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A Brief Introduction of Patent Examination System of the United States

After submitting an application to the United States Patent and Trademark Office (USPTO), the examiner will conduct a comprehensive examination of the application, which can be roughly divided into two stages: preliminary examination and substantive examination.

 Preliminary examination

During preliminary examination stage, the examiner will usually issue notices: Formalities Letter, notice of restricted examination opinions.

1.Formalities Letter

The applicant submits the application to the United States Patent and Trademark Office (USPTO), and after the examiner accepts the application, the submitted materials will be initially examined for formatting.If the examiner considers that there are formal deficiencies in the materials submitted by the applicant, a "Formalities Letter" will normally be issued.The "Formalities Letter" usually involves the problems of appended drawings and sequence tables, such as unclear appended drawings, inaccurate marking of appended drawings, no illustration of appended drawings and failure to submit a separate sequence table, etc

Deadline for reply:Within two months from the date of issuance of the notice, a maximum of six months may be extended subject to payment of an extension fee.

2. Restricted examination opinions

In general, the examiner will first examine whether the claims in the application document meet the requirement of "single invention".If the examiner believes that the claims involve two or more sets of unrelated inventions, he will ask the applicant to choose between them by issuing a "Restriction Requirement" (RR).The applicant must select a set of inventions to be subject to subsequent substantive examination, which cannot be avoided even if the applicant considers the examiner's requests to be mistaken and raises traverse.And in some technical areas, traverses often take a lot of time and effort, with results that are generally unsatisfactory, so professional agents may advise applicants to consider doing no defenses (without traverse).Other inventions that are not selected can then be re-filed with the USPTO as sub-case applications

Deadline for reply:Within two months from the date of issuance of the notice, a maximum of six months may be extended subject to payment of an extension fee.Unlike many countries, the extension fee in the United States can be submitted with the response after the deadline has expired.For example, the time limit for an RR response is two months, but the applicant does not submit the response until the fourth month. In this case, the two-month extension fee can be submitted together with the response.

ⅡSubstantive examination

In substantive examination, if the examiner considers the application has a patentability defect, an Office Action will be issued to the applicant.During substantive review phase ,usually the  notices are issued:Non-Final Office Action,Final Office Action and Advisory Action.

1.Non-Final Office Action

Non-final Office Action is generally the first Office Action received after the application entered into the Substantive examination. It is the first time an examiner has raised at least one new issue affecting the granting of an application.

Deadline for reply:Within three months from the date of issuance of the notice, a maximum of six months may be extended subject to payment of an extension fee.  

The applicant must respond or correct any deficiencies identified by the examiner and overcome deficiencies by disputing the examiner's opinion or amending the claims.  If the deficiency is overcome and no new deficiency is introduced in the applicant's response, the examiner may issue a Notice of Allowance to the applicant.

2.Final Office Action

The applicant has not fully resolved or overcome all deficiencies identified in the previous Office Action and the examiner will therefore issue a Final Office Action.  

Note:Usually, if the applicant has not fully overcome all the deficiencies mentioned in the first non-final Office Action, the second Office Action issued by the examiner is basically the final Office Action. However, according to the actual situation, the examiner may issue non-final Office Actions for several times before issuing final Office Action.  

Deadline for reply:Within three months from the date of issuance of the notice, a maximum of six months may be extended subject to payment of an extension fee  

Note:If the applicant considers that the deficiencies mentioned in the final Office Action are not easy to overcome, and the examiner may need more time to review the response document submitted by us, the applicant may submit the response within three months, at the same time requesting RCE(Request for Continued Examination) (with additional cost).  If the applicant considers the deficiencies mentioned in the final review to be easier to overcome and less extensive, he/she may attempt to submit a response within two months and request the AFCP (After Final Consideration Pilot )at the same time to avoid incurring RCE costs prematurely.

There are two common ways to reply to Office Actions: amendment of claims and defense  

Amendment of claims:If the applicant considers that the prior art cited by the examiner or the defects presented are reasonable, the applicant may make appropriate modifications to the claims based on the examiner's recommendation in order to obtain authorization as soon as possible.  

Defense :If the applicant considers that the defects presented by the examiner are unreasonable and that the literature cited does not belong to prior art, the applicant may respond by way of argument in order to protect the maximum scope of the patent.

Of course, the answer is not black and white; most applicants use a combination of the two. While amending the claims appropriately, the applicant can properly dispute what is deemed unreasonable.

3.Advisory Action

In the US, the "round robin" system is adopted. Usually, if the applicant receives a Final Office Action, it means that the round of review by the examiner has been completed.If the applicant submits a response within two months but does not fully overcome all deficiencies in the Final Office Action and leave the patent in the status of grant, the Examiner will issue Advisory Action.If the applicant wishes to continue the review, he/she must request an RCE, which means a new round of review has begun and the next letter he/she may receive is a notice of non-final Advisory Action.  

Deadline for reply:The Advisory Action can be seen as an extension of the final Office Action, i.e. the time limit for responding to the Advisory Action = the time limit of three months for responding to the final Office Action, which can be extended up to six months subject to payment of an extension fee. For example:The final Office Action was issued on February 1, 2021, the applicant submitted the reply within two months on March 20, 2021, and the examiner issued the Advisory Action on April 5, 2021, so the deadline for the reply of Advisory Action is May 1, 2021.

 


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