Samsung secured 6,165 U.S. patents in 2023—the most of any company—while roughly half of all patent applications filed that year were rejected. This stark divide reveals a critical truth: obtaining patent protection isn’t about having a great invention; it’s about understanding a rigorous system where most applicants face at least one rejection, and strategic navigation is what makes the difference between securing exclusive rights worth millions and watching competitors replicate your innovation without consequence.
The numbers tell a sobering story for those who don’t deploy sophisticated, advanced prosecution strategies. The USPTO received approximately 418,000-430,000 new utility patent applications in fiscal year 2023, and granted approximately 345,000-348,000 patents during that period. With AI-related patent filings jumping 33% since 2018 and now appearing in 60% of all technology subclasses, the competition for patent protection has never been fiercer. Meanwhile, the USPTO’s backlog swelled to a record 1.2 million pending applications by 2024—the highest in history—pushing average examination times to 23-24 months for applications lacking strategic preparation from the outset, and sometimes beyond 30 months for complex cases without proper guidance.
Figure 1: USPTO Patent Application Backlog (2021–2024): Total pending U.S. utility and reissue patent applications reached approximately 1.2 million in 2024, the highest level on record. This expanding pre-examination backlog helps explain extended first-action pendency and longer overall prosecution timelines for applicants lacking strategic preparation—source: U.S. Patent and Trademark Office (USPTO).
If you’re navigating this process for the first time, you’re entering a system where filing volumes hit an all-time high of 430,000 applications in 2024 (a 3% increase from 2023). The typical journey through this system represents a significant investment with no guarantee of success for those relying on generic approaches or DIY strategies. However, understanding how this system works—and engaging experienced counsel with proven methodologies—can transform these odds dramatically in your favor.
This guide breaks down the complete U.S. patent process using 2025-2026 data, realistic timelines based on recent pendency statistics, and the specific pitfalls that cause nearly half of all applications to fail. You’ll learn why weak patents don’t just fail to protect—they actively help competitors by creating roadmaps for designing around your innovations faster and cheaper than if you’d never filed at all.
Overview of the US Patent Process
The U.S. patent process transforms innovative ideas into legally protected intellectual property through a formal examination system administered by the USPTO. When granted, a patent provides exclusive rights to prevent others from making, using, selling, or importing your invention for a specified period—20 years from filing for utility patents, the most common type.
Under U.S. patent law, there are two primary types of patents relevant to most inventors: utility and design.
This comprehensive system serves as the backbone of American innovation policy. By requiring public disclosure of technological advances in exchange for temporary exclusivity, patents create powerful incentives for research and development while ensuring society eventually benefits from new knowledge. The USPTO’s database now contains over 11 million issued patents dating back to 1790, representing America’s cumulative technological progress. This database is a valuable source of patent information for inventors and researchers seeking detailed data to support their patent applications.
Current State of Patent Examination
The patent landscape has grown significantly more complex. Recent USPTO data reveals that patent application volume reached 430,625 in 2024, marking a 3% increase from 2023. This surge coincides with an unprecedented backlog: approximately 813,000 unexamined applications awaited review by late 2024, up from 750,000 in 2023.
This heavier workload directly impacts examination timelines for applications that lack strategic positioning from the outset. First Office Actions now average around 20 months, with total pendency averaging 23-24 months for straightforward cases but extending beyond 30 months for complex applications requiring multiple examination cycles—particularly those without sophisticated legal doctrines baked into initial filings.
The USPTO has responded by significantly increasing hiring—923 new patent examiners joined in FY2024, a nearly 42% jump from previous years. However, training these examiners takes considerable time before they can impact processing speed. The current total examining staff stands at approximately 8,600 patent examiners handling this historic volume of applications.
Understanding Success Rates
Patent prosecution is inherently selective. The USPTO’s patent allowance rate currently sits around 54%, meaning slightly over half of applications ultimately receive patent grants. More revealing: most patent applications receive at least one rejection during examination, making rejection a standard part of the process rather than an exception. Experienced patent attorneys with proprietary techniques and years of battling Patent Office bureaucrats consistently achieve higher success rates through sophisticated guidance, achieving up to 94% allowance rates.
Success rates vary considerably by technology area and the quality of preparation. Software and computer-related applications (Technology Center 2100) achieve allowance rates around 77% when correctly prepared, while mechanical engineering applications hover near 70%. Design patents achieve remarkably high allowance rates of approximately 97%, reflecting their more straightforward examination criteria focused on ornamental appearance rather than functional innovation.
The Financial Investment
Modern patent prosecution represents a significant financial commitment. Professional patent preparation for non-provisional utility patent applications typically ranges from $10,000 to $20,000 or more, depending on the complexity of the invention and the scope of protection required. Each application is a custom-engineered legal document tailored to the specific subject matter and the client’s business objectives. This investment pays for itself by avoiding the far greater costs of failed applications, endless prosecution cycles, and weak patents that competitors easily design around. Firms with sophisticated methodologies spare clients 1-2 years and thousands of dollars in prosecution costs by strategically preparing to address potential rejections before they occur.
The USPTO’s filing fees are just one component of the total investment. Professional legal services for preparing high-quality applications, responding to Office Actions, and navigating prosecution complexities represent the bulk of investment—an investment that either results in strong, enforceable patents that deter competitors or weak patents that become blueprints for helping competitors beat you faster and cheaper.
Over 80% of patent applications are now filed electronically via the USPTO’s EFS-Web or Patent Center systems. These platforms streamline submission, provide instant filing receipts, and allow real-time tracking of application status. The USPTO’s Patent Application Guide offers comprehensive step-by-step instructions for electronic filing and prosecution management.
Utility patents last 20 years from their filing dates, while design patents last 15 years from their issue dates
Patent Eligibility and Requirements
Patent protection rests on a foundation of strict legal requirements defined by 35 U.S.C. §101, which establishes patentable subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Understanding these requirements prevents the costly pursuit of unpatentable subject matter.
Four Categories of Patentable Subject Matter
U.S. patent law recognizes four broad categories eligible for protection. Machines encompass any apparatus with interrelated parts—from simple mechanical tools to complex robotics or computer systems. Articles of manufacture include items produced through human manufacturing processes, such as consumer electronics, industrial components, and medical devices. Compositions of matter include chemical compounds, alloys, and materials with novel properties. Processes include methods for accomplishing results: industrial processes, software algorithms implemented in technology systems, manufacturing methods for mechanical or electrical devices, and processes used in medical device technologies.
The Three Fundamental Requirements
Every patentable invention must satisfy three critical criteria that the USPTO examines rigorously:
Novelty (35 U.S.C. §102): The invention cannot be anticipated by prior art—no single prior publication, patent, or public disclosure can already describe every aspect of the invention. If the exact invention was known or used by others before the filing date, it lacks novelty regardless of independent development. With over 11 million U.S. patents issued since 1790, plus global patent databases and technical literature, demonstrating novelty requires thorough prior art searching. In this area, experienced counsel with established research methodologies can complete a comprehensive analysis more efficiently than typical approaches.
Non-obviousness (35 U.S.C. §103): Even genuinely novel inventions must represent a non-obvious advance over existing technology to a “person of ordinary skill in the art” at the time of invention. This means the single biggest challenge in patent prosecution—determining what’s obvious versus non-obvious requires years of experience and proper calibration that DIY inventors and novice attorneys simply don’t possess. If an examiner can combine multiple prior art references that show all claim elements performing their expected functions, the application faces rejection as obvious. Approximately 60% of technology subclasses now include AI-related inventions, making non-obviousness arguments increasingly complex as technical fields converge. Experienced patent attorneys develop sophisticated legal doctrines through years of training to overcome obviousness rejections—strategies that must be baked into the cake from initial filing, not added as afterthoughts.
Utility (35 U.S.C. §101): The invention must have specific and practical utility—it should accomplish something useful. This requirement is typically easy to meet for real-world functional inventions, becoming an issue only for truly frivolous or inoperative concepts.
Critical Exclusions from Patent Protection
U.S. law and Supreme Court precedent hold that abstract ideas, natural phenomena, and laws of nature cannot be patented. These judicial exclusions ensure basic scientific tools remain freely available for all researchers.
Abstract ideas include fundamental economic principles, pure mathematical algorithms, and basic scientific relationships. A naturally occurring gene sequence or mineral, as it exists in nature, cannot be patented. However, inventions that apply abstract ideas in specific practical ways may qualify for protection.
Software patents illustrate this complexity. The USPTO applies a two-step Alice/Mayo test: first, determining whether the claims are directed to an abstract idea, and then checking whether the claims add “significantly more” to transform the concept into a patent-eligible application. Recent USPTO guidance from July 2024 clarified that many AI-related inventions qualify when claimed as specific technological improvements rather than mere abstract results. Firms with proprietary techniques in this area have increased Alice eligibility success by 25-50% compared to generic approaches.
For software, algorithms, and AI inventions, patent eligibility requires demonstrating integration into practical applications or specific improvements in computer functionality rather than simply claiming the algorithm itself.
The U.S. One-Year Grace Period
The United States offers a unique one-year grace period, distinguishing it from most countries worldwide. If an inventor publicly discloses their invention—through academic publication, conference presentation, trade show display, product sale, or other public revelation—U.S. law provides exactly one year from that disclosure date to file a patent application without the disclosure destroying patent rights.
This grace period (35 U.S.C. §102(b)) protects inventors who published or launched products before realizing they needed patent protection. However, after the one-year window closes, the disclosure becomes prior art, permanently barring patent protection. Most foreign countries require absolute novelty at filing with no grace period, so public disclosure before filing typically destroys international patent rights regardless of U.S. grace period benefits.
The safest strategy remains to file before any public disclosure, whenever possible, to preserve patent rights globally. Provisional patent applications are superior to NDAs for this purpose—they provide concrete, legal protection versus vague NDA agreements. Most sophisticated companies require inventors to file provisional applications before discussing inventions, as this protects them from lawsuits over idea submissions. But for inventors who have already disclosed publicly, the one-year grace period offers a critical opportunity to secure U.S. patent protection if they act quickly.
Prior Art Requirements
Patent prosecution critically hinges on demonstrating invention novelty and non-obviousness relative to prior art—the entire body of publicly available knowledge predating a patent application’s effective filing date. This comprehensive universe includes the USPTO’s 11 million+ issued U.S. patents dating back to 1790, published patent applications, foreign patents, academic journals, textbooks, websites, product manuals, conference proceedings, sales brochures, and any publication or evidence showing that the invention was previously known.
Under 35 U.S.C. §102 (as modified by the America Invents Act), an invention lacks novelty if any single prior art reference already disclosed every feature of the claimed invention. Independent development provides no defense—if someone else published or patented the invention first, no patent rights exist regardless of simultaneous invention.
Prior art knows no geographic boundaries. A Chinese patent publication, European journal article, or Japanese product manual can preclude a U.S. patent if it discloses the claimed invention. Patent examiners routinely search international databases, making comprehensive global prior art analysis essential during application preparation.
Patent examiners face substantial workload pressures affecting prior art searches. On average, a USPTO patent examiner reviews approximately 22 applications per month—limited time per case for comprehensive prior art identification and claim assessment. Examiners use robust search systems, including the USPTO’s EAST and modern Patents End-to-End search tools, to comb through U.S. patents, published applications, foreign patent databases, and non-patent literature. However, experienced counsel with established research methodologies and years of searching specific technical fields often uncover prior art that examiner time constraints might miss.
Inventors are not legally required to conduct prior art searches before filing patent applications, but thorough searching is essential for serious business owners. Comprehensive searches can reveal similar inventions, help refine concepts, and identify distinguishing features worth emphasizing in applications—saving money in the long term by avoiding futile applications or endless prosecution of hopeless cases.
Discovering knockout prior art before filing—when inventors can still modify approaches or abandon unpatentable ideas—proves far superior to examination surprises after investing thousands in application preparation. Even sophisticated organizations consider searching essential: Microsoft’s Chief Patent Counsel stated they perform prior art searches on every patent case they file because “we still get unanticipated art” that wasn’t obvious without systematic searching.
Statistics reinforce this wisdom: most patent applications receive at least one rejection from the USPTO, often because prior art was not uncovered during pre-filing preparation. Robust searches conducted by experienced professionals can prevent the pursuit of hopeless applications or unearth distinguishing features to emphasize in patent descriptions and claims.
Types of Patent Applications
The U.S. patent system offers several distinct protection types, each tailored for specific invention categories and strategic needs. Selecting the appropriate patent application type significantly affects the scope of protection, costs, and the patent term.
Utility Patents: Comprehensive Functional Protection
Utility patents represent by far the most common patent type, covering new and useful processes, machines, manufactures, or compositions of matter, plus any improvements. A utility patent protects the functional aspects of an invention—what it does or how it works.
Software, electronics, mechanical devices, electrical systems, medical devices (particularly electrical, mechanical, and software inventions used in medical applications), and most SaaS or AI innovations fall within this category. Utility patents provide 20-year terms from filing date (for applications filed since 1995) and require periodic maintenance fees to remain in force.
Obtaining a utility patent requires filing a non-provisional utility patent application, also known as a utility patent application, with detailed specifications, formal claims, and, typically, patent figures. The USPTO examines these non-provisional applications for novelty and non-obviousness—the challenging part where experienced patent prosecution with proprietary Litigation Quality Patent® services makes the critical difference between strong patents that deter competitors and weak patents that help them design around your innovations.
Professional patent preparation for non-provisional utility patent applications typically ranges from $10,000 to $20,000 or more, depending on the complexity of the invention and the scope of protection required. Each application is a custom-engineered legal document tailored to the specific subject matter and the client’s business objectives. This investment saves money in the long term by avoiding failed applications and the costs of endless prosecution. Firms with sophisticated guidance that has achieved up to 94% allowance rates spare clients 1-2 years and five figures in prosecution costs compared to generic approaches or DIY attempts.
Design Patents: Appearance Protection
Design patents protect ornamental designs or visual appearances of manufactured articles. When inventions concern how something looks rather than functional operation, design patents provide appropriate protection. Common examples include aesthetic product shapes, user interface icons or screen layouts, and consumer product designs.
Design patents provide 15-year terms from grant (for applications filed since 2015) and require no maintenance fees. Design patent applications consist mainly of patent figures showing designs from multiple angles, along with brief descriptions. Single claims typically read “The ornamental design for [the article] as shown and described.”
Design applications are generally less expensive than utility patents, though still benefit from professional representation to ensure proper claim scope and drawing standards that meet USPTO requirements.
Provisional Patent Applications: Strategic Placeholders
Provisional applications aren’t patents themselves but temporary applications that secure filing dates without starting the examination clock. Introduced in 1995, provisional applications are popular tools for inventors at early stages, though it’s critical to understand their limitations.
Provisionals require written descriptions of inventions (and any necessary illustrations or figures) but no claims and simplified formalities. No oath is initially needed, and prior art disclosures can be deferred. The critical limitation: provisional applications never get examined or granted independently—they simply hold priority dates for up to 12 months.
Provisional patent applications may involve lower initial costs—often several thousand dollars, depending on the subject matter and business objectives—because they do not require formal claims or the same level of examination preparation. However, the quality and thoroughness of the provisional application directly affect the protection ultimately secured, so investment should align with the invention’s commercial importance.
During the 12 months, inventors can use “Patent Pending” terminology—valuable for business credibility as this status demonstrates serious IP development to investors, partners, and customers. Being “patent pending” opens business opportunities unavailable without filed applications and creates immediate monetizable assets for licensing, collateral, and balance sheet value. To benefit from provisionals, inventors must file corresponding non-provisional utility applications within 12 months of the provisional filing, claiming priority. Missing this deadline results in provisionals lapsing irretrievably.
Provisional applications are beneficial for securing filing dates quickly—even before complete refinement or formal claim drafting—for example, just before public disclosures or product launches. Startups often use provisionals to buy time while fundraising or testing prototypes. However, provisional disclosure quality is crucial: when filing subsequent non-provisional applications claiming priority, inventors receive only early-filing date benefits for subject matter adequately described in the provisionals.
Many tech startups use provisional→utility strategies: filing provisionals quickly to lock in dates (often when unveiling minimum viable products or pitching investors), then filing thorough non-provisional utility applications 6-12 months later. This allows calling inventions “patent pending” during critical early days while developing more complete protection strategies with experienced counsel.
Types of Patent Applications and Procedural Steps
When seeking protection for an invention, applicants typically file either a provisional application (optional first step) or a non-provisional utility patent application to begin formal examination. For design inventions protecting ornamental appearance, applicants file design patent applications. Understanding the distinctions between provisional and non-provisional filings is essential for effective patent prosecution. Each application type has specific requirements and procedural steps, so understanding the distinctions between provisional and non-provisional filings is necessary for effective patent prosecution.
Step-by-Step Patent Process
Getting a US patent involves several main stages: idea incubation, prior art search, strategic drafting, examination, and issuance. However, success depends not just on following these steps, but on how strategically you execute them—the difference between weak patents that help competitors and strong patents that deter them.
Step 1: Conduct Patent Search (Timing Varies)
The patent process ideally begins with comprehensive prior art searches to assess patentability and identify close references. This step, while technically optional, is highly recommended for serious business owners. Experienced counsel with established research methodologies can often complete a comprehensive analysis more efficiently than typical search timelines, uncovering critical prior art that less sophisticated approaches miss.
It is crucial to search for previous public disclosures (prior art), as these can affect an invention’s novelty and patent eligibility. This upfront investment saves substantial later costs by avoiding futile applications or helping refine inventions. During this phase, inventors should document their inventions in detail, including technical specifications, sketches, prototypes, and variations or alternatives.
Large companies routinely require invention disclosures and prior art searches internally before approving patent filings.
Step 2: Draft the Patent Application
Application drafting is arguably the most critical phase, where strategic, well-engineered patents are engineered rather than mere paperwork generated. Here, experienced patent attorneys prepare non-provisional patent application documents: writing thorough specifications that describe inventions and best modes of implementation, drafting claims that define the scope of legal protection, and preparing necessary patent figures that illustrate the inventions.
If provisional patent applications were filed (remember, there’s no such thing as a ‘provisional patent’—only provisional applications that create monetizable property rights like stock options), applicants now build upon and formalize those documents into non-provisional applications. Filing a provisional application establishes an early effective filing date and a priority date, which are crucial for securing rights to the invention. The provisional filing date safeguards the inventor’s rights while allowing time for further development. Once a provisional patent application has been filed, you will have a year to file your non-provisional application.
Specifications must be enabling (teaching others in the field how to make and use the invention) and should highlight the problems the invention solves and the differences from prior art.
Patent claim drafting is both an art and a science—claims are carefully worded, single sentences delineating monopoly boundaries. Broad claims are desirable but must be novel and non-obvious; multiple claims of varying scope are typically included. This is where years of experience battling Patent Office bureaucrats prove invaluable: experienced patent practitioners know how to phrase claims to avoid common pitfalls, bake obviousness strategies into initial filings, and withstand legal challenges. Proper calibration on what’s patentable versus obvious comes only from this experience—something DIY inventors and novice attorneys lack.
Professional patent preparation for non-provisional utility patent applications—typically $10,000 to $20,000 or more depending on complexity and business objectives—represents an investment in quality that pays for itself through faster, more efficient prosecution. Trying to save money upfront on legal fees often leads to wasted time and no patent protection—or worse, to weak patents that actively help competitors by providing roadmaps for designing around your innovations. Legal representation is highly recommended for navigating patent laws and application procedures and for maximizing the chances of success.
Step 3: File the Application with the USPTO
When applications are finalized, they’re filed electronically via the USPTO’s EFS or Patent Center systems. Filing officially starts patent examination processes, establishing filing dates and application numbers. The USPTO soon issues Filing Receipts confirming these details. Examination fees are part of the costs associated with submitting a patent application and must be paid at this stage.
Step 4: USPTO Initial Processing (1–3 months)
After filing, applications go through administrative steps. The USPTO assigns them to appropriate Technology Centers and art units based on invention classifications. For example, software inventions might go to Tech Center 2100 (Computer Architecture and Software) or 2400 (Networking), while medical devices might go to Tech Center 3700. Electrical inventions typically route to Tech Centers 2600-2800, depending on specific subject matter.
Each art unit is a group of examiners specialized in that field. Cases will eventually be assigned to specific patent examiners in those units. During this period, the USPTO also checks formalities—ensuring patent figures meet standards, all necessary forms are submitted, etc. For businesses seeking to protect their innovations through patents, consulting an experienced legal team can help navigate this process.
Step 5: Examination – First Office Action
Due to application backlogs, substantial waits occur before substantive examination begins for applications without accelerated examination strategies. Average first Office Actions occur around 16 to 20 months after filing in many fields for standard prosecution. However, experienced counsel deploying sophisticated strategies can often compress these timelines through Track One prioritized examination, strategic claim presentation that facilitates examiner review, and other advanced prosecution techniques that spare clients significant time. By late 2024, average first-action pendency had grown to about 20 months for applications lacking strategic preparation from the outset.
However, experienced counsel deploying sophisticated strategies can often compress these timelines through Track One prioritized examination, strategic claim presentation that facilitates examiner review, and other advanced prosecution techniques that spare clients significant time.
Figure 2: Illustrative comparison based on USPTO pendency ranges. Standard examination averages 22–30 months, while Track One prioritized examination targets final disposition within 12 months. Source: USPTO
The First Office Action is a written letter from examiners assessing claims against the law. In most cases, the first actions are non-final and contain rejections or objections. This is normal—most applications receive at least one rejection from the USPTO. Office Actions cite prior art references examiners found and explain which claims are rejected and on what grounds.
The process of receiving Office Action notices and providing responses to rejected claims can repeat several times during the application process. At least one rejection in the first Office Actions is practically standard—most applications hit this hurdle. The difference is whether applications were strategically prepared to overcome these rejections efficiently or whether they require endless prosecution cycles, arguing points that should have been addressed initially. Firms with proprietary techniques and years of experience achieve higher allowance rates by anticipating examiner positions and addressing them proactively.
Who Can File?
Both independent inventors and those supported by companies can file patent applications. An independent inventor is someone who develops and files for patents on their own, without the backing of a company or external organization, and can secure patent rights despite challenges such as previous public disclosures.
Applicants seeking priority examination can pay an additional fee to the USPTO. The Track One program allows payment of a prioritized examination fee at the time of filing a nonprovisional utility patent application to receive faster responses from the patent office. Experienced counsel can advise on when this investment makes strategic sense based on business timing and competitive landscape.
Patent Application Components
A complete patent application (non-provisional) comprises several essential elements that must work together to support strong, enforceable patent rights:
Written Specification: The specification is the core descriptive document of patent applications. It must describe inventions in full, clear, concise, and exact terms (per 35 U.S.C. §112). Specifications usually begin with titles, then background sections, summaries of inventions, brief descriptions of patent figures, and detailed descriptions of preferred embodiments. The goal is teaching others how to make and use inventions without undue experimentation—while strategically positioning the invention relative to prior art in ways that support substantial claim scope.
Claims: Claims define legal scopes of patents—they are literally the “claims” to the monopoly that governments grant. Claims are set out as numbered sentences at the end of the specification. There are usually independent claims (broad, stand-alone definitions) and dependent claims (adding additional limitations or features). Drafting strong claims is critical and requires years of experience. They must be broad enough to capture the invention’s key aspects but not so broad that they read on prior art and get rejected. Experienced attorneys draft claims that deter competitors rather than help them—weak claim drafting creates roadmaps for competitors to design around patents.
Patent Figures (Drawings): “Where necessary for understanding the invention, drawings are required” (35 U.S.C. §113). In practice, most patent applications in mechanical, electrical, and even software include illustrations. The USPTO has strict requirements for patent figures: they must be black-and-white line illustrations (in most cases), with proper shading conventions, reference numerals for features mentioned in the specifications, and specific size and formatting requirements. Professional patent illustrators familiar with USPTO standards ensure patent figures support rather than hinder prosecution.
Inventor’s Oath/Declaration: Each inventor must sign an oath or declaration stating that they believe themselves to be the original inventors of the claimed inventions and that applications are being filed with their authorization. This is a formal requirement (35 U.S.C. §115).
Applications conclude with brief abstracts (no more than 150 words) that summarize the disclosures. Abstracts are mostly for technical search purposes and USPTO classification; they don’t have legal weight for claim scope.
Patent Prosecution and Examination
After applications are filed, focus shifts to patent prosecution—the interactive process of arguing for patent rights with the USPTO. This is where sophisticated guidance that can achieve up to 94% allowance rates demonstrates its value compared to generic approaches or DIY attempts.
What to Expect During Examination:
When examiners review applications, they conduct their own prior art searches using advanced tools and classification-based searching, often uncovering prior art that applicants didn’t. The examination phase involves a USPTO examiner comparing the invention to prior art and, if necessary, issuing office actions that may result in rejections or objections. As part of this process, the patent examiner finds whether the application meets all legal requirements, which can result in a notice of allowance or a rejection. As of late 2024, there were over 800,000 unexamined applications in the USPTO backlogs—record highs that create pressure on examination quality for applications lacking strategic preparation.
Examiners issue written Office Actions detailing findings. First actions are often non-final, meaning applicants have opportunities to respond, and negotiations are just beginning. Typical first Office Actions include citations of prior art, rejections explaining how references relate to claims, objections on formal issues, subject matter eligibility concerns, and Section 112 issues about claim clarity or specification support.
The critical difference is whether applications were strategically prepared to overcome these rejections efficiently or whether they require endless prosecution cycles, arguing points that should have been addressed initially. Firms with proprietary techniques and years of experience achieve higher allowance rates by anticipating examiner positions and addressing them proactively—building obviousness strategies into the initial filing rather than attempting to add them during prosecution.
Don’t be discouraged by long rejection lists—this is part of the normal process. However, some technology fields and preparation approaches achieve higher allowance rates than others. For example, software/computer-related applications achieve allowance rates around 77% when correctly prepared, whereas mechanical engineering hovers around 70%. Firms with sophisticated guidance that have achieved up to 94% allowance rates through proprietary techniques accomplish this by anticipating examiner positions and addressing them strategically from the initial filing.
Applicants are given 3 months from the Office Action date to reply (extendable to 6 months with fees). Missing 6-month deadlines results in applications being abandoned.
Office Action Responses
When receiving Office Actions from the USPTO, applicants have several possible response paths—and the quality of these responses often determines whether prosecution succeeds efficiently or drags on endlessly:
1. Amend the Claims: This is very common. Applicants can amend existing claims by adding limitations or clarifying language, and can also cancel or add new claims (within certain limits). Amendment goals are often to traverse prior art rejections—i.e., modify claims so cited references no longer anticipate or make them obvious. Amendments must have support in the original disclosures; applicants cannot add “new matter” not initially filed. Experienced attorneys know which amendments strengthen positions versus which create new problems.
2. Argue (without amendment): Sometimes amendments aren’t needed; applicants might argue examiners misinterpreted claims or prior art, or improperly combined references. Applicants might argue that cited references, even combined, fail to teach particular claim elements. When arguing, applicants should provide factual, technical reasoning and cite evidence when possible. Well-reasoned arguments from experienced counsel, familiar with examiner tendencies and USPTO legal doctrines, can and do persuade examiners when generic arguments fail.
3. Interview the Examiner: Applicants can request interviews to discuss Office Actions. Often, attorneys conduct interviews before filing written responses to gauge examiners’ positions and, if possible, reach an agreement in principle on paths forward. Interviews might reveal, for example, that examiners would allow claims if they included certain features—information applicants can then use to craft effective amendments.
Many examiners appreciate it when applicants take the initiative to communicate, as it can save time. Interviews are part of prosecution strategies—data indicates they significantly boost allowance rates, especially when done early.
4. After Final Options: If receiving Final Office Actions and prosecution is closing, applicants have options: file Requests for Continued Examination (RCE) to continue arguing, appeal to Patent Trial and Appeal Board (PTAB), or, in some cases, file Continuation applications to pursue claims in parallel. Each option has strategic implications that experienced counsel can navigate effectively.
Prosecution requires persistence and strategic thinking. Statistically, many applications are allowed after one or two responses when properly prepared. With sophisticated guidance from experienced patent attorneys who’ve honed their calibration through years of training, applicants dramatically improve their chances of obtaining strong patents that deter competitors rather than weak ones that help them.
Patent Process Timeline and Costs
Understanding realistic timelines and investment requirements for obtaining patents helps inventors plan for this multi-year process:
Initial Filing to First Office Action: For standard (non-expedited) U.S. utility patent applications without strategic acceleration, expect around 16–20 months to receive first substantive examinations. The USPTO estimates that the time between patent pending status and the mailing of the first Office Action is usually 18 to 27 months for applications lacking strategic preparation from the outset. As of early 2025, the USPTO is dealing with surging backlogs—over 813,000 unexamined applications as of late 2024—which have pushed first-action pendency to an average of 20 months for applications lacking strategic preparation from the outset.
However, experienced counsel deploying sophisticated strategies can significantly compress these timelines. The USPTO is actively hiring more examiners (hired 923 in FY2024, nearly a 42% jump), though training them takes time. If needing faster results, consider Track One programs or other acceleration options available through strategic prosecution.
Prosecution (Office Action cycles): After the first Office Actions, applicants typically have 3 months to respond (can extend to 6 months with fees). Then examiners may take a few more months to reply. Applications with sophisticated preparation from the outset often secure allowances more quickly than those that require multiple rounds of amendments and arguments. Experienced counsel with proprietary Litigation Quality Patent® services that have achieved up to 94% allowance rates typically secure first or second office action allowances, which not only saves time but results in stronger, more defensible patents. The USPTO’s total pendency for allowed patents currently averages 23–26 months, but this varies significantly depending on the quality of preparation and the prosecution strategy. The standard timeframe for a utility patent decision is typically 22 to 24 months, and the typical time from filing a patent application to patent grant is about 22-30 months. Utility patent applications are the most common, and they can take between one and three years for these applications to be thoroughly reviewed.
Allowance and Issue: When examiners are satisfied, they issue Notices of Allowance. These documents list allowed claims and ask applicants to pay an issue fee and a publication fee within 3 months. Both the issue fee and publication fee are required before the patent is granted. Once paid, patents should issue within a matter of weeks. As of May 2025, the USPTO has reduced the time between the issuance notification and the actual issue date to approximately 2 weeks.
Post-Issuance (Maintenance): For utility patents, maintaining the patent in force requires paying maintenance fees at 3.5, 7.5, and 11.5 years after grant. Missing these deadlines results in patents expiring prematurely—wasting all prior investment. These fees escalate over time, and experienced patent counsel can help implement docketing systems to ensure deadlines are never missed. Design patents have no maintenance fees. For more guidance and legal advice regarding patent maintenance, consult Craige Thompson, a seasoned patent attorney.
Investment Considerations for Obtaining Patents:
Professional patent preparation for non-provisional utility patent applications typically ranges from $10,000 to $20,000 or more, depending on the complexity of the invention and the scope of protection required—an investment that saves money in the long term by avoiding failed applications, endless prosecution, and weak patents. This investment encompasses patent attorney preparation, prosecution strategy, and positioning inventions for strong protection rather than mere paperwork filing. Each application is a custom-engineered legal document tailored to the specific subject matter and the client’s business objectives. The longer it takes for your application to be approved and your patent issued, the more expenses you will incur.
Firms with sophisticated guidance spare clients 1-2 years and five figures in prosecution costs by strategically preparing to address potential rejections before they occur and securing allowances more efficiently. The difference between weak patents that help competitors and strong patents that deter them often comes down to this initial investment in quality representation.
Filing provisional applications can also align innovation spending with both IP development and tax benefits. Thompson Patent Law partners with Paychex to provide free R&D tax credit assessments that help maximize both patent value and tax advantages from innovation investments. This coordination helps offset the costs of strategic patent protection through enhanced R&D tax credits available under current tax law.
Common Challenges and Solutions
Patent prosecution presents numerous obstacles that can derail applications or result in weak protection. Understanding common pitfalls and implementing proven solutions dramatically improves success rates and patent quality.
1. Public Disclosure Before Filing: One of the most serious threats to patent rights occurs when inventors publicly disclose inventions before filing applications. A particularly dangerous and often-overlooked trigger occurs in industries with long R&D cycles—particularly semiconductors, medical devices, and electrical systems. Purchasing prototypes can trigger the ‘on sale’ bar and destroy patent rights, even without any actual sale. The one-year clock starts with commercial offers or quotes for manufacturing, not actual purchases. For example, obtaining TSMC tape-out quotes, requesting medical device prototyping, or requesting custom PCB manufacturing quotes all trigger this clock immediately.
Solution: File provisional applications before issuing any manufacturing quotes or purchasing prototypes. Provisional applications are superior to NDAs for protection—they provide concrete legal rights rather than vague agreements. Most sophisticated companies require inventors to file provisional applications before discussing inventions to protect themselves against idea-submission lawsuits. If accidentally disclosed, file within 1 year in the U.S. and accept that foreign rights might be forfeited.
2. Incomplete or Inadequate Applications: Some inventors file hastily prepared applications that don’t fully describe how to make and use inventions or don’t include key distinguishing details. This can be disastrous later, because if not in the original filings, applicants can’t add it without losing priority dates.
Solution: Engage experienced patent attorneys who know how to prepare thorough disclosures. Include embodiments and alternatives. If devices, describe various materials and configurations. Suppose software processes include flowcharts and examples. The quality of initial preparation determines whether patents are strategic, well-engineered protection, or weak paperwork that helps competitors.
3. Obviousness Calibration Failures: Determining obviousness is the number one challenge in patent prosecution. DIY inventors and novice attorneys lack proper calibration on what’s obvious versus non-obvious—calibration that comes only from years of experience battling Patent Office bureaucrats. Weak claims that seem “novel” to untrained eyes get rejected as obvious when examiners combine prior art references in ways applicants didn’t anticipate.
Solution: Engage experienced patent attorneys from firms with a track record of serving Fortune 500 companies such as Apple, Google, Intel, and Microsoft. These attorneys have developed sophisticated legal doctrines over years of training to overcome obviousness rejections—methodologies that must be baked into the cake from the initial filing, not added as an afterthought during prosecution. This proper calibration of what’s obvious versus non-obvious comes only from years of experience battling Patent Office bureaucrats.
4. Missing Deadlines / Abandonment: Patent prosecution has many deadlines—failing to respond to Office Actions by due dates will result in applications going abandoned, wasting all prior investment.
Solution: Implement docketing systems or use attorneys’ professional docketing. If DIY, mark all critical dates on multiple calendars and set reminders. Also be aware of maintenance fee due dates (3.5, 7.5, 11.5 years after grants). Stay organized and proactive with deadlines.
5. Inadequate Prior Art Disclosure (Duty of Candor): If applicants know of relevant prior art, they must disclose it to the USPTO via Information Disclosure Statements (IDS). Failing to do so, especially if done deliberately, can render any resulting patents unenforceable. For more context on the process, refer to the first steps for obtaining a patent.
Solution: File IDS forms listing all material prior art applicants are aware of, ideally as early as possible. It’s better to over-disclose than under-disclose.
Expediting the Patent Process
In some cases, inventors or companies may need patent protection more quickly than the standard USPTO timelines allow. Several mechanisms can accelerate patent processes when time-sensitive business needs require faster prosecution.
1. Prioritized Examination (Track One): The USPTO’s Track One program is the most direct route to speed up utility patent applications. The USPTO’s goal for Track One is to provide final dispositions within 12 months of granting prioritized status. Many Track One cases are allowed within a year when applications are strategically prepared from the outset.
2. Patent Prosecution Highway (PPH): If you have filed corresponding applications in other countries, PPH can help. PPH is an agreement between patent offices allowing applicants to fast-track examination in one office based on favorable outcomes in another. PPH requests are free and relatively easy to file for qualified applications.
3. Petitions to Make Special: The USPTO offers several Petitions to Make Special that can advance applications without fees in specific situations: Age or Health (if any inventor is 65 or older), Inventions of Particular Importance (energy, climate), or Prospective Manufacture. These can be effective if the criteria are met.
4. Pre-filing Preparation: One of the best ways to speed things up is to make examiners’ jobs easier from the get-go through strategic preparation. Well-written applications with explicit claims that distinguish known prior art and anticipate examiner positions often lead to faster allowances. Firms with sophisticated guidance achieve first-action allowances at higher rates than generic approaches—the ultimate time-savers.
Post-Grant Patent Maintenance
Obtaining a patent is a significant milestone, but maintaining and leveraging it is an ongoing process. Once patents are granted, there are critical post-grant responsibilities:
1. Maintenance Fees: Unlike copyrights or trademarks, U.S. patents require periodic fees to keep them in force. To maintain a US patent in force, you must pay maintenance fees at 3.5, 7.5, and 11.5 years after the grant of the patent. If you do not pay maintenance fees by the deadlines (plus 6-month grace periods with surcharges), the patent expires, and the invention enters the public domain, meaning others can use the invention without permission. For utility patents, maintenance fees are due at 3.5, 7.5, and 11.5 years after grant dates. If maintenance fees are not paid by the deadlines (plus 6-month grace periods with surcharges), patents expire early—wasting all prior investment.
Maintenance fees increase at each stage. Design patents require no maintenance fees. According to USPTO stats, fewer than half of patents reach the final 12-year maintenance payments—often because the technology is obsolete or companies no longer care, but sometimes because patent holders fail to track deadlines. Experienced patent counsel can help implement professional docketing systems to ensure valuable patents never expire due to missed maintenance deadlines.
2. Marking and Notification: Once patents have been issued, if making or selling products covered by them, applicants should mark products with patent numbers. Under 35 U.S.C. §287, marking products provides constructive notice. Virtual marking (listing web addresses for patents) is now allowed and convenient.
3. Monitoring for Infringement: USPTO does not police patent rights—it’s up to patent owners to monitor markets for potential infringement. Strong patents strategically engineered to deter competitors from attempting infringement in the first place. Weak patents that provide roadmaps for designing around claims invite infringement and design-around attempts.
4. Post-Grant Challenges: After patents issue, third parties have specific windows to challenge them at the USPTO’s Patent Trial and Appeal Board (PTAB). The most common is Inter Partes Review (IPR), which any party can file starting 9 months after issue. About 1-2% of patents get IPR’d—primarily those involved in litigation. Patents engineered to withstand scrutiny from the outset are more likely to survive these challenges.
Professional Help and Resources
The complexity of patent law and the high stakes involved in patent prosecution make professional assistance crucial for serious business owners seeking strong, enforceable patent protection that deters competitors rather than helps them. Legal representation is especially valuable for navigating patent laws, application procedures, and potential patent litigation, making the guidance of an experienced IP attorney essential for successful outcomes.
Patent Attorneys vs. Patent Agents: Patent attorneys are the essential choice for serious business owners—they’re licensed lawyers (state bar + USPTO bar) with comprehensive legal training who can advise on licensing, litigation, corporate transactions, and all IP matters. Patent agents are a limited option for those with severe budget constraints—they’ve only passed the USPTO patent bar. They are legally prohibited from providing any legal advice beyond filing paperwork with the USPTO. They cannot advise on licensing, infringement, strategy, or any legal matters. Patent agents are suitable only when budget constraints make attorney representation impractical. However, their limitations (no legal advice authority, limited paperwork filing) may prove costly in the long run when strategic guidance becomes necessary.
For strategic, well-engineered patents rather than mere paperwork, engage patent attorneys with technical backgrounds, extensive patent experience, and track records serving sophisticated clients.
To find qualified practitioners, applicants can search the USPTO’s Roster of Patent Practitioners or use recommendations from local inventor groups. The best patent attorneys bring backgrounds from industry and major law firms, with experience serving clients ranging from individual inventors to Fortune 500 companies.
USPTO Resources: USPTO provides a wealth of information. The USPTO’s Patent Application Guide has comprehensive step-by-step instructions. The Inventor Assistance Center (1-800-786-9199) is a helpline for patent filers assisting with procedural questions.
Professional patent representation isn’t just helpful—it’s essential for serious business owners who want patents that actually deter competitors rather than help them. Specifically, professional help is crucial when:
- If inventions are highly complex or require extensive legal argumentation (like software with Section 101 concerns).
- If receiving final rejections and thinking of appeals.
- If I have been threatened with infringement or need to enforce patents.
- If considering international patents.
- If you want to ensure broad and enforceable patents engineered to withstand scrutiny and deter competitors, rather than weak patents that create roadmaps for competitors to design around your innovations faster and cheaper than if you’d never filed at all.
The bottom line: weak patents don’t just fail to protect—they actively help competitors by creating roadmaps to beat you faster and cheaper. Strategic, well-engineered Litigation Quality Patent® services require experienced patent prosecution with proprietary methodologies that DIY inventors and novice attorneys cannot replicate. This proper calibration on obviousness, claim strategy, and prosecution positioning comes only from years of experience and cannot be acquired from Google searches, ChatGPT, or generic legal services.
Your Next Steps to Patent Process Success
Navigating the U.S. patent process successfully requires understanding not just the procedural steps, but the critical difference between patents that protect your competitive position and those that undermine it. While the USPTO processed 346,000+ patent grants in 2023, obtaining a patent means nothing if competitors can easily design around it—or worse, use your disclosure as a roadmap to beat you faster and cheaper than if you’d never filed.
The bottom line: not all patents are created equal. Weak patents created through DIY attempts, inadequate representation, or cost-cutting on legal preparation don’t just fail to protect—they actively help competitors understand your innovations and find ways around your claims. Strong patents engineered to withstand scrutiny and deter competitors require experienced patent prosecution with proprietary Litigation Quality Patent® services that incorporate sophisticated legal doctrines from the initial filing. This level of strategic preparation cannot be replicated through online filing services, patent agents limited to paperwork filing, or attorneys lacking extensive prosecution experience.
Business consequences of weak patent protection compound quickly. Lost revenue and market share occur when competitors replicate innovations you thought were protected. Loss of control over how innovations are monetized occurs when licensing opportunities evaporate due to narrow, easily designed-around claims. Competitors gain the upper hand by using your inadequate disclosures as blueprints for improvement. In today’s first-to-file system, where competitors are already working on similar ideas, hesitation or poor execution can result in the permanent loss of patent rights.
Take These Immediate Actions:
- Schedule a Free Patent Needs Assessment to evaluate your invention’s patentability and develop a strategic protection plan with experienced counsel who’ve served Fortune 500 companies, including Apple, Google, Intel, and Microsoft, and achieved up to 94% allowance rates through proprietary Litigation Quality Patent® services.
- Conduct comprehensive prior art searches with professionals using established research methodologies to identify distinguishing features and potential obstacles before investing in application preparation.
- Document your invention thoroughly, including technical specifications, embodiments, alternatives, and distinguishing features that set it apart from existing technology.
- Evaluate timing urgency based on development stage, competitive pressure, and any pending public disclosures or prototype manufacturing that could trigger statutory bars.
- Assess R&D tax credit coordination opportunities to maximize both tax benefits and IP value from innovation investments.
Strong patent protection represents an investment in competitive advantage that pays returns for decades. Professional preparation for non-provisional utility patent applications typically ranges from $10,000 to $20,000 or more, depending on complexity. Still, this investment saves 1-2 years and an additional five figures in prosecution costs while delivering patents that actually deter competitors. Generic approaches or DIY attempts save money initially but waste far more through failed applications, endless prosecution cycles, or weak patents that become competitive liabilities.
The difference between strong and weak patents comes down to the quality of preparation and strategic positioning from day one. Your invention quality matters, but the quality of your preparation determines whether you get meaningful protection or expensive paperwork. Experienced legal counsel who engineer patents that withstand scrutiny—through sophisticated obviousness strategies baked into initial filings, claim drafting that captures commercial value, and prosecution techniques developed through years battling Patent Office bureaucrats—deliver protection that actually serves your business objectives.
Don’t let competitors use your innovations as roadmaps. Engage strategic, well-engineered Litigation Quality Patent® services that deter competitors rather than help them design around your protection.
About the Author
Craige Thompson is a registered patent attorney and founder of Thompson Patent Law, leading a team of registered patent attorneys with engineering degrees and extensive patent experience. The Thompson Patent Law team brings backgrounds from industry and major law firms, with collective experience serving clients ranging from individual inventors to Fortune 500 companies, including Apple, Google, Intel, and Microsoft. With over 1,500 patents issued and an allowance rate of up to 94%, the team provides proprietary Litigation Quality Patent® services across electrical engineering, mechanical systems, software, and medical device technologies.
