Prosecuting the Application

Once an application is filed, the application is given a Priority or Filing date; this date prevents subsequent activity from being considered “Prior Art”. Certain actions taken by others beyond this date may constitute infringement.

Generally, several months pass by without any response from the USPTO, except regarding certain procedural informalities. Within six months to a year, however, the examiner may respond with a “Restrictions Requirement”.

A Restrictions Requirement requires an applicant to elect some portion of the invention to continue prosecuting, permitting him or her to file one or more additional applications (continuation or divisional applications) for the other portions of the invention. However, the applicant can argue that some or even all of the portions of the application constitute a single invention, or are unburdensome for the examiner to examine as a group.

Whether or not a Restrictions Requirement is imposed, the examiner will begin examining the application to ensure that it overcomes the Four Standards in addition to a few quasi-substantive, quasi-procedural requirements. The examiner may object or reject to the application in the form of an “Office Action”. The applicant will have a chance to respond to the Office Action to either comply and amend the grounds of objection or rejection, or argue that they are inappropriate for one reason or another.