Patent Application – What to Expect After You File One

By: Michael J Foycik Jr. 
June 21, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

So you're an inventor with a patent application!  What happens now that it has been filed with the US Patent Office?  Here's what to expect.
First, you'll get your Official Filing Receipt – it is actually pretty important.  Sure, you'll get an electronic filing receipt if you filed it online.  But, that's not what matters.  The Official Filing Receipt is the easiest and fastest way to get your foreign filing license.  And you'll want that, if you ever intend to file in other countries and need your US priority date.

If the US Patent Office has any objections to the drawings, specification, or abstract, they'll (usually) notify you at the same time they send the Official Filing Receipt.  Formal drawings are the main type of objection – you'll need those.

After a period of time, typically anywhere from six months to two years, you'll get your first Office Action.  That's typically where the patent examiner reads the case, searches for the claimed invention, and applies the prior art to the claims.  This is also where the examiner can make objects, for example objections to claim language, to errors in the specification or drawings, or other things.

The first Office Action could, of course, be an allowance.  Those are not that common.  If your application is allowed, there is an Issue Fee due that varies depending on your inventorship status (micro entity, small entity, or non-small entity).  There is also a publication fee due, too (if the application was published).

Assuming you didn't get an allowance, then you'll have the option to respond to the First Office Action.  Typically, your Response would meet any objections by amending the offending parts.  And, your Response typically would provide remarks in support of patentability, such as explaining how the invention as claimed differs from the applied references.  Your Response likely will also include an amendment to the claims to recite a feature not found in the applied reference, and this is one way to overcome an applied reference.