Timeline of Patent Filing Decisions

Thinking of filing a patent application? On top of having to make decisions about whether and what to file, you’ve also got a limited amount of time in which to file. If you’ve gone through the challenging process of deciding what is worth protecting, from both an innovation perspective and a business perspective, and decided you do indeed want to file, the last thing you want to hear is that you’ve waited too long and lost your right to file. Even once you’ve filed your first application (which is often a provisional), there are a number of decisions to make regarding whether to formalize provisionals and whether to file outside the country. This timeline provides an overview of the decisions you’ll need to make:

Timeline of patent-related decisions

Notice how the timeline changes if you don’t decide to file until after you’ve made a public disclosure:

You’ll have set a new, 12-month deadline for filing any US applications and may have lost the right to file internationally. Now, you may or may not need to file patent applications, but ideally that would be an informed decision – not because you didn’t know that doing that beta test would mean you couldn’t file later!

Notice that at the moment, most applicants for technology patents won’t hear from the US Patent Office for years from the filing date. This means it’s particularly important for you to consider what the benefits are to filing an application – you want to be really clear on those benefits before making that investment.

Whether or not you decide to file any applications, keep an eye out for these deadlines to give yourself enough time to make educated decisions.

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  • Good stuff Cynthia. I would be interested to see a more detailed timeline. For example, is there a typical time frame when you receive your first rejection, and how long you have to respond?

    • PatentlyAwesome

      The typical first office action comes after 25 months.  Final disposition, on average, is about 36 months.  (All of that info is available on the USPTO website…although somewhat buried.)

  • Thanks for reading!  How long it takes the Patent Office to respond is very technology specific.  For software companies, it is currently about 3 years from the date of filing.  The Patent Office backlog that leads to the delay is a key reason companies need to carefully evaluate what benefits they’ll get from filing an application.

    When you do receive the first communication, you have three months in which you can respond for free and another three months in which you can pay to extend the response deadline. The process of receiving Office communication and responding is referred to as “prosecution” and how long that lasts varies drastically from company to company and, within a company, from one application to another – factors include how important the patent is, how much money the company has, and how crowded the innovative field is.