US Patent and Trademark Office Actions
Once the non-provisional application is filed, it can take anywhere between 18 months to several years for a response from the USPTO. The USPTO examiner will review the non-provisional application and respond to the individual claims in the application. The USPTO response is called an “Office Action.” There may be a number of Office Actions.
It is very common for many, if not all, invention claims to be rejected. This is an expected step in USPTO and INVO's negotiation process. With open communication, many rejections can be successfully argued.
Common reasons for rejections:
- Novelty - The argument that prior art contains all aspects of an invention claim.
- Obviousness - The argument that specific aspects of prior art can be combined to yield the invention claim.
The examiner may raise semantic issues related to a claim. These reasons are typically resolved easily.
Nothing needs to be amended, and the related patent claims will be issued. INVO will be notified when and which claims are successfully argued. Note that if individual claims are allowed, the issued patent will protect only the allowed patent claims.
INVO has 90 days to respond to any Office Action. However, INVO may file for an extension under extenuating circumstances.
While INVO is sensitive to your time, your help will be required in making a strong patent. For responses requiring technical expertise, INVO may need assistance in its response to address USPTO rejections. For straightforward responses or those that are strictly legal, INVO may respond to Office Actions without consulting you. INVO will make every effort to give you one month to respond to Office Action comments before sending a formal response to the USPTO. For straightforward responses or those that are strictly legal, INVO may respond to Office actions without consulting you.
If it appears that the USPTO will not allow any claims, or if the allowable claims are of little commercial value, INVO may choose to abandon an application during this process. In this circumstance, the inventors will be notified and be offered to pursue the patent filing on their own.