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Waiting Time Prior To The First Office Action On A Patent Application
Inventor 1: Hurry! I have filed a patent application for our invention. Let’s celebrate.
Inventor 2: Not that soon, the application has to undergo various stages before it gets granted. The most tiresome waiting time is the issuing of the first review, which is referred to as the first office action by USPTO.
Inventor 1: Oh! Tell me more about it
Inventor 2: Sure! would love to explain.
Table of Contents
First Office Action or First Review
The Patent Office examiner checks for formal requirements and the application’s eligibility under the laws when a patent application is submitted and forwarded for evaluation of its validity. A patent examiner will write an Office Action after evaluating a patent application to express his or her thoughts on whether all or any of the claims are acceptable. If the Office Action indicates that any or all of the claims are not admissible, the applicant has the opportunity to reply.
First Office Action Pendency
The average number of months between the date a patent application is filed and the day the USPTO mails a First Office Action is known as the “First Office Action Pendency.” The word “pendency” describes the application’s status as pending or in the process of being decided.
First Office Action Pendency encompasses the period of time until the USPTO takes its first action as well as any period spent waiting for an applicant to respond and submit all required application components. As of October 2022, the average wait time for the office action pendency is 17.7 months. The details information regarding the Patent Pendency Data for October 2022 is available at https://www.uspto.gov/dashboard/patents/pendency.html.
The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:
USPTO Technology Center
Average wait time (months)
Biotechnology and organic chemistry
Chemical and materials engineering
Computer architecture, software, and information security
Networks, multiplexing, cable, and security
Semiconductors, electrical systems, and optical systems
e-commerce, transportation, construction, and agriculture technologies
Mechanical engineering and manufacturing technologies
First Office Action Estimator
A new approach for allocating patent applications to patent examiners based on Cooperative Patent Classification (CPC) was adopted by the United States Patent and Trademark Office (USPTO) in the fiscal year 2021. By inputting a certain patent application’s serial number, you can get an idea of when a first Office action will be issued.
As an alternative, you can log in to Private PAIR or Patent Center with your application serial number and check projections for the time it will take for a first Office action to be issued in that application. If an application has not yet been categorized, a first Office action estimation will not be available for the application. The majority of applications should be classified three months after filing. The First office action estimator is available at https://www.uspto.gov/learning-and-resources/statistics/first-office-action-estimator.
An applicant can determine when costs will likely be paid to respond to the Office action by checking online when a patent application is anticipated to receive a first Office action from the USPTO.
Shorten the Waiting Time
There are a few techniques to expedite your utility patent application, but only a handful of them will move your application ahead of the pack. Here are some ways to skip forward in line:
- Inventor’s age or health: Based on the age of the inventor, utility patent applications can be processed more quickly. A petition to make an exception based on age may be submitted to the USPTO by an inventor who is at least 65 years old in order to expedite the review of the patent application. The PDF-based e-petition submitted using the USPTO EFS online system will automatically and immediately be approved.
The inventor should send a copy of their birth certificate, driver’s license, or passport to their patent attorney as proof of age. The patent application will be advanced out of order if a petition based on the inventor’s age is approved. This indicates that the patent application will go ahead of the pack and get a preliminary review sooner than the typical first Office Action wait time.
A petition to make special may be filed with supporting documentation if the applicant’s health makes it likely that they won’t be able to participate in the patent application process. A doctor’s certificate or another type of medical certificate is acceptable as proof. Since there isn’t an electronic petition based on health today, a petition must be carefully drafted to satisfy all petition requirements.
- Track One Prioritized Examination: If you need to move your ideas rapidly, you can acquire a final disposition from the USPTO’s Track One prioritized examination in roughly a year. For a more expedited review of your utility and plant patent applications, the USPTO offers Track One program.
With fewer prerequisites than the current accelerated examination program and without requiring you to conduct a pre-examination search, Track One grants your application special status. Detailed information on the same is available at https://www.uspto.gov/patents/initiatives/usptos-prioritized-patent-examination-program.
- Patent Prosecution Highway (PPH): The USPTO offers the Patent Prosecution Highway (PPH) initiative in association with a number of international patent offices. Only before a first Office action is mailed can a candidate submit a free petition for admission to the PPH program. Only if a foreign patent office that participates in the program has acknowledged that at least one claim in a related patent application is acceptable, is a U.S. patent application eligible for the program.
Since the application will move up in the examination queue upon admission into the PPH program, the USPTO’s initial Office action estimate may help an applicant appropriately timing their PPH file and receive an Office action more quickly than anticipated.
When the USPTO mails a first Office action, a variety of things can change, including the assignment of a patent application to a different examiner or the use of discretion by an examiner to move a patent application out of the normal order in which it is examined.
A longer wait period gives you the opportunity to see the outcomes of relevant cases before receiving a first Office Action if you have any connected patent applications. Your ability to change claims in your pending non-provisional before the examiner starts their examination may be made possible by your superior understanding. As a result, the claims are stronger, may contain more permissible subject matter, and may even prevent a subsequent Office Action.
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