Patent Strategy for Researchers and Research Managers, 3rd Edition

Chapter 8

After the Filing

8.1 Introduction

After making the invention, and then working with a patent agent to review prior publications, generate additional data for the patent application, and review drafts of the patent application, it is not unreasonable that most researchers feel they have finished when the patent application is finally filed. However, after the filing the researcher still has a role to play in obtaining a patent. Any number of issues can arise after the filing, in what is called the prosecution of the application. Even after the patent has issued, the researcher may still be called upon to help determine whether or not the patent should be maintained; that is, should the assignee continue to pay fees to governments worldwide to keep the patent in force. While the researcher may have spent a year or more inventing and filing a patent application, several more years may pass before the application issues, and 20 years from the filing date may pass before the patent expires. Clearly, filing a patent application is a long-term commitment. Let's start after the filing and trace what can typically happen with a patent application.

8.2 Anticipating the First Response from a Patent office

It is surprising how long it takes to get a patent, and the wait for the first substantial response from a patent examiner can take from several months to several years, and the timing can depend on the country or the technology area being examined or both. A ‘substantial response’ ...