What Happens After Inventors File A Regular Patent Application?

After filing a regular patent application, the U.S. Patent Office examines the patent application and either issues an Office Action or a Notice of Allowance. While a Notice of Allowance would be nice, it is rare that the Examiner will issue a Notice of Allowance after the first examination. It’s more likely that you will get an Office Action.
In the Office Action, the Examiner may reject the claims in the patent application, or reject a portion of the claims in the patent application and indicate those portions which may be allowable. Applicants have an opportunity to respond to the Office Action. Typically, applicants will have 3 months in which to file a formal written Response. Applicants can typically buy extensions of time for an additional 3 months (for a total of 6 months to file a Response).

Failure to file a Response within the allotted time can result in a patent application going abandoned.

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Inventors & Patent Laws

Inventorship is a legal determination based on the patent laws (discussed below) and a technical analysis of the claims in a patent application.

The threshold question in determining inventorship is who conceived of the invention. Unless a person contributes to the conception of the invention, he or she is not an inventor. The inventor is not required to reduce the invention to practice.

Conception is the formation in the inventor’s mind of a definite and permanent idea of the complete and operating invention as it is to be applied in practice. Conception requires a contemporaneous recognition and appreciation of the invention.

Conception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the extensive experimentation to make the invention operative.

Merely hoping that something will work does not establish conception, since there is not a definite understanding or a reasonable expectation that the invention will work.

An inventor may consider and adopt ideas, suggestions and materials derived from many sources. Examples include a suggestion from an employee, a hired consultant or a friend even if the adopted material proves to be the key that unlocks the problem so long as the inventor “maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting.

But simply suggesting an idea of a result to be accomplished, rather than the means of accomplishing it, does not make someone a co-inventor.

A coinventor need not make a contribution to every claim of a patent. A contribution to one claim is enough. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. 35 U.S.C. 116.

It is important to work with a qualified patent attorney in order to make a proper determination of inventorship. Failing to name all of the inventors on a patent application can have serious legal consequences.