An Overview of the U.S. Patent Process
The first time you will substantively hear from the examiner is when the examiner issues what is referred to as a First Office Action on the Merits (FOAM). At this point you are now truly beginning what most would refer to as prosecution of the patent application. The examiner has told you what, if anything, he or she thinks is patentable, and explained (usually in abbreviated fashion) what claims are lacking and why. The applicant, or attorney, must respond to each and everything raised by the examiner in a response filed no later than 6 months after the date of the First Office Action. Notwithstanding the 6 month period to respond, the Patent Examiner will set what is called a “shortened statutory period” to respond, which for an Office Action is 3 months. The shortened statutory period is the time period within which you can respond without having to pay a fee to respond. After the shortened statutory period, which can be 1, 2 or 3 months depending on what the Examiner sends, you can respond up to 6 months but only if you request AND pay for an automatic extension. Automatic extensions can get expensive, the cost goes up depending on how many months of extension you have to purchase. They are called automatic extensions because the Patent Office must grant the extension if you ask and pay for the extension. You should, however, plan on doing things within the shorten statutory period in order to conserve funds and in order to get the maximum patent term.