Presentation on the Patent Process in US Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

2. Provisional Filing in India First Filing in India
Request for a foreign filing
permit
6 weeks
12 months* Filing in US**
Was the filing a
complete or a
provisional?
Publishing (18 months)
Early publication can be filed
Examination Report
Non- final office action- due
within 3 months
Final Office Action- due within 2
month
Examiner decision (grant/refusal)
US Patent Process
Provisional
File the complete specification (12
months)
Complete

3. Important Deadlines
Filing patent application (either no claim of foreign priority or under
Paris Convention)
 Due within one year from public disclosure, offer for sale,
provisional filing date, or foreign priority date under the Paris
Convention.
Filing U.S. National Stage patent application (under the national
stage of the PCT)
 Due within 30 months from the earliest priority date.
Information Disclosure Statement (IDS)
 1.Generally before mailing of the first Office Action on the merits
2. Within 3 months from the date the prior art was cited in a
corresponding foreign application.
3. At the time of National-Phase filing

4. Assignment
At any time during patent application pendency OR even
after issuance.
Certified Priority Document (Assuming application was
filed under Paris Convention)
Before patent issues.
Preliminary Amendment
 Before first Office Action
Response to Notice of Missing Parts
 Due within two months from the Notice of Missing Parts.
Extension fees can be paid if filed after two months.

5. Notice of Publication
Receive 18 months from the earliest priority/filing date.
Response to Election of Species or Restriction Requirement
Due within one month from the Notice. Extension fees can be
paid if filed after one month.
Non-final Office Action on the merits
No timing. It typically happens approximately 2-4 years after
filing the application.
Amendment or response to Non-final Office Action
Due within 3 months from the Office Action. Extension fees
can be paid if filed after 3 months.

6. File a divisional, continuation, or continuation-in-part application
Must be filed while parent application is still pending (i.e., prior
to abandonment or payment of issue fee of the parent application)
Certified Priority Document (Assuming application was filed
under Paris Convention)
Before patent issues.
Final Office Action
No timing. It typically happens approximately 3-9 months after
filing the amendment.
Amendment or response to Final Office Action
Preferably due within 2 months from the date of the Final Office
Action.

7. File Request for Continued Examination (RCE)
Due within 3 months from the Final Office Action date. Extension
fees can be paid if filed after 3 months.
Notice of Allowance; pay issue fee
Due within 3 months from the Notice of Allowance. Timing
cannot be extended.
Maintenance Fees
Maintenance fees are due at three intervals after issuance in order
to keep the patent active.

8. 3½ years after issuance
Due between 3 and 3½ years after issuance. If paid between
3½ to 4 years after issuance, then government surcharge is due
7½ years after issuance
 Due between 7 and 7½ years after issuance. If paid between
7½ to 8 years after issuance, then government surcharge is
due
11½ years after issuance
Due between 11 and 11½ years after issuance. If paid between
11½ to 12 years after issuance, then government surcharge is
due

9. Important steps
Office of Initial Patent Examination
This is the first place that a patent application goes to in
the U.S. Patent Office. This office is primarily
concerned with reviewing the components of the patent
application to ensure that all of the components of the
application are completed. If some component of the
application is missing or is improperly prepared, this
office will request the proper information or
components from the patent applicant. This office will
typically assign the patent a serial number as well.

10. Art Unit
Once the patent application has cleared the Office of Initial
Patent Examination, it is assigned to an art unit depending
on the technology the invention is primarily concerned
with. The application is usually assigned to an examiner
shortly after being assigned to an art unit.

11. Patent Examination
One of the first things that an examiner may try to determine
is the number of inventions claimed in the application. By
law, a patent can only have one claimed invention. If the
examiner determines that there is really more than one
claimed invention in the application, he will request that the
inventor restrict the application to only one. When the
examiner is satisfied that there is only one invention in each
application, he will review the application to determine if
the claimed invention is patentable.

12. Rejection
A patent rejection can mean that the examiner has found
some reference that he feels describes the claims of the
patent application.
Sometimes only a few of the claims will be rejected
while other claims are allowed by the examiner. The
only way out is amending the claims or persuasively
arguing with the examiner.
.

13. If the examiner does not accept the amendments or
arguments, he may issue a final rejection on the case. The
inventor still has several options :
1) file another application depending from (meaning linked
to) the old application and try to present the invention in
such a way that the examiner will allow the application;
2) amend the claims or argue with the examiner again, but if
the examiner still doesn’t accept the inventor’s position the
application will become abandoned;
3) agree with the examiner and give up on the patent
application or
4) file a request and a fee to keep the examination going.

15. Notice of allowance
Patents give inventors the exclusive right to make, use
or sell their invention for 20 years after the patent is
approved. When the U.S. Patent Office issues a notice
of allowance for a patent, it means that the
government has decided your patent is a genuinely
new invention and intends to grants you a patent.Issue
fees are drew generally within three months of the
Notice of Allowance.

16. Information disclosure statement
An information disclosure statement (often abbreviated as IDS)
refers to a submission of relevant background art or information
to the United States Patent and Trademark Office (USPTO) by an
applicant for a patent during the patent prosecution process. There
is a duty on all patent applicants to disclose prior art or
background information that may be relevant to the patentability
of the applicant's invention

17. Advisory Action
After filing a response to a final office action, the examiner
may issue an advisory action that either continues the rejection
or hopefully indicates agreement to allow some or all of the
claims (if all the claims will be allowed, a notice of
allowability will issue instead).

18. Request for Continued
Examination (RCE)
A request for continued examination (RCE) is a request by an
inventor for continued prosecution after the patent office has
issued a "final" rejection. An RCE is not considered a continuing
patent application - rather, prosecution of the pending application
is reopened. The inventor pays an additional filing fee and
continues to argue his case with the patent examiner.
Apply to utility or plant applications filed (a) on or after June 8,
1995, or international applications filed. The request for continued
examination provisions do not apply to: (1) a provisional
application; (2) an application for a utility or plant patent (a)
before June 8, 1995; (3) an international application (4) an
application for a design patent; or (5) a patent under re-examination.

19. An applicant may obtain continued examination of an
application by filing a submission and the fee set forth in 37
CFR 1.17(e) prior to the earliest of:
(1) the date a patent is granted (but after payment of the issue
fee only if a petition under 37 CFR 1.313 is granted);
(2) abandonment of the application; or
(3) the date applicant seeks court review of a decision by the
Board of Patent Appeals and Interferences (unless the court
action is terminated).
An applicant cannot request continued examination of an
application until after the prosecution in the application is
closed.

20. Notice of allowance
If, on examination, it appears that the applicant is entitled to a
patent under the law, a notice of allowance will be sent to the
applicant. The notice of allowance shall specify a sum
constituting the issue fee which must be paid within three
months from the date of mailing of the notice of allowance to
avoid abandonment of the application. The sum specified in the
notice of allowance may also include the publication fee, in
which case the issue fee and publication fee must both be paid
within three months from the date of mailing of the notice of
allowance to avoid abandonment of the application. This three-month
period is not extendable.

21. Thank You
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