Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 341
Received [date]
Start preparing response by
Response due by [date]
[date]
(I also suggest you make the “Start preparing response
by” date a month ahead of the “Due by” date. If no response
is due simply omit the last two lines or write NA” (not
applicable) on them.)
6. Response to First Office Action
Every OA itself will specify an interval, usually three months
(extendable, for a fee, up to six months) from the date the
OA was mailed, within which you must file a response. Your
response must take whatever action is necessary to overcome
the objections and rejections listed in the OA. The response
you file is technically called an “amendment” (assuming it
contains any changes), or a “response” (assuming it doesn’t
contain any changes). The entire process of correspondence
(Office Actions and amendments) to and from the PTO is
known as “patent application prosecution,” although no one
is “prosecuted” in the usual sense. I show you how to draft
your response in Section F, below.
7. Second/Final Office Action
About two to six months after you file your first amendment,
you’ll receive a second OA from the PTO; this will usually
be designated a “final” OA by the PTO. A final OA is supposed
to end the prosecution stage before the examiner. However,
as we’ll see later, this is far from true. In other words, a “final
action” is rarely final. Again, you have three months to reply.
8. Notice of Allowance
After the first OA—assuming you submit an amendment or
whatever is necessary to get your application in condition for
allowance—you’ll be sent a Notice of Allowance, indicating
that all of your claims are allowed and that an issue fee (and
publication fee if the application was published) is due within
three months. (Sometimes you’ll get a “Notice of Allowability”
before or with the formal allowance; this merely states
that your claims are all allowed, the Notice of Allowance will
be sent, and whether formal drawings are due.)
9. Issue Fee and Issue Notification
Several months after you pay the issue fee (see Appendix 4,
Fee Schedule) and file formal drawings (if you didn’t do so
before), you’ll receive an Issue Notification from the PTO,
indicating the forthcoming issue date and number of your
patent.
10. Receipt of Official Patent Deed
Shortly after the date your patent issues, you’ll receive your
official “Letters Patent” or deed from the PTO. Any printed
copies of the patent that you’ve ordered will arrive in a
separate envelope.
11. Enhanced First Action
Interview Pilot Program
The PTO is testing a program under which some applicants
will have an opportunity to interview their examiner before
the first Office Action but after the examiner makes a
search. The goal of the program is to dispose of applications
early without the need for Office Actions and amendments.
If your application is eligible for the program and you feel
confident enough to study the references, redraft your
claims, and handle an interview, I recommend you enter the
program. To see if you’re eligible, and to see if the program
is still in force, go to the PTO’s home page (www.uspto.gov)
and search for “First Action Interview Pilot Program.” To
enter the program you must be a registered eFiler and you
must file a request on Form PTO/SB/413C.
B. General Considerations During
Patent Prosecution
Patent application prosecution is generally more difficult
than the preparation of the initial application. Assuming
that you’re going to handle the prosecution phase pretty
much on your own, I recommend that you keep the
following general considerations in mind.
1. The PTO Can Write Claims for You
As I mentioned in Chapter 9 (claims drafting), you can
ask the PTO to write one or more claims for you if the
application contains allowable subject matter. Then you can
either accept this claim or amend it if you think you can get
it past the examiner. You should generally have several sets
of varied claims (one independent and several dependent
per set) to cover your invention fully.
2. Consultation With a Patent
Professional Might Be Wise
You might wish to consult with a patent expert at this
point of the proceedings. Paying $200 to $1,000 (if you use
a “discount” patent attorney—see Chapter 6) to have an
expert amend your claims and argument (which is usually