Based on studies and the USPTO’s data, in the United States almost 90% (!!) of patent applications are initially rejected. The patent examiner will reject the claims for one or more reasons and send an Office action to the applicant that indicates why the application is not allowed. This number can seem daunting, but it is important to understand that this is not the end of the line. For many applicants, it can be extremely disappointing to hear bad news after waiting for months or years after filing a patent application.
After a patent application is filed, it sits in a queue to be examined by a patent examiner. The patent examiner will review the pending patent claims and determine whether they are allowable for a number of reasons. The examiner will examine the claims to determine patentability with respect to patentable subject matter, novelty, and non-obviousness, among other reasons. The patent examiner will explain the issues in an Office action that is written correspondence sent to the applicant.
At this point, the applicant has up to six months to respond to the Office action. The applicant can amend the claims in response to the Office action and its rejections and also can provide remarks that explain why the applicant believes that the claims are allowable and eligible for a patent.
After sending the response to the examiner, the USPTO will review the application again in a few months and determine whether to allow the application or issue another Office action. Based on experience and the USPTO data, the USPTO typically issues about two to four Office actions in each application. For each Office action, the applicant is given up to six months to respond. As a result, patent examination can take a number of years and is simply a back and forth between the applicant and the examiner until the application is allowed or the applicant gives up and abandons the application. Based on the USPTO data, other valuable statistics, and our experience, around 70% of applications are granted by three years after the first Office action.
It is important to understand that in almost all cases, the applicant is unlikely to receive an allowance without receiving one or more Office actions. Thus, an applicant should plan to budget for responses to Office actions after filing a patent application. However, Office actions and rejections are not the end of the line and represent the normal second half of the patent process after drafting and filing the patent application. In many cases applicants do end up with issued patents around three years after the first Office action.
Although it can be difficult, it is important to be patient and understand that the patent process can be unpredictable. Different technologies have very different statistics and each examiner is different. As a result, examination can be quite subjective. In certain cases, success may be inevitable with patience. In others, the process may be an uphill climb with little likelihood for an issued patent. Unfortunately, it is impossible to predict whether it will be successful. Your patent attorney can help set you up for success with a well-drafted patent application, but it is important to set your expectations and understand that examination can be a lengthy, unpredictable process that is almost always filled with bumps in the road.
If you have questions about Office actions, rejections, or the patent process, please reach out to John Bednarz.
