The Patent Application Process - What Happens After Filing, Until Patent Issuance. Episode 7
- Adam Diament
- Mar 15
- 5 min read
(The original episode was published in 2017. Some information may be out of date)
Overview of the Patent Application Process
In this episode, I’ll go over the process that happens after you file your patent application until you (hopefully) get your patent issued. There are many twists and turns that patent applications can take, so I’ll cover just the basics of your interactions with the United States Patent and Trademark Office (USPTO). In later episodes, I’ll discuss the details of how to respond to the USPTO and the various things that might happen to your application.
The USPTO is the official name of the patent office, so when I refer to the patent office or USPTO, I’m talking about the same thing.
Filing Your Application and Paying Fees
When you file your application, you must pay certain fees. These fees are subject to change, so always check the USPTO website for current rates. As of now, small inventors typically pay $730 or $400, depending on their income.
Filing Methods
It’s best to file electronically through the USPTO website because it’s cheaper and easier than paper filing.
In a later episode, I’ll walk through how to file an application, including the forms you need and how to fill them out.
Once you file, you’ll receive an application number and a confirmation code—keep these safe, as you’ll need them to access your application file.
Official Filing Receipt
A few weeks after filing, you’ll receive an official filing receipt.
This does not mean your invention is patentable—it just confirms that you filed correctly and submitted the required forms.
Waiting for a Response
How long it takes to get a substantive response depends on the type of invention you have.
The current average wait time is about 16 months.
Some applications receive responses in as little as 3 months, while others take 30 months or longer.
You can pay extra fees to expedite the process—I’ll cover this in a future episode.
Examination by a Patent Examiner
Once the USPTO assigns a patent examiner to your application, the examiner will:
Review your application to ensure it meets formal requirements.
Conduct a patent search to determine if your invention is novel and non-obvious.
Issue an Office Action (a response from the patent office regarding your application).
At 18 months from your filing date, your patent application is usually published, meaning anyone can read your application online. This usually happens before your patent is granted, as the patent process takes longer than 18 months.
Best-Case Scenario: Notice of Allowance
In an ideal world, the patent examiner reviews your application, determines it is patentable, and issues a Notice of Allowance.
You then pay the issue fees, which for small inventors is $480 or $240, depending on income.
A few weeks later, your patent is issued.
Maintenance Fees
Even though patents typically last 20 years from the filing date, you must pay maintenance fees to keep your patent active.
Maintenance fees are due at:
3.5 years
7.5 years
11.5 years
These fees range from a few hundred to a few thousand dollars.
Once you finish paying the 11.5-year fee, no further payments are required.
More Common Scenario: Application Rejection
In reality, the patent process is rarely straightforward.
90% of applications receive at least one rejection.
This is where the twists and turns of the patent process begin.
The Manual of Patent Examining Procedure (MPEP)
The MPEP is the official 3,000+ page manual that governs how patent examiners handle applications.
It is not user-friendly.
Only registered patent attorneys and patent agents can file applications on behalf of inventors because they must pass an exam based on the MPEP.
Patent Attorneys vs. Patent Agents
Patent Attorney = Passed the Patent Bar Exam + Passed a State Bar Exam to practice general law.
Patent Agent = Passed the Patent Bar Exam but is not an attorney.
Both can file patent applications, but only attorneys can handle legal matters like contracts and licensing.
Office Actions and Rejections
When a patent examiner finds an issue with your application, they issue an Office Action explaining the rejection.
You typically have 3 months to respond, or 6 months if you pay late fees.
If you don’t respond in time, your application is abandoned.
Common Reasons for Rejection
Your application contains multiple inventions (not allowed).
Your invention is not novel.
Your invention is an obvious improvement.
You haven’t adequately described your invention.
Obviousness Rejections
The most common type of rejection is an obviousness rejection. If you receive one, you have three options:
Abandon your application – If the examiner finds prior art that convinces you your invention is unpatentable, you can let the application go abandoned.
Argue your case – You can respond to the examiner explaining why your invention is not obvious.
Modify your claims – You can change your patent claims to distinguish your invention from prior art.
You submit these arguments in writing, but you can also request a telephone or in-person interview with the examiner.
Final Rejection and Appeals
If the examiner rejects your response, they issue a Final Office Action.
“Final” does not mean the end of the road. It just means the USPTO wants you to pay more money.
You can pay a fee for a Request for Continued Examination (RCE) to have the examiner review your application again.
RCE fees range from $300–$1,700, depending on your company size and income.
Appealing to the Patent Trial and Appeal Board (PTAB)
If the examiner keeps rejecting your application, you can appeal to the Patent Trial and Appeal Board (PTAB).
At this stage, three patent judges decide whether the examiner’s rejection was correct.
If the PTAB agrees with you, your patent may be issued.
If the PTAB agrees with the examiner, your application remains rejected.
Further Appeals
If PTAB rejects your application, you still have options:
Appeal to the United States Court of Appeals for the Federal Circuit.
File a civil action against the Director of the USPTO in the U.S. District Court for the District of Columbia.
If these courts reject your case, you could theoretically appeal to the U.S. Supreme Court, but this is extremely rare.
Summary
The patent process is complex, and this episode barely scratches the surface. Key takeaways:
Most applications receive a rejection.
You can respond to Office Actions through arguments or claim amendments.
If rejected again, you can continue paying for reviews or appeal to PTAB.
The appeals process can extend all the way to federal court.
I’ll go into more details about each of these steps in later episodes. Until next time, I’m Adam Diament of Diament Patent Law—keep on inventing!
