Demystifying the USPTO Patenting Process:

USPTO and iEdison Timelines

Demystifying the USPTO Patenting Process

The U.S. Patent and Trademark Office (USPTO) establishes crucial deadlines that must be adhered to for patent applications. Moreover, federally funded research projects are subject to timelines and status updates managed via the Interagency Edison System (iEdison), an application by NIST that monitors progress from invention to commercialization. The Utilization Report within iEdison tracks the stage of the invention's commercialization journey annually.

Milestones in Patent Prosecution

In patent prosecution, two pathways are available: one can either directly pursue a Nonprovisional (Utility) patent or opt for a two-step process involving a Provisional patent application followed by a Nonprovisional application. It's important to note that this discussion focuses solely on Utility patent applications, excluding Design or Plant patent applications, which have distinct rules regarding the submission of Provisional applications.

A Provisional application is not a Patent and does not offer IP protection or undergo examination. Instead, its filing date serves as a priority timestamp for the inventor, expiring one (1) year from the filing date. Essentially, the costs associated with prosecuting a Provisional application are invested in establishing a priority date, affording inventors approximately a year to conduct further research to strengthen potential Claims.

The Nonprovisional application is assigned to a USPTO examiner, a process that can take up to two (2) or more years from the filing date. If the examiner's rejections are addressed, the application can progress to becoming an Issued Patent. Throughout the examination process, certain events known as Office Actions require responses from the inventors within specified timeframes. Failure to meet these deadlines results in the abandonment of the patent application by the USPTO.

Event dates once a Patent is issued are maintenance fees due at 3.5 years, 7.5 years, and 11.5 years after the Issue date. In all three cases, failure to pay the maintenance fee by the due date allows for a six (6) month grace period with a surcharge. If payment is not received within this extension, the patent application is abandoned.