Patent Filing Deadlines - Know When To Take Action

Patent Filing Deadlines – Know When to Take Action

Since the first-to-file system is now in effect by the law from March 16, 2016. A person with an invention should file an application as soon as possible. The patent filing deadlines begin from this very stage when your application reaches the USPTO. The procedures are quite specific and strictly time-bound. Therefore, one needs to ensure that they keep a vigilant eye on their patent application and on the related procedures. Also, they do guarantee that he/she meets all the requirements within the specified deadlines, to avoid delay in getting the patent grant.

Here in this article, we are going to cover all the possible events that occur during the complete patent life-cycle. We will also discuss the associated time span it takes to move from one stage to another.

Some Pre-requisites before Patent Filing

Consider hiring a patent attorney, he/she may help you with many procedures which will further help you with all the patent filing deadlines and requirements. These include:

  • Patent Searching: this is also known as Prior Art search. This involves finding proof that whether your invention is actually novel or not. Performing a thorough prior art search gives you the liberty of taking your application to the patent office with confidence. This part will also save your patent filing cost if you find your invention not meeting one of the patentability criteria.
  • Drafting a Patent Application: if you don’t find any matching prior-art, you can now move with drafting a patent application. You need to prepare a draft that is devoid of errors. An application comprises an invention description, illustrations, claims, and related paperwork. This procedure can take months of time. But you can finish it in a few weeks with the assistance of an attorney or with reliable patent drafting services. When you draft your patent application with an attorney, do make sure signing aNon-Disclosure Agreement.

Factors of Variation in Prosecution Time

There are many factors that affect patent prosecution. These factors affect the patent filing deadlines and timeline. The factors consist of:

  • Invention’s complexity: this involves the length of the specifications, claims, and drawings for examination. The more the number and complex the details the more time it will take.
  • Examiner(s) at Patent Office: technical inventions are subject to the allotment to a group of examiners at the USPTO. Therefore, depending upon their queue and availability, it can take longer or shorter wait times.
  • Track One: through this mode of examination your patent application gets special priority and you will get the final result within 12 months period of time. This is applicable to your utility and plant patent applications. Moreover, the requirements are less as compared to a regular utility patent application. Also, there is no need to perform a pre-examination search with Track One prioritized examination.

Patent Filing Deadlines on the Patent Timeline

Patent prosecution is a very strict and time-oriented procedure. Therefore, if you are to file a patent application you need to keep certain patent filing deadlines in mind. Also, there are deadlines on USPTO as well in which they complete the examination and decide whether to grant or reject patent rights for the proposed invention.

Figure 1 – Patent Lifecycle

Here we will discuss the US National phase examination of the patent application, starting from the stage of Patent Filing.

  • Patent Filing: patent filing is the process of submitting an application in the patent office requesting a grant of a patent to your invention. This is the first step for procuring a patent grant. the patent filing deadlines start from this very stage.
  • Publication: of patent application in the patent office journal after 18 months of the date of filing. Patents are subject to publication for public awareness of what is seeking patent protection. Along with this people can also learn from the work of the inventor. It meant keeps the industry updated with new innovations while encouraging more inventions.
  • Request for examination: a request for examination of the patent application is filed within 48 months of the filing date or the priority date. If you don’t file within the prescribed time the application shall be deemed as withdrawn by PTO.
  • Pre-grant opposition: when a third-party raises doubt over the patentability of the invention after its publication.
  • Pre-grant opposition can take place within 6 months from the date of publication.
  • On receiving opposition controller of PTO office issues a notice to the patentee.
  • The patentee needs to submit his statement and evidence against the raised issues within 3 months from the date of notification by the controller.
  • The controller of patent office dispose-off the pre-grant opposition within a 1 month time period either by:

–      Rejecting the opposition and granting the patent

–      Accepting the opposition and rejecting the application

–      By amending the application and granting the patent.

  • Issuance of First examination report: the examination report issued by the patent office is the First Examination Report (FER). It comprises a list of objections raised by the PTO examiner that are both technical (whether the invention is patentable) and format related. Generally, there is a maximum of 3 office actions.
  • Filing Response: these are the response to the office actions after making the required amendments in the patent application sought for patent grants.

– The time period for filing an office action response is 1, 2 or 3 months (maximum extension- 6 months).

– File a response within 2 months of final office action then there is no fee charged by USPTO for filing the response.

  • Request for Continued Examination (RCE) – an applicant files an RCE when the applicant receives the final office action and wants a continued examination of the amendments made to the claims of his invention. The deadline for filing RCE is within 6 months from the notification of final office action.
  • Patent Grant: patent grant is the right given to the inventor over his invention (product, design, and utility thereof) for a limited period of time. 20 years for utility and plant patents and 15 years for design patents. It takes around 3 years’ time to get a patent grant.
  • Post-grant opposition: a third party can raise post-grant opposition anytime from the date of grant of a patent to one year from the date of expiry from the date of publication. You can find the grounds of filing post-grant opposition in Section 25 (2) of Patents Act, 1970.

Either of the following will happen after the post-grant opposition-

  • Rejection of the opposition and grant of patent.
  • Acceptation of the opposition and rejection of the application.
  • Amendment of the application and granting of the patent.

This is a complete profile of patent filing deadlines and other procedures. Be very particular of these deadlines and meet all the patent office requirements for an effective and timely patent grant. Consider hiring a patent attorney or patent filing services to share the burden of remembering dates and particularly for not missing any deadline.

Meeting Patent Filing Deadlines with The Patent Filing Company

It becomes a cumbersome task to meet so many patent filing deadlines. You need to keep a vigilant eye on the deadlines, as missing them will lead to a lost chance of a patent grant. With the patent filing company, you will get timely updates of the upcoming deadlines for a smooth prosecution process. Our experts ensure timely giving office action responses and meeting other USPTO requirements within the given time span. We provide proper filing of provisional and non-provisional applications and generate patent search reports as per the patent office guidelines. For more information, visit The Patent Filing Company.

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