What is a Compact Patent Prosecution?

Compact prosecution involves the USPTO patent examiner finding the core issues with patent applications and working with the applicant (or attorney or agent) in resolving them as early in the examination process as possible. The USPTO has a continued goal of being more efficient and improving overall application pendency (Pendency is how long it takes for a patent application to either issue or go abandoned). This goal manifests itself  in fewer office actions allowed per prosecution, generally only two: a first non-final action and a final action.  Looking at the positive side: The result is fewer office actions per disposal, improved overall application pendency, and timely examination which may spur innovation. The applicant gets a better ability to make an educated business decision whether to continue prosecution and faster resolution of issues leading to either allowance or abandonment. Looking at the negative side: Applications go abandoned faster and may required some kind of continued examination in order to issue rather than go abandoned.


See the USPTO Training Materials for Examiners on Compact Patent Prosecutions at http://www.uspto.gov/patents/law/exam/compact_prosecution.pdf.


Responding correctly to the first non-final office action is more important than ever. Gone are the days of multiple non-final refusals.

An example of a specific application (enablement requirement) of a compact patent prosecution is found in MPEP 2164.04.

“In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal. Providing the best case in the first Office action will also allow the second Office action to be made final should applicant fail to provide appropriate convincing arguments and/or evidence. Citing new references and/or expanding arguments in a second Office action could prevent that Office action from being made final. The principles of compact prosecution also dictate that if an enablement rejection is appropriate and the examiner recognizes limitations that would render the claims enabled, the examiner should note such limitations to applicant as early in the prosecution as possible.”


What is a Typical Timeline for a USPTO Patent Application?

The average pendency for a USPTO patent application to get to disposal (to issue or be abandoned) was 32.4 months in FY2012. The prosecution shown below was 37 months.


What Does A Patent Prosecution Look Like?

A bunch of documents. All business with the USPTO is transacted in writing so each step of a patent prosecution is a document(s) submitted electronically or on paper.

Issued patent files, otherwise known as File Wrappers or Image File Wrappers, show actual patent application steps taken-both required and optional-for an issued patent. These steps are documents that are filed by the patent applicant (the inventor or the inventor’s attorney or patent agent) and the responding steps by the USPTO paralegals and patent examiner.

This page has the timeline of a recent mechanical utility patent application that issued in November 2010.  This timeline (start to finish) is shown in reverse order of how it appears in public PAIR. (In the Patent Application Information Retrieval system or PAIR, the Issue Notification  or Issue Fee Payment is the first step shown.)

  This nonprovisional application was filed in 2008 exactly 1 year after a corresponding provisional application had been filed. This application had one refusal (office action) and one answer to the office action in the form of  Amendments to Claims and Request for Reconsideration After Non-Final Rejection.


File wrapper: The folder into which papers for a particular application are collected and maintained. It contains a complete record of proceedings in the USPTO from the filing of the initial patent application to the issued patent. The file wrapper of a patent application that is maintained by the Office is the "official record.”  Image File Wrapper (IFW) is an electronic version of a patent application, including image and/or text versions of the bibliographic information, all papers as filed, and all office actions and correspondence related to that application. (http://www.uspto.gov/main/glossary/index.html)


Example of a Patent Application Timeline

Mail Room Date

 Document Code

Document Description

Is it a required filing?


Sep-2007

IDS

Information Disclosure Statement (IDS) Filed (SB/08)

Original filing-required if applicant has identified pertinent prior art

The applicant provides an Information Disclosure Statement (IDS) at the earliest possible stage of prosecution detailing the most pertinent references known to applicant. The Examiner is to consider each reference cited in the IDS prior to the next Office action on the merits.

Sep-2007

SPEC

Specification

Original filing-required

The  specification is the written portion of the application submitted by the applicant describing the invention.

Sep-2007

CLM

Claims

Original filing-required

The claim is that part of a patent application particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention or discovery

Sep-2007

ABST

Abstract

Original filing-required

The abstract is a portion of the application, as submitted by the applicant, that gives a brief overview of the disclosed invention

Sep-2007

DRW

Drawings-only black and white line drawings

Original filing-required

One or more drawings must be submitted where necessary for the understanding of the subject matter sought to be patented.

Sep-2007

OATH

Oath or Declaration filed

Original filing-required

This particular application combined the Declaration and the Power of Attorney and did not use a standard form.

Each inventor must make an oath or declaration that he/she believes himself/herself to be the original and first inventor of the subject matter of the application, and he/she must make various other statements under 37 CFR  1.63, As set forth in 37 CFR  1.64, the oath or declaration must be signed by all of the actual inventors except as provided for in 37 CFR  1.42, 1.43, 1.47, or 1.67.

Sep-2007

PG.NONPUB.RQ

Nonpublication request from applicant.

Not required [Keeps patent application undisclosed until issue publication. Applications are normally published 18 months after they are filed.]

A nonpublication request, if filed, must be submitted with the application upon filing, certifying that the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication at eighteen months after filing. Form PTO/SB/35 may be used by applicant for filing this request.

Sep-2007

ADS

Application Data Sheet

Original filing-voluntary

The application data sheet is a sheet voluntarily submitted in either provisional or nonprovisional applications and contains bibliographic data, arranged in a format specified by the USPTO in 37 CFR 1.76. Supplemental application data sheets may be submitted prior to payment of the issue fee either to correct or update information in a previously submitted application data sheet. [While the use of an application data sheet is optional, the Office prefers its use to help facilitate the electronic capturing of this important data. See MPEP 601.05 Bibliographic Information - Application Data Sheet for more info.]

Sep-2007

WFEE

Fee Worksheet (PTO-875)

Original filing-required

Patent Application Fee Determination Record

Sep-2007

N417

EFS Acknowledgment Receipt

Initial response from USPTO

Sep-2007

APP.FILE.REC

Filing Receipt

Initial response from USPTO.

The USPTO mails a filing receipt to the attorney or agent, if any, otherwise to the applicant, for each application filed which meets the minimum requirements to receive a filing date. The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined. The filing receipt also includes other information about the application as applicable, such as continuing data, national stage data, foreign priority data, foreign filing license data, entity status information, and the date the Office anticipates publishing the application under 35 U.S.C. 122(b). The filing receipt represents the official assignment by the USPTO of a specific application number and confirmation number to a particular application. See 37 CFR 1.54 (b).

Mar-2010

CTNF

Non-Final Rejection

37 CFR 1.111.  Reply by applicant or patent owner to a non-final Office action. (a)(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.

Mar-2010

892

List of references cited by examiner

Standard USPTO activity for an issuing patent

Mar-2010

SRFW

Search information including classification, databases and other search related notes

Standard USPTO activity for an issuing patent

Mar-2010

BIB

Bibliographic Data Sheet

Standard USPTO activity for an issuing patent

Datasheet prepared by USPTO that contains information from applicant and application including: Confirmation Number, Serial Number, Filing date or 371(c) date, Class, Group Art Unit, Attorney Docket Number, Applicants, Continuing Data, Foreign Applications,  If Required Foreign Filing License Granted, Foreign Priority Claims, State/Country of Applicant, Sheets Drawing, Total Claims, Independent Claims,  Address of Correspondent, Title, Filing Fee Received

Mar-2010

1449

List of References cited by applicant and considered by examiner

Standard USPTO activity for an issuing patent

Jun-2010

A...

Amendment/Req. Reconsideration-After Non-Final Reject

It is required for an applicant to respond to an office action or the patent application will go abandoned. Amendment filed by the applicant in response to a non-final office action issued by the Examiner based on the merits of the application.

Jun-2010

CLM

Claims

[These were amended claims.]

The claim is that part of a patent application particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention or discovery

Jun-2010

REM

Applicant Arguments/Remarks Made in an Amendment

A reply by the applicant to an office action must request reconsideration for further examination, must distinctly and specifically point out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments or remarks pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. In the amendment in reply to a rejection of claims, applicant's arguments or remarks must clearly point out the patentable novelty which he or she thinks the claims present in view of the references cited or the objections made.

Jun-2010

N417

EFS Acknowledgment Receipt

Response from USPTO

Jun-2010

WFEE

Fee Worksheet (PTO-875)

Response from USPTO

Aug-2010

NOA

Notice of Allowance and Fees Due (PTOL-85)

Standard USPTO activity for an issuing patent

Aug-2010

FWCLM

Index of Claims

Standard USPTO activity for an issuing patent

Aug-2010

IIFW

Issue Information including classification, examiner, name, claim, renumbering, etc.

Standard USPTO activity for an issuing patent

Aug-2010

NOA

Notice of Allowance and Fees Due (PTOL-85)

Standard USPTO activity for an issuing patent, there are two sets of some allowance documents in this prosecution because of amendments made to the claims after allowance in order to clarify


Aug-2010

FWCLM

Index of Claims

Standard USPTO activity for an issuing patent

Aug-2010

IIFW

Issue Information including classification, examiner, name, claim, renumbering, etc.

Standard USPTO activity for an issuing patent

Aug-2010

SRNT

Examiner's search strategy and results

Standard USPTO activity for an issuing patent

Aug-2010

SRNT

Examiner's search strategy and results

Standard USPTO activity for an issuing patent

Aug-2010

SRFW

Search information including classification, databases and other search related notes

Standard USPTO activity for an issuing patent

Sep-2010

EXIN

Examiner Interview Summary Record (PTOL - 413)

This is a summary of a phone interview between the applicant and the patent examiner. This particular interview was to discuss amending a claim for clarity.

It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, except where the interview was initiated by the examiner and the examiner indicated on the “Examiner Initiated Interview Summary” form (PTOL-413B) that the examiner will provide a written summary. It is the examiner’s responsibility to see that such a record is made and to correct material inaccuracies which bear directly on the question of patentability.

Sep-2010

NOA

Notice of Allowance and Fees Due (PTOL-85)

Standard USPTO activity for an issuing patent


Sep-2010

IFEE

Issue Fee Payment (PTO-85B)

Issue fee payment ($755 in this case)

When applicant transmits the issue fee payments on an issue fee transmittal form, the payment of that fee in Revenue Accounting and Management (RAM) system is recorded on that form.

Oct-2010

ISSUE.NTF

Issue Notification

Standard USPTO activity for an issuing patent

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How to Respond to Office Actions  Final Refusal

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Published for Opposition     What is Discoverable in a TTAB Proceeding?

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