Additional details regarding patent prosecution

Typically, the journey begins with the submission of a Provisional Patent Application to the United States Patent and Trademark Office (USPTO). This application secures priority for the filing date; however, it is not subject to review by the patent examiner. During this phase, we will circulate the invention disclosure along with relevant documents to the attorney. Then, the attorney will review your disclosure and prepare the patent application. If necessary, we will arrange a brief technical meeting with you to address any questions from the attorney and to clarify specific technical aspects of the invention. This ensures the patent application is both accurate and thorough. Following this, the Provisional Patent Application will be filed, initiating a 12-month period for the submission of a Non-Provisional Patent Application. 

The patent prosecution process starts if UIRF files a Non-Provisional Patent Application. This is a legal process where the patent application will be thoroughly reviewed by the USPTO. The USPTO will communicate with the attorney through an official written correspondence known as an “Office Action”. This document either allows the patent application to proceed or identifies objections or rejections that must be addressed.

Common types of patent office actions:

Type of patent Office Action 

Meaning 

What we do 

Restriction Requirement

This is issued when the examiner believes the application contains more than one invention and requires the applicant to select which invention should be examined first. 

We will work with you in deciding which invention to elect for examination and the attorney will prepare a response to the USPTO. 

Non-Final Rejection 

This is an initial rejection of the patent application. It’s not the final decision, and there exists an opportunity to respond to the examiner’s arguments.  Expect to receive this rejection; almost all applications do. 

The attorney will draft a response to the examiner’s arguments, with or without amendments to the application. We will work with you to understand the examiner’s concerns and help prepare a response.  

Final Rejection 

If the issues raised in the non-final rejection aren’t adequately addressed, a final rejection may be issued.  There may or may not be ways to move forward with the application. 

We will review the decision and discuss the next steps with you. 

Notice of Allowance 

This is a notice that the patent application will be granted, and it precedes the issuance of the patent. 

Congratulations! You will soon have a patent. 

Patent Maintenance Fees 

These are the fees paid to maintain a granted patent in force 

If the patent is not licensed, we will evaluate whether to maintain it. 

Common reasons for rejection:

Type of Rejection 

Meaning  

Ineligible Subject Matter (35 U.S.C. 101) 

Not all types of inventions can be patented, for example, the invention might fall into a category that’s not eligible for a patent (like abstract ideas or natural phenomena). 

Lack of Novelty (35 U.S.C. 102) 

This occurs when the examiner believes that the invention is not new or has been publicly disclosed before the filing date of the application. 

Obviousness (35 U.S.C. 103) 

The examiner believes that the invention is obvious to a person “skilled in the art,” that is, someone with your technical background could have come up with the invention based on knowledge known to people in your profession. 

Insufficient Disclosure (35 U.S.C. 112) 

The patent application must fully describe the invention so that a person skilled in the art can reproduce it.  

Indefiniteness (35 U.S.C. 112, second paragraph) 

The language claiming the invention must be clear and precise. If the examiner finds it vague or ambiguous, it may be rejected. 

How we proceed with Office Actions

When we receive a copy of an Office Action from the attorney, we will send you a copy for your records. Typically, we then give the attorney time to review the Office Action and to make recommendations to us. At that point, we will inform you about the actions the attorney plans to take, and we can assist you in understanding the examiner’s concerns. The attorney then prepares a response to the USPTO. 

There may be instances when the attorney requires your insight to draft the response. In such cases, we will contact you to gather your thoughts. It is crucial to remember that we are bound by the response deadlines set by the USPTO. (Missing a USPTO deadline can result in penalty fees or, in the worst case, abandonment of the application.)