The Examination Process

The Examination Process By: Sheetal S. Patel

1. Initial Patent Examination 2. Art Unit 3. Patent Publication 4. Patent Examination 5. Office Action 6. Response 7. Notice of Appeal 8. Pre-Appeal 9. Appeal Brief 10. Federal Circuit 11. Allowance 12. Maintenance Fees 13. Patent Term Adjustment 14. Conclusion Overview

Overview (Continued…) • The process begins with the filing of a patent application and (hopefully) ends with the issuance of a granted patent • The examination process generally takes between 2-5 years since the U.S. Patent and Trademark Office (USPTO) has a considerable backlog of pending patent applications • Note: Some art units take less time than others, but biomedical, electrical and business method-related art units generally take the longest

Office of Initial Patent Examination (OIPE) • The first place that a patent application is processed in the USPTO is the OIPE • OIPE reviews the patent application for formalities • If portions of the patent application are incomplete or improperly prepared, the OIPE will request the proper information or components from the applicant • The OIPE assigns the patent application a serial number and assigns an art unit to examine the application

Art Unit • Once the patent application has cleared the OIPE, the application is assigned to an art unit depending on the technology to which the invention pertains • An art unit is a group of Examiners that are tasked with examining certain technologies • The art unit assigns the application to an Examiner

Patent Publication • Patent applications are usually published within 18 months after filing unless otherwise requested by the applicant • For a fee, the publication can also be moved to either an earlier or later date depending on the preference of the applicant • Once the patent application is published, it is available to the public and can also be used by Examiners as “prior art” • The public may search a database containing patent publications or use a program called Public PAIR (Patent Application Information Retrieval) that allows users to track what happens to the application regardless of their association with the application, or lack thereof

Patent Examination Process • The Examiner checks that there is only one distinct invention claimed in the application • If more than one invention is claimed, the Examiner will issue a Restriction Requirement that requires the applicant to restrict examination to a group of claims associated with a single invention • The Examiner will then perform a search to determine whether the the claims are patentable • If the Examiner believes that any of the claims are not patentable, the Examiner will issue an Office Action rejecting such claims • If the Examiner believes that all of the claims are patentable, the Examiner will issue a Notice of Allowance

Types of Office Actions • The Examiner will issue either (1) a non-final Office Action; or (2) a final Office Action, depending on where the application is in prosecution • The first Office Action is always non-final • Any subsequent Office Action after the first Office Action in a case can, and usually will, be made final by the Examiner

Contents of an Office Action • Office Action Summary summarizing the status of each claim (rejected/objected to/allowed); may also acknowledge or object to drawings and may acknowledge priority of a previous application that is claimed in the present application • May include objections to the specification, claims and/or drawings, and rejections under 35 U.S.C. §§ 101 and 112 • May include rejections under 35 U.S.C. § 102 (anticipation), § 103 (obviousness), and/or a double patenting rejection • Response to the applicant’s previous arguments, if applicable (where the applicant traverses any rejection, the Examiner should, if he or she repeats the rejection, take note of the applicant's arguments and answer the substance thereof)

Final Office Action • Under current patent practice, any second or subsequent Office Action on the merits may be made final, except where the Examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims, nor based on information submitted in an Information Disclosure Statement (IDS) filed during the period set forth in 37 C.F.R. § 1.97(c) with the fee set forth in 37 C.F.R. § 1.17(p) • A final Office Action generally means that an applicant will not be entitled to another Office Action without traversing the rejections, appealing or filing a Request for Continued Examination (RCE)

Response to Office Action • The applicant or the Applicant’s representative may respond to the Office Action • The applicant may (1) present arguments; and/or (2) amend the claims to overcome the rejections presented in the Office Action • When responding to a final Office Action, Amendments to any finally rejected claims or the addition of any claims in a Response to a final Office Action are not considered a matter of right • The exception is where an amendment merely cancels claims, adopts Examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the Examiner, in compliance with the requirements of a showing under 37 C.F.R. § 1.116(b)(3), which is expected in all amendments after final rejection

Advisory Action • If the Examiner does not agree with the applicant’s arguments and/or the claim amendments raise new issues in a Response to a final Office Action, the Examiner may issue an Advisory Action • The Advisory Action contains reasons for the Examiner’s disagreement • Applicant(s) may respond to Advisory Action by: • Filing an RCE requesting entry of the Response; • Filing an RCE and a Response; • Filing a Notice of Appeal and a Pre-Appeal Brief Request for Review; • Filing a Notice of Appeal and subsequently an Appeal Brief; or • Abandoning the application.

Notice of Appeal • Applicants having one or more claims that have been twice rejected may appeal the rejections to the Board of Patent Appeals and Interferences (BPAI) by filing a Notice of Appeal accompanied by the fee set forth in 37 C.F.R. § 41.20(b)(1) within the time period provided under 37 C.F.R. § 1.134 • So long as the applicant has twice been denied a patent, an appeal may be filed • An appeal must be taken from the rejection of all claims under rejection that the applicant proposes to contest; questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered • The applicant must file an Appeal Brief within two (2) months from the date of filing the notice of appeal or no longer than seven months (i.e. a 5 month extension of time past the two month due date)

Pre-Appeal Brief Request for Review (PABRFR) • The applicant must file a Notice of Appeal in compliance with 37 C.F.R. § 41.31 • The applicant must file the PABRFR with the filing of a Notice of Appeal and before the filing of an Appeal Brief • Requirements for PABRFR: • File the PABRFR and accompanying arguments in a separate paper entitled "Pre-Appeal Brief Request for Review;” • Show clear errors in all of the Examiner's rejections and/or show the Examiner's omission of one or more essential elements needed for a prima facie rejection; • In five (5) or less total pages, provide a succinct, concise and focused set of arguments for which the review is being requested; and • No after-final or proposed amendments may accompany the request

PABRFR (Continued…) • After a review of the PABRFR and arguments by the Examiner, his or her supervisor and an appeals specialist is complete, the USPTO will mail a decision on the status of the application indicating one of the following: • The application remains under appeal because there is at least one actual issue for appeal; • Prosecution on the merits is reopened and an appropriate Office communication will follow in due course; in appropriate circumstances, a proposed amendment may accompany the panel's decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s); • The application is allowed on the existing claims and prosecution remains closed; or • The request fails to comply with the submission requirements and is dismissed

Appeal Brief • The appellant must file a an Appeal Brief under this section within two months from the date of filing a Notice of Appeal under 37 C.F.R. § 41.31 • The Appeal Brief must be accompanied by the fee set forth in 37 C.F.R. § 41.20(b)(2) • Contents of the Appeal Brief: • Real party in interest; • Related appeals and interferences; • Status of claims; • Status of amendments; • Summary of claimed subject matter; • Grounds of rejection to be reviewed on appeal; • Arguments; • Claims appendix; • Evidence appendix; and • Related proceedings appendix • If an Appeal Brief is filed that does not comply with all the requirements of 37 C.F.R. § 41.31(c), the appellant will be notified of the reasons for non-compliance and given a time period within which to file an amended brief; if an appellant does not file an amended Appeal Brief within the set time period, or files an amended Appeal Brief that does not overcome all the reasons for non-compliance stated in the notification, the appeal will be dismissed • The evidence and related proceedings sections must be included even if no evidence and/or related proceedings exist

Examiner’s Response to Appeal Brief • After an appeal brief under 37 C.F.R. § 41.37 has been filed and the Examiner has considered the issues on appeal, the examiner may: • Reopen prosecution to enter a new ground of rejection with approval from the Supervisory Patent Examiner, or SPE (see MPEP § 1207.04); • Withdraw the final rejection and allow the application if the Examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or • Maintain the appeal by conducting an appeal conference (MPEP § 1207.01) and draft an Examiner's Answer (MPEP § 1207.02); Any Examiner's answer mailed on or after September 13, 2004 may include a new ground of rejection (MPEP § 1207.03)

Examiner’s Answer • The primary Examiner may, within such time as may be directed by the Director, furnish a written answer to the Appeal Brief, including such explanation of the claimed invention and of the references relied upon and grounds of rejection as may be necessary, supplying a copy thereof to the appellant. If the primary Examiner determines that the Appeal Brief does not comply with the provisions of 37 C.F.R. §§ 41.31 and 41.37, or that the appeal does not relate to an appealable action, the primary Examiner shall make such determination of record • An Examiner's Answer may include new grounds of rejection

Actions in Response to Examiner’s Answer • If an Examiner's Answer contains a rejection that is designated as a new ground of rejection, the appellant must, within two months from the date of the Examiner's Answer, exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection: • Request that prosecution be reopened before the primary Examiner by filing a reply under 37 C.F.R. § 1.111 with or without amendment or submission of affidavits (37 C.F.R. §§ 1.130, 1.131 or 1.132) or other evidence; any amendment or submission of affidavits or other evidence must be relevant to the new ground of rejection; or • Maintain the appeal

Reply Brief • The appellant may file a Reply Brief to an Examiner's Answer within two months from the date of the Examiner's Answer; extensions of time under 37 C.F.R. § 1.136(a) for patent applications are not applicable to this time period • A Reply Brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence • The appellant will be notified if a Reply Brief is not in compliance with 37 C.F.R. § 41.41(a)

Examiner’s Response to Reply Brief • After receipt of a Reply Brief in compliance with 37 C.F.R. § 41.41, the primary Examiner must acknowledge receipt and entry of the Reply Brief; in addition, the primary Examiner may withdraw the final rejection and reopen prosecution or may furnish a supplemental Examiner's Answer responding to any new issue raised in the Reply Brief • A supplemental Examiner's Answer responding to a Reply Brief may not include a new ground of rejection • The appellant may file another Reply Brief under 37 C.F.R. § 41.41 to any supplemental Examiner's Answer within two months from the date of the supplemental Examiner's Answer; note that once again, extensions of time under 37 C.F.R. § 1.136(a) are not applicable to this time period

Oral Hearing • An oral hearing should be requested only in those circumstances in which the appellant considers such a hearing necessary or desirable for a proper presentation of the appeal • If the appellant desires an oral hearing, the appellant must file, as a separate paper captioned "REQUEST FOR ORAL HEARING“, a written request for such hearing accompanied by the fee set forth in 37 C.F.R. § 41.20(b)(3) within two months from the date of the Examiner's Answer or supplemental Examiner's Answer • If no request and fee for oral hearing have been timely filed by the appellant as required by 37 C.F.R. § 41.47(b), the appeal will be assigned for consideration and decision on the briefs without an oral hearing • If the appellant has complied with all of the requirements of 37 C.F.R. § 41.47(b), a date for the oral hearing will be set, and due notice thereof will be given to the appellant

Decision by BPAI • The BPAI may affirm or reverse the decision of the Examiner in whole or in part on the grounds and on the claims specified by the Examiner • The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the Examiner on that claim, except as to any ground specifically reversed • The BPAI may also remand an application to the Examiner • If the appellant disagrees with any of the decisions made by the BPAI, such decisions may be appealed to the Court of Appeals for the Federal Circuit (CAFC)

Allowance of Patent Application • Allowance of the patent application, indicated by a Notice of Allowance, means that the patent application is accepted, and in due time will become a granted patent with payment of the associated fees • The application will not issue as a granted patent until an issue fee is paid, and even then it may take six months before the USPTO officially issues the patent

Patent Term Adjustment • Due to the backlog of pending patent applications at the USPTO, a patent application will normally not be reviewed for at least a year, and usually not for considerably longer • Some art units, such as those involved with electronics, biomedical, and business technologies, are averaging close to a five year wait before an Examiner reviews a patent application • If the patent office takes longer than three years to examine and grant a patent, the term of the patent may be adjusted accordingly

Patent Term • The patent term is 20 years after the filing date of the patent application, adjusted for delays in prosecution by the USPTO • Before 1995, the term of a patent was 17 years from the issue date of the patent

Maintenance Fees • A patent owner must also pay periodic maintenance fees in order to keep an issued patent alive • Maintenance fees are currently due before the fourth year, the eighth year, and the twelfth year after the patent is granted • Maintenance fees are subject to change every year, so it is important to keep yourself apprised of the fee schedule provided by the USPTO

Conclusion • The patent prosecution process at the USPTO begins with filing a non-provisional patent application and ends with either the issuance of a patent or an abandonment of the application • The examination process for a patent application is quite complex and involves many stages and strategies • It is advisable for applicants who are not well-versed with the system to seek the assistance of expert patent counsel

The Examination Process