Patent prosecution

The USPTO describes the stage after filing as working with an assigned patent examiner, who reviews the application to decide whether it meets the legal requirements for a patent¹. The statute and rules set the steps below.

1. ExaminationThe application is examined by the examiner assigned to it, who reviews whether it meets the legal requirements for a patent¹. If it appears on examination that the applicant is entitled to a patent under the law, a notice of allowance is mailed (35 U.S.C. 151)⁷.
2. Office actionWhen on examination a claim is rejected, or an objection or requirement is made, the Director must notify the applicant and state the reasons (35 U.S.C. 132(a))⁵.
3. ReplyIf, after receiving the notice, the applicant persists in the claim for a patent, with or without amendment, the application is reexamined (35 U.S.C. 132(a))⁵. No amendment may introduce new matter into the disclosure (35 U.S.C. 132(a))⁵.
4. Final actionOn the second or any later examination, the rejection or other action may be made final. The applicant's reply is then limited to an appeal, if any claim is rejected, or to amendment as specified in 37 CFR 1.114 or 1.116 (37 CFR 1.113(a))¹².
5. Allowance and issueIf it appears that the applicant is entitled to a patent, a notice of allowance is mailed. It specifies the issue fee and any required publication fee, which must be paid within 3 months. Upon payment the patent may issue, and if payment is not timely made the application is regarded as abandoned (35 U.S.C. 151)⁷. The USPTO states that this three-month period is not extendable¹.

Failing to reply in time leads to abandonment. By statute, if the applicant fails to prosecute the application within six months after any action of which notice has been mailed, or within a shorter time (not less than thirty days) fixed by the Director in that action, the application is regarded as abandoned (35 U.S.C. 133)². Abandonment is not appealable, but a petition to revive may be granted if the delay was unintentional (37 CFR 1.137(a))¹⁵.

The rules add detail^14,15,16:

• The Office action sets the time for reply. Unless the applicant is notified in writing that a reply is required in less than six months, a maximum period of six months is allowed (37 CFR 1.134)¹⁴.
• The MPEP lists three months as the shortened statutory period used to reply to any Office action on the merits¹⁵.
• An applicant may extend a nonstatutory or shortened statutory period up to the earlier of the statutory maximum or five months after the period set for reply, if a petition for extension and the fee are filed. This does not apply where the Office action says otherwise, or in the other cases listed in the rule (37 CFR 1.136(a)(1))¹⁶.
• No extension can carry the reply date beyond the six-month statutory maximum^15,16.

This page does not state extension fee amounts, which are set in the USPTO fee schedule and change over time.

A reply to a final rejection must include cancellation of, or appeal from the rejection of, each rejected claim¹². The rules give three main routes.

Prosecution is closed, for the RCE rule, when the application is under appeal or the last Office action is a final action, a notice of allowance, or another action that closes prosecution¹⁸. Refusing to admit an amendment after final does not save the application from abandonment if no timely reply is filed¹⁷. See Patent Trial and Appeal Board for the PTAB.

Under the European Patent Convention (EPC), the EPO examines the application on request. The request is not deemed filed until the examination fee has been paid, and if no request is made in due time the application is deemed withdrawn (Article 94(1) and (2))⁸. The request may be made up to six months after the date on which the European Patent Bulletin mentions the publication of the European search report (Rule 70(1) EPC)²⁰.

• If examination shows that the application or invention does not meet the requirements of the EPC, the Examining Division invites the applicant, as often as necessary, to file observations and, subject to Article 123(1), to amend the application (Article 94(3))⁸.
• Each such communication must contain a reasoned statement covering, where appropriate, all the grounds against grant (Rule 71(2))⁹.
• If the applicant fails to reply in due time to any communication from the Examining Division, the application is deemed withdrawn (Article 94(4))⁸.
• Before deciding to grant, the Examining Division informs the applicant of the text in which it intends to grant. It invites the applicant to pay the fee for grant and publishing and to file a translation of the claims in the two official languages other than the language of the proceedings, within four months (Rule 71(3))⁹. Paying and filing in time means the applicant is deemed to have approved the text (Rule 71(5)), and failing to do so means the application is deemed withdrawn (Rule 71(7))⁹. If the applicant instead requests reasoned amendments or corrections to the communicated text, or keeps to the latest text it submitted, within the period, the Examining Division issues a new Rule 71(3) communication if it consents, and otherwise resumes examination (Rule 71(6))⁹.
• The Examining Division then decides to grant, or refuses the application unless the EPC provides a different legal consequence. The grant decision takes effect on the date the mention of grant is published in the European Patent Bulletin (Article 97)¹⁰.

Prosecution is the stage between filing and the office's decision on the application. What comes after grant is a different set of proceedings, and the list below is not exhaustive.