US Patent Office - Examination of Patent ApplicationsAn examination of a patent application consists of:
- a study of the patent application for compliance with all legal requirements
- a prior art search through United States patents, foreign patent documents, and available literature, to see if the claimed invention is new, useful and nonobvious
The US Patent Office grants about two out of every three applications for patents which are filed.
US Patent Office - Restrictions on Patent ApplicationsIf two or more inventions are claimed within a single patent application (either deliberately or unknowingly), the US Patent Office will not issue a single patent covering all inventions. The applicant will be required to limit the patent application to one of the inventions. The applicant could file a separate application for the other invention(s) and if that is filed while the first patent application is still pending, the other patent application(s) will benefit by receiving the earlier filing date.
US Patent Office - What Is An Action?Applicants are notified in writing of any US Patent Office decision called an action. The reasons for any adverse action, objection, or additional requirement(s) are stated in the action. The US Patent Office will include information or references that may be useful in aiding the applicant to decide if they should continue with their patent application.
If the invention is not patentable, all claims will be rejected. If the US Patent Office finds that the invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first office action by the examiner, relatively few patent applications are allowed as filed.
Applicants Reply - To Adverse ActionsIf your patent application is rejected, you have to write to the US Patent Office within a certain time period to get them to reconsider. Your written letter called the "applicants reply", must distinctly and specifically point out the supposed errors in the examiners action, and address every reason for objection and rejection made by the US Patent Office. You can also request that the US Patent Office states what they find patentable within your patent application.
The applicants reply must be a bona fide one. The mere allegation that the examiner made a mistake will not be received as a proper reason for reconsideration.
Amending a Patent ApplicationWhen amending an application in reply to a rejection, the applicant must clearly point out why the amended claims are now patentable. In your written reply you must address any reference made by the US Patent Office to unfavorable prior art and how your amended claims are different from that prior art.
After the applicants reply is received, the patent application will be reconsidered. The applicant will be notified whether the claims are rejected, or objected to, or whether the claims are allowed. The second time around, US Patent Office usually makes its decisions (actions) final.
Interviews with examiners may be arranged, but an interview does not remove the necessity of replying to Office actions within the required time.
US Patent Office - Final RejectionWhen the US Patent Office makes their rejection or other actions final, the applicants reply is then limited. An appeal may be taken to the Board of Patent Appeals or a continuation application can be filed.