Your invention is patent pending, now what? If the application was a provisional, get busy working on the non-provisional that must be filed within one year. Provisional patent applications are only placeholders for a later filed non-provisional patent application.

What happens after filing a non-provisional patent application is called prosecuting the patent application. The prosecution of a patent often involves communications from the United States Patent and Trademark Office (USPTO) called office actions. These communications require addressing corrections to your patent application in order for issuance to proceed.

Prosecuting is a harsh sounding word because it means to institute legal proceedings against. In fact, that is what is happening when prosecuting a patent application – an application for a new constitutionally based legal right to control the making, using, and selling of an invention is submitted requesting the grant (allowance) of the right to protect the claims in a patent. In other words, a patent application is a request for issue of a patent to protect the claims submitted or to proceed against that and raise objections and rejections to the claims, drawings, specification, or abstract. 

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Filing Receipt and Notice of Allowance

When everything is exactly correct in a patent application, there are only three communications from the USPTO: the filing receipt, notice of publication, and notice of allowance. Filing receipts are only receipts and publication is automatic at 18 months after filing a patent application. There is no need to respond to a filing receipt or notice of publication, so the only response needed to perfect a patent application is to pay the issue fee and get the patent. Read about what happens after you get a patent.

If there is anything in error or there is a determination that the claims are objected to or rejected and thus not patentable, there will be more response required. After you file an application for a patent, the USPTO will send communications, letters, or notices as they review, read, and examine the patent application. The communications, letters, or notices you receive from the USPTO are commonly referred to as office actions. 

There are two stages of review that the patent application will go through after filing (submitting) to the USPTO. The first review is to check all of the submitted documents and forms to see if all the parts are present and are presented in the proper format. Once everything is exactly right in the patent application, you will get a filing receipt. The second review is by an examiner on the merits of the application to determine whether the claims are patentable. If everything is correct in the patent application, you will get a notice of allowance. 

Correcting Patent Application Errors and Omissions

When something is incorrect, wrong, or missing in a filed patent application, the USPTO will send a communication explaining what they found incorrect, wrong, or missing. This communication will also set a time period to respond, after which the application will become abandoned if there is no response. 

Anything that is not as it should be in the forms or parts of a patent application will be brought to the applicant’s attention with a formal notice and usually the information needed to supply a correction. The subject of correction could be a missing element in a figure or a difference between the numbers in a figure and the explanation in the specification. 

The specification, claims, drawings, and abstract all must be complete and in the correct form and format. The right sized paper and fonts matter as much as the grammar and organization. The process of correcting errors and omissions in a patent application is not the examination; it is essentially the check-in process for a patent application. 

After all parts and forms of the patent application are complete and proper, the applicant will receive a filing receipt. After the filing receipt is sent to the applicant, the patent application will be transferred to classification and forwarded to an examining unit based on the art of the invention. After waiting its turn in line, the patent application will be read and examined by a patent examiner to determine if the invention is patentable. 

USPTO Office Actions and How to Respond

What is an office action? If the examiner finds any objections and rejections as to form, format, content, or claims, you will get an office action explaining what the examiner found/determined and a time period to respond. Like with all communications with the USPTO, if office action responses are not addressed within the time period to respond, the application is abandoned.  

The correct way to respond to an office action from the USPTO regarding a patent application is to address each and every item or issue raised (written about). With the exception of applications that are exactly right, there will be some action needed to respond to the communications, letters, and notices from the USPTO for your patent application. 

A complete and proper response to an office action from the USPTO will completely address and overcome all objections and rejections. Objections point out things that need to be addressed and corrected. Responses to objections usually include amendments to the specification, claims, or drawings. Rejections point out the issues that prevent a notice of allowance. In contrast to what many people seem to believe, patent examiners are actually trying to find a way to allow the patent claims if possible. 

The Parts of a USPTO Office Action

When the patent application did not require the examiner to send an office action, only the notice of allowance needs a response. In all other cases, which is most patent applications, there will be some action needed to respond to the communications, letters, and notices from the USPTO examiner for your patent application. The examiner may raise any issues, objections, and/or rejections related to any of the parts of the patent application such as the drawings, specification, abstract, and or claims.

The simple trick to responding to an office action is to create an outline of headings for the response from the issues raised. Then be sure to offer everything necessary for the examiner to withdraw the objection or rejection or to overcome the argument described.

The Parts of a Response to a USPTO Office Action

The parts of a complete and proper response to an office action from a USPTO patent examiner should match and address all of the parts of the office action received. In other words, you need to read the office action and be sure the response completely addresses all issues, objections, and/or rejections raised. Any needed amendments are written and provided in marked up and clean versions for examination. 

When properly responding to an office action, the subject matter of the response will follow the organization of the issues in the order presented by the examiner. They may raise any issues related to any of the parts of the patent application, and the response should address all issues. While it is not required to address the issues raised in the same order as the examiner brought them up in the office action, it can aid in readability and help keep any connections between issues addressed consistently. 

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