How Long Does the Patent Examination Process Take?
Obtaining a patent starts with the preparation and filing of a patent application, but there’s a lot more to the process. After an application is filed, the Patent Office sends it through a national security clearance process, and through a classification process that results in the application being assigned to a technology center within the Patent Office that handles the relevant technology. Within the technology center the application is assigned to a specific “art unit,” and within that to a specific examiner. The application goes into the examiner’s queue, and it normally takes a number of months before he or she first examines it.
The first substantive examination of an application is called a “first office action.” The average time for a first office action in the various technology centers ranges from about one to two years after filing of the application. The actual time, however, depends strongly on the particular art unit and the examiner to which an application is assigned. At the ends of the spectrum, I have encountered first office actions that took only a few months to others that took over five years after the initial filing.
If the first office action is favorable, the patent applicant and attorney can then secure issuance of the application within a few months or so. There are a number of potential reasons for rejection of an application, however, and if the first action is a rejection, the applicant and attorney can then “traverse” the rejection with amendments to the claims and/or argument. The most common rejection is based on prior art, and in response applicants will typically argue that some element of the claimed invention is not disclosed in the cited prior art references or that it would not have been obvious to combine the cited references in the way the examiner did. The response can include an interview with the examiner, which is normally conducted by telephone but can be done in person if warranted. Interviews are useful in getting a point across effectively and in expediting examination, so it is preferable to select an attorney who is skilled in using the interview process.
If the first action was a rejection and the examiner is not persuaded by the applicant’s response, a “final rejection” is issued. There are a few options at this point, including the filing of an “after final amendment” or an appeal, but most often a Request for Continued Examination (“RCE”) is filed. An RCE starts the process anew1 with another first action from the same examiner and the same rules as the initial examination: a first action is given, amendments and arguments can be made in response, and the application is either allowed or finally rejected. There is no limit on how many times an RCE can be filed on the same application, so if another final rejection is made, another RCE can be filed, ad infinitum. Typically the time to a first action after filing an RCE is significantly shorter than the time to the first action after filing a new application.
The total average pendency of all patent applications is currently around two years and nine months, including RCEs. This figure is just an average, however, and I have had applications issue in less than a year after filing, and others have taken many years. The actual time it takes can be hard to predict, as it is based on a combination of factors including the backlog of the specific examiner who will be assigned and the strategy that you will want to take in response to the prior art or other specific rejections. To expedite examination I interview with the examiner and respond to actions much more rapidly than the normal response period.
At any time during the examination process the decision can be made – based on business, technical, or economic reasons – to abandon an application. This can be done by an affirmative filing or by just not responding to the last office action.
In some cases, a patent applicant is pursuing subject matter for which the foregoing time frames are unacceptably long. In such cases, the applicant may elect to utilize a new program of prioritized examination wherein the Patent Office examines an application in a highly expedited manner.
An additional filing fee and a petition are required to receive prioritized examination. As with most other Patent Office fees, the additional fee varies based on the type of applicant; for a “small entity” (an individual or business with less than 500 employees including affiliates) this additional filing fee is $2,080.2 An additional attorney fee is also incurred in preparing the required filings.
Total pendency for prioritized examination at the Patent Office has been a bit over six months not including RCEs; the total including RCEs is longer. In my practice, the average has been less than a year from initial filing to issuance. This is far faster than the average for non-prioritized applications.
- The filing of an RCE requires the payment of filing fees as well, which are about the same as those for the original filing.
- The additional fee is $4,080 if your company does not qualify as a small entity; the additional fee is $1,080 if you qualify as a “micro-entity,” which includes a maximum income requirement.