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By J.D. Houvener
Patent Attorney and Founder

JD:So here this one could be another question. “Hi everyone, I submitted several patent applications last year – gosh! Alright, avid inventor – and they are all still in the OPAP (office of patent application processing) art unit without having been given to an examiner. The estimated first action is five months, yet it’s been 20 months without even being to an art unit. Is this normal or should I be concerned?”

Well unfortunately it’s sort of a new normal. The wait period is atrocious, and what’s worse is that if you file a, you know, normal application – meaning a non-exited – a year and a half to two years before first action is a reality now. They just switched away – so no longer can you go to what’s called Private PAIR, which was access for only the practitioners to get access to see – and actually we used to get a PDF that would be submitted by the administrators to say sort of an estimated first action – “Hey you’re about 16 months away. You’re five months away. You’re four months away.” That’s gone with the new Patent Center. Patent Center – it we no longer have any sneak peek or estimate as to when you get a response. 

Matt: So that’s crazy – 20 months huh?  It you know…for the trademark side, until your first office action or your first initial review by an examining attorney, it’s about 10 months which is okay long…

JD: Yeah it seems quite long. It is you know when I, you know, when I first got started it was about three months so yeah goodness! 

JD: Well I mean in there – so just you know, silver linings right – is that you’ve got your patent filed, your patent pending, meaning that you’ve won the race. No other inventor in the world can now file the same application. You have won the race okay? You’ve got that locked in and so long as you just get ready and – one thing you can do, which I always encouraged while applications are pending, is to bring it into the world right? Bring it to market. So produce it, design it, get it refined and start selling it. Huge advantage there. What you’re going to get is maybe some ideas for the next version. 

So with next versions and iterating you can try to add in more detail should you get an office action. You can try to change the words to line up better with your next version, or simply file what’s called a continuation application that uses the core spec of the original filing but adds new matter – right, continuation in part it’s called – and you can get add additional, you know, basically build your portfolio out while you’re pending. 

So that’s one positive thing and of course, of course label, label, label, label all your products. Anything that’s patent pending, put “patent pending” on it now. 

Matt: JD, why would you do that? Why would you put “patent pending” on something?

JD: The most important reason is not – not actually to impress customers, which does a little bit – but mostly to let the bad guys know, or prove that you put them on notice. Okay and that gets at what JD…I look at this sliding a dollar…that gets triple damages! Triple damages! Alright. That’s they say “treble” but they really mean triple. It just means big trouble and it’s a huge mad threat to the legal hammer. No one wants to go litigation and face the triple trouble. 

We’ve got a…I love this. We got an IP attorney I think or at least agent up there. I’m not sure, Phil. I see a wait time of 18 to 20 months before first action. So that’s typical okay and you need…and in Canada you have to request examination yeah same here.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at