What are the steps of the patent examination process?
Minneapolis patent attorney Suneel Arora explains the various steps of the patent examination process.
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The steps of the patent examination process are first of all, you file a patent application. After you file a patent application in the patent office then it sits in the queue at the patent office and sometimes that can take a year, a year and a half. There are some vehicles for prioritized examination that require extra money that are worth considering, but in general, if you don’t use one of those vehicles to get prioritized examination you’ll be witting in the queue before the examiner picks up the patent application.
And then what the patent examiner will do is will do a prior art search. He’ll look at all the prior art that you’ve submitted and their do their own independent search. And generally, what will happen is that you will get a rejection. You’ll get an office action rejecting your invention and sometimes the rejections are good rejections, they’re spot on and other times they are not so good rejections and other times they are cobbled together to be the best possible rejection in light of maybe not so close prior art.
And the idea of that third flavor of rejection of giving a rejection even though there might be some distinctions is to make the applicant actually be very particular in terms of what they’re claiming. And make the applicant explain what it is that’s patentable, why they think they deserve a patent. So that’s part of the patent examination process. I think a lot of people who are familiar with the examination process will look at the rejection and be very disheartened by it but it’s an actual very common part of the patent process. There are very few patent applications that get a first office action that allows all the claims. That’s very rare.
So it’s important to understand that getting that first office action rejecting the claims is a normal part of the process. And at that time, what happens is the inventors and the patent attorney look at the rejection and look at the prior art that the examiner is using and you can either narrow the claims or reword the claims or clarify the claims. Or if you think that the claims are fine like they are then you can argue to the patent examiner why you are distinguish and patentable over the prior art.
So then after the office action there may be further office actions, there may be opportunities to do examiner interviews, but the process can go on and ultimately, the hope is that you can craft a claim that’s patentable over the prior art and that will result in issued patent.