What happens after a patent application is filed with the patent office? This stage is referred to as patent prosecution and involves formal examination, substantive examination, and post-grant activities with the patent office. Patent prosecution also involves your patent lawyer negotiating the scope of the patent claims prior to granting the application.
A patent application is formally examined upon receipt by the patent office to ensure that the application is complete and that the filing papers meet the formal requirements. This can include reviewing the drawings to ensure they can be reproduced, ensuring the correct fees were paid, and that the filing papers are signed.
Substantive examination of the patent application is to ensure that the novelty and non-obviousness requirements are met. Substantive examination typically occurs about two years after filing the patent application. An Examiner at the patent office will perform a prior art search and issue a report, referred to as an Office Action, that raises objections to the scope of the claims and any other issues. A response to the Office Action is filed with the patent office to address the objection by amending the scope of the claims, submitting arguments, or both. The process of issuing Office Actions and filing responses can be repeated until the Examiner is satisfied that the patent application is in condition for allowance.
The cost to respond to an Office Action can vary from $1,000 to $4,000 depending on the scope of amendments and the prior art cited by the Examiner. Once the Examiner is satisfied with the application, it will be allowed and an issue fee must be paid. Maintenance fees must also be paid in order to keep the patent in-force.