In Part 1, we explored why patents matter and how to prepare for the patent process. Now let’s look at what happens after you file—and what to expect as your application moves through the system.
Whether you’ve filed a provisional or nonprovisional patent application, understanding the next steps can help you plan strategically and avoid surprises.
Patents 101, Part 2: What Happens After You File
In Part 1, we explored why patents matter and how to prepare for the patent process.
Catherine Cavella, ESQ.
In Part 1, we explored why patents matter and how to prepare for the patent process. Now let’s look at what happens after you file—and what to expect as your application moves through the system.
Whether you’ve filed a provisional or nonprovisional patent application, understanding the next steps can help you plan strategically and avoid surprises.
From Filing to Examination: What to Expect
Once your Patent Application (PPA or NPA) is filed, it is time-stamped and checked for completeness and compliance with the basic requirements to obtain a filing date.
If it is determined to meet the basic requirements, then the USPTO issues a “Filing Receipt” with important information on it – most importantly, your official Filing Date, which will be the date you filed your application unless you were missing a critical document.
If the USPTO determines you have not met the basic requirements – if you are missing a fee, or your application is illegible, or they determine a critical document is not properly signed, to name a few common issues – then they will issue either a Missing Parts or Advisory Action requiring response. Failure to respond will cause your application to go abandoned.
- Patent Pending Status
- As soon as your application is filed, your invention is considered “patent pending” – but all the same, until you have your Filing Receipt, you cannot be sure all is well. It may take a few weeks to get a Filing Receipt.
- Patent Pending status can be trumpeted in marketing and investor conversations as an impressive accomplishment and indicator of the specialness and value of your solutions, and to communicate to your industry that you are a leader in innovation who is serious about protecting and enforcing your Intellectual Property. Keep in mind, however, that patent pending status does not yet provide enforceable rights.
- Post-Filing: What’s Next
- If you filed a Provisional Patent Application (PPA) and have received your Filing Receipt without issues requiring response, then there is nothing left to do except prepare and file a Nonprovisional Patent Application (NPA) on your invention no later than the 1 year anniversary of your PPA filing.
- If you filed a NonProvisional Patent Application (NPA) and have obtained your Filing Receipt without issues requiring response, then your application enters the queue for examination at the U.S. Patent and Trademark Office (USPTO).
- Publication
- Provisional applications are not published (and therefore are not searchable). Most Nonprovisional applications are published 18 months after the earliest filing date.
- Note if your NPA claims priority from a Provisional, your filing date will be calculated from your Provisional filing date, not your NPA filing date.
- Once your application is published, your invention (whatever you disclosed in your NPA) becomes public knowledge worldwide—even if you do not end up getting a patent on it.
- This means nobody else (outside your patent family) can patent what is disclosed because your application will be raised as prior art.
- Therefore, it is usually in your interest to keep the family alive by filing a related patent application before your first patent issues. Otherwise, your own publication can be raised as prior art against a later patent application you file.
- Patent publications (published applications) have a number that starts with a country and year, like this: US2021/0133670A1. Granted applications have a a different kind of number – they look like this: US11074495B2 or just 11,074,495
- Provisional applications are not published (and therefore are not searchable). Most Nonprovisional applications are published 18 months after the earliest filing date.
- Examination
The initial USPTO review of your filed application which happens immediately upon filing is preliminary review looking only at mechanical and formal requirements. In the Examination process, which begins when an Examiner is assigned to your case (usually at least a year after filing). The Examiner looks at the substance of your application, i.e. at the words and drawings, primarily the claims), to determine if it qualifies as a patent.
- Restrictions. These are not rejections and are easily resolved. Restriction just means the Examiner sees more than one invention in your claims – all we need to do is pick one invention for your first application.
- Substantive Rejections: The Patent Examiner will examine each of your patent claims to determine 1) do they describe an abstract idea or law of nature, and 2) are they novel and non-obvious compared with the prior art (published patent applications and patents, whether in force or not).
The Examiner issues Office Actions to communicate any objections, restrictions or rejections to the applicant (you or your company).
Office Actions and Responses
During the Examination period, It’s common to receive Office Actions—formal responses from the examiner outlining any objections or rejections.
- Non-final Office Action: The examiner may reject some or all claims and request clarification or amendments.
- Final Office Action: If issues remain unresolved, the examiner may issue a final rejection.
- In reality, Final Office Actions are not really final – all it means is you need to pay additional examination fees to buy yourself additional opportunities to respond. Most patents go through more than two office actions before they are granted.
You and your patent attorney can respond by:
- Amending claims
- Arguing against the examiner’s reasoning
- Providing additional information or clarification
This back-and-forth can take several rounds and may span months or even years. If you do not respond to an Office Action, your application will go abandoned and you will not get a patent.
The best way to think about this process is as a negotiation between the Examiner and the applicant (rather, their patent attorney) where together you work to find allowable (patentable) claim language in light of the prior art. The worst way to think about this process is as a commentary on the value of your invention or the “correctness” of your patent application.
Allowance and Issuance
If the examiner is satisfied that your patent claims are patent eligible, novel, and non-obvious, those claims will be allowed, and you’ll receive a Notice of Allowance. After paying the issue fee, your patent will be granted and published.
- Utility patents are valid for 20 years from the earliest filing date (with maintenance fees due at 3.5, 7.5, and 11.5 years).
- Issue fee: You will need to pay an Issue Fee, and we recommend you file a continuation application before you pay the fee in order to keep the family of patents alive for future applications you may wish to file.
- Design patents last 15 years from the date of grant and do not require maintenance fees.
What If (When) Your Patent Application Is Rejected?
As noted above, you should expect to receive claim rejections and plan to respond to them. Many inventors and applicants get discouraged and give up long before they have exhausted all their options.
But what if the Examiner will not budge and you are going in circles? Not all applications are granted. If the Examiner digs in on their position even after continued examination, you have options:
- Appeal to the Patent Trial and Appeal Board (PTAB)
- File a continuation or continuation-in-part to pursue different claims – this gives you a new starting place, now that you know the Examiner’s thinking and the prior art being raised.
- Refocus your IP strategy based on examiner feedback. What if your claims really are too abstract? Could you keep any of this technology as trade secrets? In that case, you’ll want to prevent your application from publishing – and disclosing your trade secrets.
Maintenance – Once your patent is granted, you need to remember to pay maintenance fees to keep the patent active. The USPTO requires fees to be paid at 3.5 years, 7.5 years and 11.5 years. Failure to pay fees will cause your patent to expire
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- Note most other countries require fees (called “annuities”) to be paid every year, even before a patent is granted.
Timeline: 1–3 years (or more)
Cost: \$15,000–\$50,000+ depending on complexity and legal support
Patents vs. Other Types of IP
Patents are just one piece of the IP puzzle. Here’s how they compare:
| IP Type | Protects | Duration |
|---|---|---|
| Patent | Inventions, processes (utility); ornamental designs of useful articles | 20 years (utility); 15 years (Design) |
| Trademark | Brand names, logos, slogans, any “indicia of source” | Registrations renewable indefinitely so long as use as trademark continues |
| Copyright | Creative works (e.g., software, content) | Life of author + 70 years; Register within 90 days to preserve statutory benefits |
| Trade Secret | Confidential business info (e.g., formulas, methods) | As long as it remains secret |
Understanding the differences helps you build a well-rounded IP strategy.
When Should You Start Thinking About Patents?
If your business is:
- Developing proprietary technology or products.
- Patents are a great way to create a barrier for your competitors until you have had time to receive the full return on investment in your innovations.
- Entering a competitive or innovation-driven market.
- The more competitive your industry, the greater the value of innovations that set you apart.
- Seeking funding or partnerships
- Investors and key partners love to see patents in a well-organized and strategic IP portfolio. Your investment in protecting what makes your company special shows them you value your IP Assets enough to invest in them.
- Planning to license or sell your technology
- Patents are a convenient vehicle for licensing your original technology. Trade secrets can be licensed, but they are endangered during the negotiation process. Patent applications and patents, in contrast, can be disclosed safely and in fact are published eventually. Moreover, the patent documentation ensures a clear and objective definition of what you are licensing and what you are not licensing – something trickier to do with trade secrets licenses.
If any of these bullet points resonates with you as describing your company, then it’s time to start thinking seriously about patents.
Key Takeaways
- Patents can be a strategic asset—they are not just a legal formality.
- They protect innovation, create value, and support growth.
- Understanding the basics is the first step toward making informed decisions.
In the next blog, we’ll explore how patents can deliver hidden value beyond legal protection—including how they can boost your market position, attract investors, and generate revenue.
🔍 Ready to explore how patents could fit into your business strategy?
Download our free Patent Benefits Checklist to assess where you stand and what to consider next.
Catherine Cavella
