By: Daniel D. Wright
What to expect during patent prosecution
Getting a patent is no quick process. In the time between filing and issuance, a time known as patent prosecution, your application will navigate a number of stages and amass a wealth of official documents, often from multiple patent offices and with months or years between them. Knowing what to expect and when to expect it can be critical for planning your business. Thus, an understanding of this timeline is necessary for those who want to maximize their operations in sync with the wave of filing dates, publication dates, and office actions that ebb and flow with this process.
Patent prosecution: The time and work done between filing for and the issuance of a patent.
How long does it take to get a patent?
The full timeline for a patent generally looks like this:
Even with some of these steps being optional, the process from filing to issuance of a patent can take two to five or more years.
Patent Prosecution Stages
Let’s look at each of these stages in more detail.
1 year or less (Optional)
The majority of US inventors begin their patent journey with a provisional application. Provisional applications operate as a placeholder to secure your filing date for up to one year while you prepare a follow-on formal non-provisional application (an international PCT application or a national US non-provisional application). In a process called “conversion,” you can file the full-fledged application but still claim the earlier filing date so long as your conversion happens within the time limit. Having fairly loose requirements, a provisional could be prepared somewhat quickly, but beware the dangers in not taking this step seriously. A poorly written provisional application can sometimes jeopardize the real deal’s ability to claim that earlier filing date.
Furthermore, provisional applications are entirely optional. If you have all the materials ready, you can file your non-provisional right away, but do check with your patent practitioner before skipping the provisional stage as there can be strategic value to proceeding with one anyway.
Beware the dangers in not taking the provisional step seriously. A poorly written provisional application can sometimes jeopardize the real deal’s ability to claim that earlier filing date.
International PCT application
30 months or less; often 18 months (Optional)
For those interested in pursuing patent protection in multiple countries, the next step is usually a “patent cooperation treaty” (PCT) application. Facilitated by the World Intellectual Property Organization (WIPO), a PCT application enjoys a streamlined route for transforming your one international application into a plurality of individual national applications that are examined and issued separately. Once filed, you have 30 months from the application’s earliest filing date (i.e., 18 months from your provisional application anniversary) to provide your selection of countries and any necessary translations.
Simultaneously, a participating patent office of your choice (e.g., the USPTO, EPO, etc.) will perform a preliminary prior art search and produce a preliminary opinion on your invention’s patentability. No response from you is due for these reports; they merely serve to provide a launching point to begin patent prosecution.
Despite the fact that a PCT application is called an “international patent application,” there is no such thing as an “international patent.” WIPO itself never issues any documents that grant patent rights across multiple countries. Rather the PCT process only simplifies the mechanism previously needed to pursue patent rights in multiple countries simultaneously. The resulting national applications are all reviewed independently according to the legal principles and practices of each selected jurisdiction, so although they would all share an original PCT filing date and application number, your issued patents in the US and China, for example, will likely look very different.
Despite that a PCT application is called an “international patent application,” there is no such thing as an “international patent.”
18 months to 3+ years
Whether or not you started from a provisional application or went through the PCT process, you will ultimately end up with one or more non-provisional applications before examiners in the selected countries. The examiners will then review your application according to their nations’ patent laws and report to you an allowance or rejection via official communications referred to as “office actions.” Here is where the real work begins.
Office actions: Official communications from patent examiners, regarding allowance or rejection of your application.
Rejections are common in patent prosecution. The examiner will almost certainly find at least one reason to reject your application at the start, and, in fact, you should be a bit suspicious of receiving a “first action allowance” or an allowance without receiving any rejections. In the grand game of trying to secure the strongest position for your invention, drafting broad claims at the outset should push the boundaries of the invention by being as reductive and expansive as possible. As such, for many busy industries, a first action allowance likely indicates that you asked for too little in this first attempt.
For many busy industries, a first action allowance likely indicates that you asked for too little in this first attempt.
Regardless, no rejection is necessarily the end of the road. After each office action comes an opportunity for you to amend the claims and argue against the examiner’s cited references. Often, you’ll have to do this more than once, but through this exchange, you should arrive at a claim set commensurate with the due scope of your invention in light of the state of the art in your field. For some technologies, this process can take around eighteen months; others will require three or more years. It all depends on the details of the invention and the USPTO backlog. When things are settled, the examiner will grant allowance, and after a few months of processing time, you’ll exit patent prosecution with an issued patent.
Congratulations on the issued patent! With the official document in hand, you can replace “patent pending” with the patent number on all your products, because you now possess an enforceable property right to exclude others from making, using, selling, and importing your invention within the issued jurisdiction. This right lasts for the duration of the patent’s term, often called its lifespan or lifetime.
How long does the patent protection last?
In the US, a patent’s term is twenty years from its first non-provisional filing date. That’s right. Filing date, not issued date, so all that time spent at the PCT stage and arguing with the examiner does eat away at your patent term, but this is just how the practice works. In cases where the USPTO takes inordinately long to respond, they will append extra days according to the Patent Term Adjustment rules; however, this time can be forfeited if you yourself took extensions of time during prosecution to file your responses. For the most part, there’s no need to hurry, but do timely reply to all office actions.
Post issuance responsibilities
Be sure to pay your maintenance fees or annuities after issuance by the scheduled deadlines if you want the patent’s term to continue out to its maximum. Failing to pay these fees will terminate your patent rights early, and reinstating a case after a lapse of right can sometimes be impossible. However, these fees are increasingly expensive, so perhaps confirm with your patent practitioner that you’re still acquiring sufficient value from the living patent before paying the maintenance fee.
Failing to pay maintenance fees or annuities will terminate your patent rights early, and reinstating a case after a lapse of right can sometimes be impossible.
What happens when the patent term expires?
At the termination of a patent’s term, the invention enters the public’s hands as part of the fundamental bargain of the patent system: by revealing the details of your scientific advancement for the improvement of society, the government grants you exclusive rights for a limited time. When the patent expires, you can continue to practice your invention, but so can everyone else. Such is the nature of the patent system in its efforts to “promote the Progress of Science and useful Arts'' as declared in its foundational clause in the US Constitution.
A Journey’s End
From start to finish, patent prosecution is indeed a long process. For some, a few options exist to speed things along, but for most, the act of filing commits the application to a long road. Your application will pass through many stages on its way to become an enforceable document, but with this roadmap, you can hopefully now recognize some landmarks on the way and can move your company along in confident strides.
Ashley Sloat, Ph.D.
Startups have a unique set of patent strategy needs - so let this blog be a resource to you as you embark on your patent strategy journey.