For a utility patent, anywhere from 1.5 to 5 or more years from the date the patent application is filed.  Receiving a first office action, or, communication from a patent examiner in which he or she has evaluated and commented on your patent application, generally takes between 1 and 2.5 years from the filing date.  The main reason for this is the high volume of patent applications that go through the USPTO every year.  In 2018, roughly 600,000 utility patent applications were filed with the USPTO.  Furthermore, roughly 10,000 patent examiners work for the USPTO.  This results in a backlog.  Patent applications are complicated documents that require time and attention to fully appreciate.  For attorneys drafting them, it can take between 15 to 35 or more hours to draft a patent application.  It follows that properly evaluating and commenting on the patent application by the patent examiner takes significant time.  

Furthermore, extensive prosecution, the back and forth between applicants and patent examiners, can add to the time to secure a Notice of Allowance.  Once the patent examiner issues a first Office Action, the applicant generally has up to three months to file a response to that Office Action, though that time period may be extended for payment of a fee.  After the applicant files his or her response to the Office Action, it is common that the applicant will not receive a second Office Action for several months.  Specifically, though patent examiners are charged with promptly responding to applicant communications, there is no statutory clock on them to respond like there is for an applicant.  

Additionally, if after several back and forth communications between an applicant and a patent examiner, it is determined by the applicant that further prosecution would be futile, an appeal may be the best vehicle to secure a patent.  Appeals take time.  First, the applicant has to prepare and file an appeal brief, a legal document setting forth his or her case for patentability of the invention.  Second, the applicant has to wait for the patent examiner to respond with an examiner’s answer traversing the positions of the applicant, although it is possible, but not common, for a patent examiner to reverse his or her position upon reviewing the appeal brief.  Once the applicant has reviewed the examiner’s answer, he or she must decide if it is best to prepare and file a reply brief, a short document responding to what the examiner has set forth.  Once the reply brief is filed by the applicant, or once the applicant determines that a reply brief is not warranted in view of the examiner’s answer, the applicant will simply pay a forwarding fee and have the entire case removed from the hands of the patent examiner and forwarded to the Patent Trial and Appeal Board.  This is where the real time starts to add up.  Getting a decision by the Patent Trial and Appeal Board, which for every case is a panel of patent attorneys, typically takes between 2 and 4 years.

Now, a first variable underlying whether it will take your client 1.5 years to secure patent protection, or 5 or more years to secure patent protection, has to do with the breadth of coverage being sought.  A rule of thumb to keep in mind is that broader claims, though more desirable, will generally require more extensive and time consuming prosecution to get allowed than narrow ones.  This is because broader claims are easier for patent examiners to reject.  For example, if I am writing claims for the latest feature on a new smart phone, and my claim recites, “What is claimed is: 1. A phone”, securing a patent will be impossible, and at a minimum will take forever.  This broad claim can be rejected by any prior art phone that ever existed.  If, however, I instead wrote, “What is claimed is: 1. A phone having a touch screen interface with a dial mechanism on a side portion thereof to adjust a volume level.”, because the scope is so much more narrow, securing patent protection will be much easier, though not guaranteed.  The patent examiner can no longer reject the claim over general prior art technologies directed solely to a phone.  Now the patent examiner must limit his or her search to phones that have touch screen interfaces and dial mechanisms to adjust volume levels.  In other words, because the claim is more narrow, the patent examiner has a smaller pool of prior art to pull from when rejecting the claim.  This makes securing an allowance much easier.  It can be appreciated that this is a balance that applicants must deal with – fighting a time consuming and costly battle for desirable broad patent protection, or yielding to an extent for more narrow coverage.

A second variable underlying whether it will take your client 1.5 years to secure patent protection, or 5 or more years to secure patent protection, has to do with formality issues in the patent application.  Because 35 USC 112 requires the patent application to be in a very particular format, even slight deviations from this format will draw rejections from the patent examiners.  Rectifying the deficiencies pointed out by the patent examiner takes time, and costs money in the form of attorney’s fees, and potentially USPTO fees. 

A third variable underlying whether it will take your client 1.5 years to secure patent protection, or 5 or more years to secure patent protection, has to do with the subject matter of the patent application.  Whenever a patent application is filed, the USPTO will classify it and assign it to a specific art unit within the examining core.  For example, there may be the circuit breaker art unit, the pet toy art unit, and the syringe art unit.  Where your patent application ends up can by default impact your ability to procure a patent.  Specifically, some art units at the USPTO have historically much lower allowance rates than other art units.  As such, if your patent application winds up in one of these art units, even if you have a very strong case for patentability, the deck may be more stacked against you from the outset.  In this case, appeal may be your best option to procure an allowance.

Finally, examination is very subjective and involves a much more extensive search of prior art than most applicants perform before fling a patent application.  Each patent application is assigned to one patent examiner.  Statistics on every patent examiner can be found online, but it is worth noting that some patent examiners have very high (e.g., 86%) allowance rates, while others have very low (e.g, 12%) allowance rates.  If your application happens to fall on the desk of one of the patent examiners with a low allowance rate, like being in a difficult art unit, your chances of securing allowance are going to be impacted, and through no fault of your own.  It is difficult to predict how patent examiners will treat your case.  Some may understand what your client has done right from the outset, and look upon your claims favorably.  Others may, for whatever reason, take a hard position that your invention is not patentable.  In these situations, a time consuming and costly appeal may be your only recourse.  Additionally, patent examiners typically search much more extensively through prior art than most applicants, sometimes even citing art such as a doctoral thesis that is catalogued in a University library.  

In sum, the process can be relatively painless, e.g., 1.5 years with decent coverage resulting, or, can be a nightmare, e.g., 5 or more years with no sign of a favorable outcome, regardless of how innovative the invention is.  

This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2020, all rights reserved.