of filing.

Below is a list of common submissions:

• Inventor's Oath or Declaration* (an assertion by the Inventor that this invention is theirs)
• Assignment (transfer of rights from the inventor(s) to another entity)
• Replacement Figures (professionally drafted figures to replace the original drawings)
• Preliminary Amendment (changes to the claims and/or specification before examination)
• Information Disclosure Statement (list of all potentially relevant prior art known to the inventor(s) and other related parties)
• Request to accelerate examination (requires an additional fee, unless special reasons exist)

*The inventor’s Oath or Declaration is required for a patent to be granted

Many of these documents can be submitted any time after the application is filed. Some may be asked for by the examiner, such as the replacement figures, while others may become necessary due to circumstances outside of the prosecution. For example, if the inventor or attorney learns of a new relevant prior art reference that predates the application’s filing date, then an Information Disclosure Statement (often referred to as an IDS) may be needed to inform the USPTO of this prior art.

Publication and Waiting (Time to Patent: 1-3 Years)

There is no formal notice when a patent application is ready to be taken up by a patent examiner, but your attorney will be able to track the status with the USPTO and confirm when the application has entered the examination queue. Previously the USPTO provided an estimate for how long it would take to receive a first action by a patent examination. However, in 2021, the USPTO temporarily disabled this estimator as it moves to a new methodology for assigning applications to examiners. Until the new estimator is available, a wait time typically of 6-24 months can be anticipated.

At a specific date, unless special conditions exist, the patent application will publish and become publicly available. Your attorney can tell you this date in advance and can send you a copy of the published application when available. While this publication is just a snapshot of the application at the time of publication, it may represent the world’s first look at the details of your invention. Until publication, the existence of your application is completely private. Publication both (1) generates the formal publication document, which will be on the USPTO database and outside services, such as a Google Patents, and (2) allows the status and all documents of the application to be viewed using the Public Patent Application Information Retrieval (PAIR) system.

Alternatively, you can file a patent application with a non-publication request, meaning the application will only be viewable by the public if and when a patent issues. This option is not available to you if you are seeking patent protection outside of the United States.

Prosecution Begins (Time to Patent: 1-2 years)

With a patent examiner assigned to your patent, prosecution will begin once that examiner starts his or her review of the application and your claims. The examiner will then issue a first action, of one of the following three types:

• Restriction Requirement (response due in 2 months, extendable to 6 months)

If the examiner decides that your claims cover more than one invention, or if the claims cover multiple distinct embodiments and the examiner does not have time to properly examine all of them, the examiner may issue a Restriction Requirement. A Restriction Requirement can force you to pick a subsection of the application to be the subject of examination, and the examiner will provide a list of what they believe represent distinct inventions or features.

A typical response to a Restriction Requirement includes an election from a group of the pending claims, with the non-elected claims being withdrawn from prosecution at this time^[1]. Withdrawn claims are sometimes rejoined when prosecution ends, it is also possible to pursue withdrawn claims in a new application, known as a Divisional Application. Divisional applications can be filed anytime claims have been withdrawn and the application retains your original priority date.

• Office Action (response due in 3 months, extendable to 6 months)

If the examiner decides any of your claims cannot be allowed, or finds other issues with the application, he or she will issue an Office Action with a detailed explanation. This usually includes rejections of the claims in view of prior art references. A first Office Action is non-final, which means that you can file a response that the examiner must consider. Responses typically include amendments to the claims and/or arguments against the examiner’s rejections. An interview with the examiner can be conducted to discuss the response prior to being submitted, which we typically recommend.

If the response does not convince the examiner, or if the examiner identifies new rejections, the examiner will issue a subsequent Office Action, which is likely to be a Final Office Action. After a Final Office Action, the examiner is not required to consider any further amendments to the claims. However, arguments and amendments can still be submitted, and the application may move to allowance if the examiner believes the response overcomes all outstanding issues. Alternatively, Final Office Actions can be appealed or a Request for Continued Examination (RCE) can be filed, with payment of a fee. An Appeal allows arguments to be heard by a board of three administrative judges. An RCE re-starts prosecution, allowing further amendments to be made and the examiner to issue another Office Action or Notice of Allowance.

Through this back-and-forth process, one or more claims may be indicated as allowable, which indicates that no rejections of the claim(s) remains. Any allowable claim can be patented, and once all pending claims are allowed—either by overcoming the rejections or canceling all rejected claims—the examiner will issue a Notice of Allowance.

• Notice of Allowance (payment of issue fee, due in 3 months, not extendable)

Notice of Allowance (Time to Patent: 2-5 months)

A Notice of Allowance signals that the examiner believes the application is ready to become a granted patent. The Notice of Allowance sets a three-month non-extendable deadline for paying the issue fee—the final fee required to obtain a patent. Attorneys complete final check of the application prior to payment of the issue fee, to be sure that no formal documents are outstanding, and that the application is ready to issue as a patent. Sometimes Supplemental Notices of Allowances are issued in response to any final submission(s), but the original three-month deadline remains.

Payment of the Issue Fee is followed by an Issue Notification, which indicates the date the granted patent will publish and the patent number that is assigned to the to-be-issued patent. The issue date is the formal close of prosecution, and certain actions can only be taken by this date, such as the filing of any continuing or divisional applications.

Subsequent Applications: Continuation and Divisional

Continuation and Divisional applications are each new patent applications that enable you to claim the benefit of the original application, and thus its filing date, while pursuing additional subject matter not covered in already-issued patents. Continuation and Divisional applications both have the exact same specifications as the original application, which cannot be changed. A Continuation can be submitted with new claims so long as they are supported by the specification. A Divisional is filed to pursue claims that were withdrawn in response to a Restriction Requirement.

In both Continuation and Divisional applications, the patent prosecution process starts over. In our experience, however, both types of applications are acted upon by an examiner faster than an original application.

[1] Restriction Requirements can also involve “species” elections, related to selecting one embodiment of the invention to focus on for the pending application.