Your Invention is Patent Pending, Now What?

Pre-grant patent services are after filing a patent application (patent pending) and before your patent issues or final decision is reached. Generally, a final decision is not final until accepted by the patent applicant (the option to file a CIP, RCE, or divisional exists). The invention will remain patent pending during the pre-grant patent services. If everything is done completely and properly, there will only be three communications from the USPTO: the filing receipt, notice of publication, and notice of allowance. If this is the case for your patent application, then you will only need one of our pre-grant patent services: to accept the allowed claims and pay the issue fee to collect your patent.

If even the slightest thing is wrong or there are objections or rejections, then there will be some additional writing and filing of communications with the USPTO to continue to seek allowance. The majority of patent applications require at least one of the following patent prosecution services before the examiner makes the final decision as to the patentability of the patent applications claims:

  • Responding to office actions from the examiner
  • Writing and filing patent application amendments
  • Writing and filing new claims
  • Conducting examiner interviews
  • Petitions and patent application actions

If there are changes in ownership (assignments) or any opposition to the application, then there will also be pre-grant patent services required to continue your patent application. Read more about what happens after filing a patent application.

Pre Grant Patent Services

Responding to Office Actions from the Examiner

Responding to an office action is submitting a responsive written reply back to the Patent Office. The USPTO sends communications to the applicant as action on the patent application happens. In particular, when the examiner examines the application, they will send communications called office actions that the applicant will need to respond to in order to continue seeking patent protection. USPTO office action responses must include a complete response to all issues raised in the office action. 

Office actions include both rejections and objections. The responses to office actions are written to provide a proper and complete response to all rejections and objections raised by the examiner. Carson Patents highly recommends patent practitioner help to respond to USPTO office actions. Contact us for help responding to an office action in your patent application.

Writing and Filing Patent Application Amendments

Amendments to patent applications become necessary for many reasons. A complete USPTO office action response may require an amendment. For example, if updates, corrections, and explanations are needed, submitting an amendment is necessary. The amendment documents also need to be clear, complete, and in proper form. In other words, details matter. Carson Patents provides all patent services for writing and submitting amendments for patent pending applications. Contact us to get an amendment written for your patent application.

Writing and Filing New Patent Claims

Pre-grant patent services include revising the existing claims in an application. For pending patents, and in response to office actions, revising existing claims and writing new claims may become necessary. Generally, submitting new claims and revising and resubmitting existing claims occurs as part of office action responses. Above all, claims must be in proper form, not indefinite, and supported by the written description and the drawings. Carson Patents provides writing new and revised patent claims. Contact us to get new or revised claims written for your pending patent application.

Conducting Examiner Interviews

Patent examiner interviews are audio or video interviews with the examiner about the details of a patent application. Examiner interviews are conducted for many reasons. For example, we can discuss examination details and the reasoning for claims rejections and objections. Further, we can propose new or amended claims.

There are at least three examples of good reasons to conduct an examiner interview: sharing understanding of the invention, discussing the patentability of the claims, and to determine election options after a restriction office action. Examiner interviews can help determine the best way to respond to an office action. Frequently, examiner interviews can be pivotal during the prosecution of a patent application. Therefore, Carson Patents highly recommends patent practitioner help for examiner interviews.

Patent Petitions and Patent Application Actions

Pre-grant patent services includes many other things such as submittals, petitions, and actions. Contact Carson Patents for help with any patent, patent application petition, or change action. The following is a list of the most common petitions and patent application actions needed.

  • Assignments 
  • Citation of Prior Art 
  • Double Patenting
  • Ex Parte Reexamination
  • Expungement of Papers
  • Patent Prosecution Highway (PPH)
  • Patent Trial and Appeal Board Proceedings
  • Petition for Retroactive Foreign Filing License
  • Petitions to Make Special – Age and Health 
  • Petitions to Review Previous Decisions
  • Petitions to Revive Abandoned Applications
  • Prioritized Examination (Track One)
  • Protests
  • Requests for Continued Examination
  • Requests for Reconsideration & Appeals
  • Restriction Practice (Proper Responses to Restriction Office Actions)
  • Revival Based on Unintentional Delay
  • Small Entity Entitlement
  • Supplemental Examination
  • Terminal Disclaimers 

Pre-Grant Patent Services Examples with Costs

Question: What is pre-grant patent?

Answer: A patent pending application.

pre-grant patent services utility patent application office action response example A
USPTO Office Action Response Example A

Utility Patent Application Office Action Response Example A

We wrote and filed a patent application for a new electric appliance. The USPTO patent examiner found: 1) a spelling error; 2) an inconsistent element reference between the figures and the written description; 3) objections to the dependent claims for lack of proper antecedent basis; and 4) rejection of the independent claims as obvious to a person skilled in the art. Carson Patents amended the claims, figures, and specification to correct for 1, 2, and 3 at no cost, because we view these corrections as administrative errors. Correcting for 4, the claims rejection, required writing 17 new claims and amending the written description. Our fee was $1060.

utility patent application office action response example B
USPTO Office Action Response Example B

Utility Patent Application Office Action Response Example B

An inventor previously used an inventor assistance “service” who had written and filed a patent application for a new electric appliance. The USPTO patent examiner found: 1) numerous spelling and grammar errors; 2) improper drawings; 3) the abstract was written in improper language; 4) objections to all claims for lack of proper antecedent basis and lack of support in the written description; and 5) rejections of all claims as obvious to a person skilled in the art. Carson Patents conducted an examiner interview to discuss the objections and rejections for $840. We amended the claims, abstract, figures, and specification for $2480.

Pre-Grant Patent Services Testimonials

First Office Action Notice of Allowance

“Greg found what was unique about my invention where others had not. The proof is in the patent offices first examiners response where they allowed my patent. Greg is the best engineer lawyer ever.”

Donald W.

Inventor Written Non Provisional Utility Patent Application

“Greg understood my invention immediately! He explained every step of the process in understandable detail. His first response must have impressed, the examiner called him about a minor adjustment and I got my patent.”

Christine S.