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Patent Information

Out of Your Hands

The Application Examination step is where your patent application is reviewed by the USPTO to determine whether your invention meets the legal standards for patentability. 

This step is crucial because it's where most applications are either allowed (approved) or rejected—at least initially. Although the inventor is not involved in this step, it's still important to understand what happens during it. 

What Happens During Patent Examination?

Once your non-provisional patent application is filed, it enters the patent examination queue (also called the pendency period). Here's what happens step by step:

1. Application Is Docketed

  • Your application is assigned to a Technology Center (TC) and a specific patent examiner with expertise in your field.

  • You’ll get an Art Unit number—this helps categorize your invention.

2. Formalities Review (Pre-Examination)

The USPTO checks that your application is complete and correctly formatted:

  • All required documents submitted
  • Fees paid
  • Claims and abstract present
  • Drawings clear and properly labeled

If something is missing, you’ll receive a Notice of Omitted Items or Notice to File Missing Parts.

3. Substantive Examination Begins

Once everything is in order, the examiner begins substantive review. This includes:

A. Prior Art Search
The examiner searches existing patents, publications, and other materials to see if your invention is truly novel and non-obvious.

B. Legal Criteria Check
Your invention is evaluated based on:

Requirement Legal Basis Key Questions Asked by Examiner
Utility 35 U.S.C. § 101 Is it useful and within patentable subject matter?
Novelty 35 U.S.C. § 102 Is it new? Has it been done before?
Non-obviousness 35 U.S.C. § 103 Would it be an obvious variation?
Enablement 35 U.S.C. § 112

Can others make and use it based on your description?

4. Office Actions Issued

An Office Action is an official letter from the examiner telling you where your application stands.

There are two main types:

  • Non-Final Office Action (most common first step)
    • Lists rejections or objections based on prior art or other issues.
    • Gives you 3 months to respond (extendable to 6 months with a fee).
  • Final Office Action
    • Issued if your response didn’t overcome all objections.
    • You still have options: amend claims, appeal, or file a Request for Continued Examination (RCE)

5. Applicant's Response

You (or your patent attorney/agent) must respond to Office Actions by:

  • Amending claims
  • Explaining why the examiner is mistaken
  • Narrowing the invention scope to avoid prior art
  • Submitting declarations or evidence

This back-and-forth is known as patent prosecution.

6. Allowance or Rejection

Notice of Allowance

  • If the examiner is satisfied, you’ll receive a Notice of Allowance:
  • Pay the issue fee
  • USPTO will grant and publish the patent

If your application is rejected, you can:

  • Appeal to the Patent Trial and Appeal Board (PTAB)
  • File an RCE to continue the process
  • Abandon the application (voluntarily or by not responding)