Below are the answers to common patent and trademark questions that we hear from clients.

How long does it take to obtain a patent?

As of December 2016, the U.S. Patent & Trademark Office reports that the average total pendency for a patent application is 25.4 months.  However, patent applications that relate to software are typically pending for substantially longer and patent applications that relate to mechanical inventions typically issue in a substantially shorter time frame.

A pending patent application can have great value to you even before it issues as a patent. In most instances, you need not wait for your pending patent application to issue as a patent before proceeding with a transaction involving the subject invention. Please speak to your patent attorney prior to making any disclosures of your invention outside of your company.

What happens if our patent application is rejected by the U.S. Patent & Trademark Office?

As a former Patent Examiner with the U.S. Patent & Trademark Office, I can tell you that most patent applications receive office actions, also known as rejections. This is simply how the system operates.  As of December 2016, the Patent Office was issuing an average of 2.45 office actions per application.  However, that statistic includes continuation applications, which tend to receive substantially fewer office actions.  The average for new applications is much higher. Also, patent applications that relate to software typically receive more office actions and patent applications that relate to mechanical inventions typically receive fewer office actions.

An office action puts the burden on us to come back and present arguments (and sometimes amendments) countering the Examiner's rejections.

How long do we have to respond to an office action from the U.S. Patent & Trademark Office?

For most office actions, a response is due by 3 months from the mailing date of the action.  This can be extended out to 6 months from the mailing date of the action by paying an extra fee when responding.  If no response is filed by the extended due date, the U.S. Patent & Trademark Office will consider the patent application abandoned and your rights may be lost.

When we send you an office action that has been received for your patent application, we will indicate the due date for responding to that particular office action.  Please instruct us well before that due date to file a response so that we may have time to prepare and file the best, most effective response for you.