So your patent application is filed, what can you expect next from the US Patent Office? Read on to learn about informality, restriction, rejection, and allowance.
This article focuses on what happens after you file a non-provisional patent application. It does not apply to provisional patent applications. To understand provisional versus non-provisional patent applications, see our other posts on provisional patent application versus non-provisional patent application.
After your non-provisional patent application is filed, you may receive one of the following types of notices from the US Patent and Trademark Office (USPTO). Any notice from the USPTO is called an office action.
An informality is received when there is something wrong with how the application was filed. Perhaps some paperwork is missing, the paperwork was not completed properly, or you didn’t pay enough fees. The USPTO has not yet looked at the details of how your invention works yet. There are some issues with the application upon initial review. Almost always, we fix the issues raised by USPTO and you still get to keep the priority date of when you filed the application. The patent application will then wait in line to be looked at, or examined, by a USPTO patent examiner.
A restriction is issued when a patent examiner at USPTO believes your patent application covers more than one invention. Frequently, it is when you have two versions of your invention. For example, a computer mouse that can have two buttons or it could have three buttons. These are two versions of the invention and the examiner only wants to look at one version. You must decide which version you want the examiner to look at by selecting one.
A rejection can be issued for numerous reasons. Most commonly, the examiner issues a rejection if the examiner thinks your invention is too similar to someone else’s that already exists. Getting a rejection does not mean the patent application was necessarily written incorrectly. This simply means it is the examiner’s opinion that your invention is not different enough from some other inventions that are out there. Getting a rejection is very common, it is the examiner’s job. Upon receipt of a rejection, we can respond back to the examiner and make our arguments as to why we think your invention is not too similar to the existing inventions, and why we think you deserve a patent. It is possible to go through multiple rounds of rejection-and-response with the examiner before your application may be allowed.
An allowance is issued when the patent examiner believes your invention is patentable as it meets the patentability criteria of being novel, non-obvious, and useful.
This is the final step before you have a patent. The only thing left to do is pay the issuance fee and your patent will be granted and become valid.
If you received a notice from the USPTO, it is likely time sensitive. Make sure to respond timely to ensure your patent application stays alive. Feel free to contact us for a review on what needs to be done for any notice you receive from USPTO.