?? I’m Just a Patent Application ??

Anyone remember the Schoolhouse Rocks video “I’m Just a Bill”?? This article is going to be kinda like that except it’s going to be far less musical and much less entertaining.? Just want to set expectations. ??? What it WILL have in common with the video is that it will involve government rules, regulations, and red tape along with bureaucratic inefficiencies.? Fun!

It takes about 2-3 years from the time of filing of a nonprovisional patent application until?it becomes a granted patent.? If you pay the USPTO an extra $4000 dollars, you can “fast track” the process and get it granted in about a year (give or take).? Lacework fast-tracked its initial set of patents back in 2018-2020 when our filings were few and far between, but it’s become too expensive to do it at the volume that we’re patenting now, so 2-3 years it is for the majority of Lacework patent filings.

When you file your patent application (which costs $2000ish in USPTO fees, not including the attorney fees to prepare the application) with the USPTO it is initially sent away for “processing”.? This processing involves the application being classified into extremely specific categories so that 1) it is assigned to a patent examiner who is familiar with the technology and 2) the patent examiner knows the appropriate prior art to search to help ensure that the technology being described has not previously been patented.

Once classified, the status of the application will change to “Ready for Examination” and there it will sit.? And sit.? And sit.? An example application that I looked up for this exercise was filed on 7/23/19, docketed as ready for examination on 8/12/19 and the examiner issued the first communication regarding the case on 1/12/21 (548 days, but who’s counting?!).? You’re starting to see why it takes so long, aren’t you?

The examiner communicates with the applicant through “Office Actions”.? The first communication is called a “Non-Final Office Action” because…well, it’s not final.? In the Office Action the examiner will cite a series of reasons as to why the application cannot be granted.? These reasons generally fall into 3 categories:

1. Non-Patentable Subject Matter (35 U.S.C 101)? You can patent almost anything, but you cannot patent physical phenomena, living things, mathematical equations, abstract ideas, or methods of medical treatment.? We rarely get this rejection because well, we don’t try and patent those!
2. Lack of Novelty (35 U.S.C 102)? This is a super common rejection.? The patent examiner reads your claims closely and then does extensive prior art searches to see if the same material has been patented or disclosed previously.? In the Office Action he’ll explain why the art he has found means that your application cannot be granted.? In great excruciating detail.
3. Obviousness (35 U.S.C 103)? Also super common. In this case, the examiner will find prior art that isn’t QUITE on point, but will tell you that in light of that art it was an OBVIOUS next step to do what you are claiming.? SO obvious in fact, that he couldn’t possibly let your application proceed to grant.?

We let our Outside Counsel deal with responding to the Office Actions - they are highly experienced in dealing with examiners and their cantankerous ways.? From the time the Office Action is issued, they have 3 months to respond (longer if you want to pay extension fees - we do not).? In their response they will explain (again, in great excruciating detail) why the examiner is wrong and the claims ARE novel and not obvious.? They may even “interview” the examiner beforehand where they talk through the objections on a phone call to help understand his points and clarify his misunderstandings.

If you are successful in your response arguments, the examiner will allow your patent to grant.? If you are not, he will issue a “Final Office Action” which sure sounds final, but isn’t really.? It mainly means you need to pay more money.? In order to continue prosecuting the patent, you can respond to the Final Office Action and pay a Request for Continued Examination (RCE) fee which is a mere $1360 at this stage.? After that, if you are STILL unsuccessful in persuading the examiner, he will issue another Non-Final Office Action which you can respond to at no additional cost, but if you’re STILL unsuccessful with that response, he’ll issue ANOTHER Final Office Action, except this time it’ll cost you $2000 to file an RCE.? Each of these back-and-forth exchanges takes a minimum of 4-6 months and the costs start to add up.? Eventually after enough claim-tweaking, the examiner becomes satisfied that your claims are novel, and will issue a “Notice of Allowance”.? From this point you have 3 months to pay the grant fee ($1200) and after that is paid your patent should actually be granted for reals in about 4-6 weeks.

In the example I was referencing above, our Outside Counsel interviewed the examiner on 3/10/21, responded to the Office Action on 3/29/21 and the examiner allowed the application on 5/26/21. ? The grant fee was paid on 8/25/21 and the patent granted on 9/28/21.? So, roughly 2 years and 2 months after filing.?