Once the patent application is filed, we wait for the first office action on the merits. This is when the USPTO Examiner substantively reviews the patent application. Now, the Patent Office has updated the First Office Action Estimator. After entering the patent application serial number, the estimator will provide an estimate for a first office action to be issued (e.g., 30 months). The estimate is not guaranteed but is a good general timeframe for patent applicants to gauge expectations.
Setting expectations for first office review timing is important for the applicant. First, if the expectation is too long, there are options to accelerate the review of a patent application. The most common option is to pay an increased filing fee where the patent office will review the application approximately six months from the filing date of the application, and the target is to either grant or issue a final (second) rejection by the one year anniversary of the filing date. Another option to accelerate the patent office review are petitions to make special, the basis of which may include: applicant's age (over 65), health, prospective manufacture, infringement, and environmental quality (to name a few). It is critical to be accurate in these petitions as they are often used as grounds to try and invalidate patents during litigation.
Second, if an applicant becomes aware of a potential infringement of the patent application proposed claims (as written), the applicant can preserve its provisional rights. Although similar in name to a provisional patent application, provisional rights are unrelated. If an applicant sends notice to the potential infringer of the published patent application, and the claims are in substantially the same form at issuance, applicant preserves its provisional rights and may be able to secure damages from the notice date, as opposed to when the patent issues.
Third, knowing when a patent will issue is important if the applicant is aware of infringement of the invention covered by the patent claims. A patent infringement lawsuit can only be filed once the patent issues. Often, once a patent application receives a Notice of Allowance, the applicant and its attorneys can start preparing a federal complaint for patent infringement, if infringement is occurring. Once the issue fee is paid, the applicant (soon to be patent holder) will be prepared to file its lawsuit in federal court on the day the patent issues.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.