San Diego, CA asked in Patents (Intellectual Property) for California

Q: How can I move my patent from application to grant stage? Thank you.

3 Lawyer Answers
Ahaji Kirk Amos
Ahaji Kirk Amos
Answered
  • Patents Lawyer
  • Raleigh, NC

A: Unless you request expedited prosecution, you will wait about 18 months after you file a patent application before your application is examined. The typical prosecution phase is about 36 months. The best way to move it forward is to respond to USPTO office actions as soon as possible. You get 6 months to respond, responding as soon as the action is received will result in a quicker prosecution phase.

Griffin Klema
Griffin Klema
Answered
  • Patents Lawyer
  • Tampa, FL

A: I agree with Ms. Amos. You still need to enter the examination phase, and you will almost certainly encounter what is called an "office action" that will reject your patent in some way. Responding to that office action as soon as you can will ensure that the process moves along quickly. Keeping your claims as narrow as possible also helps move things quickly. However, choosing narrower claims rather than the broadest possible claims you might be entitled to may lead to forfeiture of important rights. It's a decision made by you as the applicant together with an experienced patent attorney to effectively achieve your goals and strike the proper balance between speed of prosecution and breadth of the final rights.

Sean Erin Serraguard
Sean Erin Serraguard
Answered
  • Patents Lawyer
  • Troy, MI

A: Agreed with Ms. Amos and Mr. Klema on all points but one. Though you do technically have 6 months to respond to an office action, the USPTO only gives you 3 months for response to an office action. Any delay past 3 months will create a significant cost, as you will have to pay for 1 month, 2 month, and 3 month extensions which become progressively more expensive. Otherwise, fast response on office actions is certainly helpful. Also, calling the examiner to schedule an interview can be helpful, as many examiners will let you know what they believe would overcome the rejection.

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