Basic Patent Terminology

Jul 30, 2026 | Patent, Utility

A patent journey can be confusing and complex. This is why it is important to understand commonly used words early on. For experienced practitioners and examiners this is nothing new. But for a person new to the intellectual property world, understanding this language from the start can be a beneficial advantage. Want to know more? Keep reading.

1. USPTO – United States Patent and Trademark Office is a federal agency in the Department of Commerce. USPTO is a trademark and patent authority that is responsible for granting US patents as well as registering trademarks.
2. Prosecution – A process by which the patent is examined, with correspondence going back and forth between the examiner and the applicant and/or applicant’s attorney.
3. Provisional – A provisional patent application is an informal application that is filed with the patent office and expires automatically in one year from its filing date. A provisional patent application acts as a placeholder and ensures a priority date for your non-provisional patent. Provisional application is not examined by the examiner unless a non-provisional is filed.
4. Non-Provisional – A non-provisional patent application is a formal patent application which is intended to be examined by the examiner. The goal is to get your non-provisional patent application approved, so that it becomes an active patent.
5. Prior Art – All the publicly disclosed and available knowledge and references, anywhere in the world, relating to the technology of the claimed invention in the patent application.
6. Priority Date – The earliest filing date that a patent application can claim. When a patent relates to an earlier-filed application by the same inventor, it can claim priority to the earlier application. Since US is a first-to-file country, it is important to establish your priority date as soon as possible. Therefore, filing a provisional application can be a crucial step.
7. Patent Term – A legal lifespan of a patent. It starts on the day the US application is officially filed and lasts 20 years. If you claim priority on an earlier US application, the patent term starts from the priority date.
8. Office Action – Official communication from the USPTO requesting a certain action to be taken. Office Actions can be final and non-final. Non-Final Office Action is usually the first communication from the Examiner regarding the patent application. Final Office Action is typically Examiner’s communication after the Non-Final Office Action response. Usually, you have 3 months to respond to the Office Action, this time can be extended for a fee. Unless you file a Final Office Action response with the Request for Continuing Examination, your response will not be considered, and the application will be abandoned.
9. Publication – Typically, 18 months from the earliest priority date, your patent application becomes public which means that it is now searchable and accessible through the USPTO database by everyone.
10. Issue – When a patent application becomes a patent, it is called issuance. Before the patent is issued, you will receive a Notice of Allowance stating that your patent is allowed, what claims are allowed, and the fee you must pay in order for a patent to be issued. A few months after you pay the fee, your patent will be issued, and you will become an official patent owner.

Provisional (Utility) Patent Application

Jul 9, 2026 | Patent, Utility

A provisional patent application is an optional and temporary utility patent application that only lasts 12 months from its filing date. It is never reviewed or examined during its 12-month lifetime and it is never issued as any kind of patent. 

The filing costs of a provisional patent application are less than a non-provisional patent application, but overall a provisional application is a more expensive and time-consuming route. because it requires filing a non-provisional patent application. 

Although the provisional application requirements are more informal compared to nonprovisional requirements, the safest strategy is to file the same patent application as both a provisional and non-provisional patent application. An incomplete provisional patent application can result in loss of all patent rights in the U.S. and around the world. Complications may arise if the provisional application is not identical to the subsequently filed non-provisional and foreign patent applications, especially because the provisional patent application exceptions exist only in the U.S.

Ultimately, the provisional patent application is a placeholder. It shifts the beginning and end of the 20-year term for patent coverage by one year and gives patent pending status while the inventor does market research and attends to other business needs before the non-provisional and foreign applications are filed.

U.S. Patent Application Prosecution

Jun 9, 2026 | Patent, Utility

Patent application prosecution, also called examination, is when the U.S. Patent Office assigns the patent application to an Examiner. The Examiner is an expert in the field of the invention and will make a full review of the present invention and compare it to prior art, which most often results in an office action.

Office actions are a very normal part of the patent process. Typically, a patent application receives about 3-4 office actions. When the Examiner “rejects” the invention based on prior art, the attorney will argue that the invention is, in fact, patentable based on provided evidence:

 “The attorney’s job is to strategically respond to the Examiner’s rejections to minimize the amount of issued Office Actions that go back and forth, while trying to obtain the broadest scope of claims possible. A patent may be of little value if it isn’t of broad enough scope to keep folks from easily avoiding the scope of the patent. A skilled attorney will also greatly increase your chances of getting allowable matter of reasonable and useful scope of your invention, resulting in an issued patent.” –Attorney Jim Passé, The Inventor’s Guide E-Book