What to expect after filing an application.
After an inventor decides that he or she wants or needs to file a patent, the inventor will need to determine what type of patent to file. The three most popular are: provisional, utility, and design. Utility and design applications are the only ones from these three that will be examined by the Patent Office. Examination means that the examiner assigned to the application performs a prior art search and prepares an office action informing the applicant of the results. The first office action is non-final and it typically includes at least one rejection. Applicants shouldn't be alarmed with the thought of a rejection. They are very common especially in certain art units (business methods/biotech). Even though the application is rejected, it is still pending. Applicants do not need to file another application. Applicants must, however, reply to the office action. The reply is the device that applicants and their attorney use to convince the examiner to allow the patent. After the examiner considers the reply, he will either issue another non-final office action, a final office action, or a notice of allowance, depending on the substance of the reply. With a non-final office action prosecution is still open, which means that applicants can file another reply. With a final office action and a notice of allowance, however, prosecution is closed and the applicant's ability to continue prosecuting the application is limited. When prosecution is closed, applicants can file a reply to the final office action, a notice of appeal, and/or a request to reopen prosecution (RCE). Prosecution may be reopened more than once, but we prefer not to file any RCEs except in a few instances. The process repeats itself until either the Office issues a notice of allowance or the applicant abandons the application. Applicants can file a continuing application (continuation, divisional, or continuation in part) at any time while the parent application is still pending.