Timelines at the United States Patent and Trademark Office (USPTO)

The grant date and the expiration date of a patent are often seen as most important when considering patent rights. While these dates are significant, applicants must understand the USPTO's internal deadlines to successfully navigate from filing the patent application to approval. Timing is a critical component of every patent strategy, and missing a deadline could mean the loss of patent rights. Below are some key dates and timelines at the USPTO.

Patent Filing Dates

When it comes to patentability, a filing date can be as important as the unique features of the invention. A filing date, also called a priority date, establishes when your patent rights begin and what inventions the USPTO considers prior art to prevent your patent from being granted. If the USPTO approves your patent application, you obtain patent rights starting from your filing date instead of when the application is approved.

Public Disclosure Bar

Under 35 U.S.C. § 102, Inventors must file a U.S. patent application within one year of publicly disclosing or commercially exploiting the invention. This 1-year grace period is not globally accepted, and many countries require an invention to be disclosed in a patent first if the inventor wants to pursue patent rights. At Bright-Line IP, we recommend consulting an experienced patent practitioner if you think an international IP strategy is right for you.

It is important to remember that if your invention is disclosed more than a year before filing, the USPTO will view the disclosure as part of the public domain, which can be prior art that prevents patent rights from issuing.

Provisional patent application

A provisional application is a low-risk way to quickly receive a filing date at the USPTO. The provisional application functions as a placeholder application that records a filing date and grants patent pending status only. Applicants must first convert the provisional application into a non-provisional one to receive patent rights.

The USPTO does not examine provisional applications and automatically abandons the applications 12 months after filing. A non-provisional application's claim to the earlier filing date of the provisional application is only valid if filed within 12 months of the provisional application. A provisional application is a good option if you need more time to develop your idea before filing the non-provisional application.

Non-provisional patent

Unlike provisional applications, the USPTO examines non-provisional applications before granting them. A non-provisional application, if granted, provides 20 years of patent protection from the filing date. When you subsequently file a non-provisional application that claims priority to a provisional, the non-provisional application is treated as if it were filed on the same day as the provisional application. If someone else discloses or files a patent on a similar invention after your provisional filing date but before your non-provisional filing date, your earlier provisional filing date can help you establish priority.

Design patent

A design patent protects an invention's new, original, and ornamental design but does not protect how the invention functions. Similar to utility patents, design patents are also examined before being granted. Design patents provide 15 years of protection from the date they are granted. Unlike non-provisional patents, design patents cannot claim priority to the filing date of a provisional patent application. However, a design patent may claim priority to a non-provisional patent application.

Publication information:

• Utility patent applications are published 18 months after filing

• Design patents are published after being granted

• Provisional applications are never published

Prosecution timeline

A patent examiner reviews non-provisional applications to determine if you have satisfied the criteria for patentability. The examiner will issue an office action (OA) report containing the examiner's analysis to let you know if your application is allowed (granted) or rejected. The examiner issues a unique OA, called a notice of allowance, if they believe your patent application satisfies the criteria for patentability. The estimated time to receive an office action response from the USPTO is 12-24 months after filing.

Non-final rejection

The applicant is usually given 3 months to respond to the office action to place the ball back in the examiner's court. These three months can be extended up to three additional months for a fee. The applicant must submit a response that addresses all of the examiner's concerns within six months of receiving the office action or risk abandoning the application. The examiner will either allow or reject the patent application based on the applicant's response. There is no fee to respond to a non-final office action.

Final Rejection

Suppose the examiner issues a final OA, a second or subsequent OA responding to the applicant's claim amendments. In that case, the applicant must either file a request for continued examination (RCE) or a notice of appeal within six months to prevent the application from being abandoned. A final rejection indicates the examiner's belief that they have exhausted all reasonable arguments and found sufficient prior art to disqualify the application.

Utility and plant patent applicants may submit an RCE when they want the examiner to consider new arguments after issuing a final OA. The RCE fee covers the additional time the examiner uses to address the applicant's new arguments.

A notice of appeal is the first step to take if you want your patent reviewed by the Patent Trial and Appeal Board (PTAB). Applicants may file a notice of appeal if the examiner has issued a second rejection of their patent application. The PTAB will decide to affirm or vacate the examiner's rejection. Another possibility is that the PTAB will find new grounds for rejection and issue another rejection for the application.

There can be any number of rounds of rejection and response with the patent examiner until the application is abandoned by the applicant or allowed by the examiner. If the application is allowed, the examiner will send a notice of allowance. The patent will be issued, become active, and be enforceable shortly after the applicant responds to the notice of allowance and pays the issuance fee. Missing the deadlines to respond to OAs triggers abandonment, requiring costly revival petitions (37 CFR 1.137) or reapplication.

Patent Term Adjustment (PTA)

PTA is a mechanism that extends a patent's term to compensate for delays in examination caused by the USPTO. PTA made under 35 U.S.C. §154(b) ensures administrative delays do not erode applicants' patent rights. Importantly, PTA cannot extend a patent's term beyond the expiration date established in the terminal disclaimer. Here's the basic formula for calculating PTA:

PTA = (Delays caused by the USPTO and legal proceedings) −Applicant Delays −Overlap Adjustments

Applicant delays accrue when applicants request an extension during prosecution (e.g., taking 6 months to respond to an Office Action). Applicants should respond to OAs quickly to avoid reducing the PTA calculated by the USPTO.

Overlap Adjustments count only the longest single delay during a time when multiple delays co-occur.

Expedited examination

The USPTO offers applicants several options to fast-track their non-provisional patent examination process.

• Applicants seeking to reach the final disposition of an application within 12 months can utilize the Track One prioritized examination program or file a petition to make special under 37 CFR 1.102.

• Applicants with favorable Patent Cooperation Treaty (PCT) examination results may utilize the patent prosecution highway (PPH) to gain a prioritized examination.

• Those applicants who are over 65 or who have significant health concerns can pursue a prioritized examination by filing a petition under 37 CFR 1.102(c).

• Applicants may request that the USPTO examine their design patent applications under an expedited procedure known as the "Rocket Docket" under 37 CFR 1.155.

Each of these pathways to accelerated examination has unique eligibility requirements. For example, applications requesting track one examination may have a maximum of four independent claims with 30 total claims and must contain no multiple dependent claims. It is essential to seek the assistance of an experienced patent professional when you want expedited patent examination.

Maintenance fee timeline

To keep a utility patent active, the owner must pay the USPTO maintenance fees at 3.5, 7.5, and 11.5 years from the patent's grant date. 37 CFR 1.362.

Consequences of Missed Deadlines

Applications abandoned for missed deadlines require petitions under 37 CFR 1.137. To successfully revive, the USPTO requires the delay in responding to have been unintentional. The fee to submit a petition to revive is $2,600 if submitted within two years of abandonment and $3,000 if submitted more than two years after abandonment.

Conclusion: Mitigating Risks Through Proactive Management

The USPTO's procedural framework rewards diligence and punishes delays. By aligning prosecution strategies with statutory requirements, applicants can optimize outcomes while minimizing abandonment risks and term erosion.

At Bright-Line IP, we've helped clients, from startups to multinational corporations, maximize the value of their innovations by handling the backend timing and scheduling operations.

Whether you're looking to protect a groundbreaking technology or secure your market position in key countries, we're here to guide you every step of the way.

Ready to expand your patent portfolio? Contact Bright-Line IP today to discuss developing a winning patent strategy.