Patent Prosecution Simplified: A 2025 Roadmap for Startups and Founders

Roughly 9 out of 10 patent applications receive at least one rejection on their first office action. Yet most inventors—especially tech founders developing AI algorithms, SaaS platforms, and software innovations—enter the USPTO process unprepared for this statistical reality, burning through thousands of dollars before learning what experienced patent prosecutors know from day one: patent prosecution is a strategic negotiation, not a paperwork submission. The patenting process, which encompasses everything from the initial filing to the final grant or rejection of a patent, includes patent prosecution as a key phase involving back-and-forth with the USPTO.

With approximately 418,262 filings in 2023 and 418,116 applications in 2022, the examination backlog surpassed 800,000 unexamined applications in 2024. This large volume means your application will face intense scrutiny from overwhelmed examiners who must meet high production quotas while ensuring quality standards.

As illustrated in the figure below, the USPTO’s patent backlog peaked around 800,000 in FY 2024. However, the number of first Office Actions issued has also reached record highs (over 545,000 in FY 2024), reflecting the agency’s strategic focus on increasing examiner productivity and reducing pendency.

For SaaS founders and tech entrepreneurs, patent prosecution represents far more than simply submitting paperwork—it’s a strategic, multi-phase process that typically spans 18 to 36 months and involves detailed negotiations with patent examiners. Whether you’re an independent inventor with a breakthrough AI algorithm or a corporation building an intellectual property portfolio around software innovations, understanding this process is crucial for protecting your technology effectively and positioning your startup for VC funding. The America Invents Act fundamentally changed U.S. patent law by shifting from a first-to-invent to a first-to-file system, aligning the U.S. with international patent practices and impacting how inventors secure patent rights.

This comprehensive guide will walk you through every aspect of patent prosecution, from the initial filing requirements through the final USPTO decision. You’ll learn about examiner interactions, response strategies, fee structures, and best practices that can significantly impact your success rate, all backed by the latest data and real-world examples from successful prosecutions in the tech space.

What is Patent Prosecution?

Patent prosecution constitutes the legal and procedural interaction between an inventor (or their representative) and a patent office—primarily the United States Patent and Trademark Office (USPTO)—from the initial patent application filing through to its final allowance or ultimate rejection.

The term “prosecution” often confuses newcomers to patent law, particularly tech founders focused on building and scaling their products. Unlike criminal or civil legal proceedings, patent prosecution refers to the pursuit of patent rights, not adversarial court action. This collaborative process involves inventors or applicants working with USPTO examiners to address patentability issues through written and sometimes oral communication. Developing a sound patent strategy is essential for navigating the prosecution process effectively and ensuring that patent efforts are aligned with broader business objectives.

Distinction Between Patent Prosecution and Patent Litigation

Understanding the difference between patent prosecution and patent litigation is fundamental for any tech entrepreneur building an IP strategy:

• Patent Prosecution: The administrative examination and negotiation process for obtaining a patent from the patent office.
• Patent Litigation: Legal proceedings that occur after a patent is granted, typically involving enforcement, infringement claims, or validity challenges in federal court.

Patent prosecution focuses on working with patent examiners to secure patent protection, while patent litigation involves defending or challenging patents in court through legal proceedings. For most SaaS companies and tech startups, getting strong patents through prosecution is far more valuable than having to defend weak ones in court later.

Role of Patent Attorneys and Registered Patent Agents

The patent prosecution process requires specialized expertise that only qualified professionals can provide, particularly for complex software and AI inventions that face unique challenges under current patent law:

Registered Patent Attorney: Licensed to practice law and to represent clients before the USPTO. Must pass both a state bar exam and the USPTO registration exam.

Registered Patent Agent: Authorized to represent parties before the USPTO but cannot provide general legal services. Must pass the USPTO registration exam and typically holds a technical degree.

Both registered patent attorneys and patent agents must demonstrate technical competency in their field and maintain their registration with the USPTO. For tech founders working with complex software innovations, choosing an attorney with deep experience in software patents and AI technologies is crucial for navigating the challenging landscape of software patent eligibility.

The USPTO maintains an official register of active practitioners and offers a pro bono program for qualifying independent inventors and small businesses. For instance, in 2023, a 17-year-old inventor obtained a U.S. patent (No. 11,565,878) on a garbage-can stabilizing platform with the help of a USPTO pro bono attorney. The Patent Pro Bono Program has enabled over 2,000 such patent application filings by under-resourced inventors to date.

Timeline Overview from Initial Filing to Patent Issuance

The patent prosecution timeline varies significantly based on several factors, with software and AI patents often facing additional scrutiny that can extend timelines:

• Average Duration: 18–36 months from filing to final decision.
• First Office Action: Typically occurs 14–20 months after filing. As of FY 2024, the average first-action pendency was about 19.9 months, reflecting recent USPTO efforts to speed up examination.
• Total Pendency: Recent data show an average total pendency of approximately 23-26 months for utility patents (applications requiring multiple rounds or RCEs can extend beyond that time).

Factors affecting the timeline include:

• Technology area and examiner workload (software patents often face longer timelines)
• Application complexity (AI and machine learning patents require careful claim drafting)
• Number of office actions required (software patents average more rejections)
• Applicant response times
• Appeal proceedings, if necessary

The USPTO’s backlog also influences timing. At the close of FY 2024, about 800,000 patent applications were awaiting first examination. To address this, the USPTO hired 588 new patent examiners in FY 2024 (and 632 in FY 2023) and implemented process improvements like enhanced AI-based application routing to reduce pendency.

The Patent Prosecution Process: Step-by-Step

Pre-filing Phase: Invention Disclosure, Prior Art Search, and Patentability Assessment

Before filing any patent application, thorough preparation can make the difference between success and costly failure, especially for software and AI innovations where patent eligibility is often questioned.

Invention Disclosure: Tech founders should provide a detailed explanation of their invention, including technical descriptions, system architectures, algorithms, and user interface flows. For software inventions, this includes explaining the technical problem solved, the specific improvement over existing solutions, and how the invention achieves concrete, measurable results. This forms the foundation for the patent application and helps assess whether the invention meets basic patentability requirements under current software patent law.

Prior Art Search: A comprehensive search of existing patents and published literature identifies potential obstacles to patentability. For tech companies, professional searches typically cost a few hundred to a few thousand dollars but can prevent wasted filing expenses if relevant prior art is discovered. This is particularly important in fast-moving tech fields where similar solutions may have been developed independently. Key search resources include:

• USPTO Patent Center and Patent Public Search databases.
• EPO’s Espacenet and other international patent databases.
• Google Patents and other technical literature databases.
• GitHub and other open-source repositories for software prior art.
• Academic databases for AI and machine learning research.
• USPTO Public PAIR (Patent Application Information Retrieval) for the status of related filings.

Patentability Assessment: Patent attorneys evaluate three critical criteria, with special attention to software patent challenges:

• Novelty: Is the invention new compared to existing prior art?
• Non-obviousness: Would the invention be considered non-obvious to someone skilled in the relevant field? The invention must not be non-obvious in light of what is already known.
• Subject Matter Eligibility: Does the invention fall within patentable subject matter under U.S. patent law? This is particularly challenging for software and AI inventions, which must demonstrate concrete technical improvements rather than abstract ideas.

For comprehensive guidance on navigating software patent challenges, check out our SaaS Patent Guide 2.0, which covers the latest strategies for protecting software innovations.

Patent Application Drafting and USPTO Filing Requirements

A complete patent application must include several essential components, with special considerations for tech inventions:

Component	Purpose	Key Requirements for Tech Patents
Specification	Detailed written description of the invention	Must demonstrate concrete technical improvements and enable implementation by skilled developers
Claims	Define the legal boundaries of patent protection	Application claims define the scope of protection sought and will be examined, amended, or rejected during prosecution. Clear independent and dependent claim structure focusing on technical elements rather than business methods
Abstract	Brief summary of the invention	Typically 150 words or less, emphasizing a technical solution
Drawings	Visual representation of the invention	System architectures, user interfaces, and process flows for software inventions
Oath/Declaration	Inventor’s sworn statement	Signed by all inventors, acknowledging their contributions

All documents must comply with strict USPTO formatting rules (margins, page numbering, etc.). Patent applications are generally filed electronically via the USPTO’s Patent Center system.

For AI and machine learning inventions, special attention must be paid to demonstrating how the claimed invention improves computer functionality or solves a technical problem in a non-conventional way. This is crucial for overcoming subject matter eligibility challenges that frequently arise in software patent prosecution.

Patent Examiner Assignment and Initial Review Process

Once filed, the application enters the USPTO examination queue:

1. Art Unit Assignment: The application is assigned to a specific technology center and art unit based on its subject matter. Software and AI patents typically go to Technology Centers 2100, 2400, or 3600, each with different examination patterns and approval rates.
2. Examiner Assignment: Within the art unit, a patent examiner is assigned to the case based on workload and expertise.
3. Initial Review: The examiner reviews the application for formalities and substantive patentability. During this process, the examiner determines whether the application meets all statutory requirements and identifies any issues that must be addressed.

They will conduct their own prior art search and evaluate the application against the statutory requirements (35 U.S.C. 101, 102, 103, 112, etc.). The USPTO is investing in AI tools to improve search and routing, which should enhance this initial review stage. However, this also means examiners may be better equipped to find relevant prior art for software inventions.

First Office Action and Prosecution Timeline

The First Office Action is the examiner’s initial substantive response to the application. Most first office actions include one or more rejections based on:

• 35 U.S.C. 102 (Novelty): Claims are anticipated by prior art (a single earlier reference contains all elements of the claim).
• 35 U.S.C. 103 (Obviousness): Claims are obvious in view of the prior art (multiple references could be combined to show the claimed invention).
• 35 U.S.C. 112 (Written Description / Enablement / Indefiniteness): The disclosure is insufficient or the claims are not clear or supported by the description.
• 35 U.S.C. 101 (Subject Matter Eligibility): For software and AI patents, this is often the most significant hurdle, with examiners rejecting claims as “abstract ideas.”

Applicants have three months to respond to an office action (extendable up to six months with fees). Response strategies include:

• Amending claims to distinguish over the prior art while maintaining commercial value.
• Presenting legal arguments explaining why the claims are patentable, particularly focusing on technical improvements for software patents.
• Requesting an examiner interview for clarification or to discuss possible claim amendments.

The USPTO has recently emphasized quicker first actions. This was achieved via focused initiatives and is aimed at reducing overall pendency by tackling the backlog of unexamined applications.

For detailed strategies on handling software patent rejections, our AI Patent Mastery resource provides specific techniques for overcoming common challenges in AI and machine learning patent prosecution.

Continuation of Prosecution Through Multiple Office Actions

Patent prosecution often involves several cycles of office actions and responses. After the initial office actions, further examination may be required, involving additional rounds of review, amendments, and arguments before a final decision is reached. The process continues until either:

• The examiner allows the claims (at which point a patent can be granted once issue fees are paid).
• The application receives a final rejection, and the applicant does not (or cannot) continue prosecution.
• The applicant abandons the application (decides to stop pursuing it).

Each exchange is an opportunity to refine the claims and arguments. For software patents, it’s common to narrow some claims to focus on specific technical implementations, add new dependent claims as fallbacks covering different aspects of the system, or clarify technical language in response to the examiner’s points. This iterative process can be collaborative, but sometimes it becomes adversarial if the examiner and applicant strongly disagree on patentability, particularly common with software patents facing eligibility challenges.

Final Allowance or Rejection Outcomes

Notice of Allowance: When the examiner is satisfied that the claims are patentable (all rejections overcome), a Notice of Allowance is issued. The examiner’s decision to allow the claims results in the issuance of a patent. The applicant then pays the issue fee (and publication fee, if applicable) within three months to obtain an issued patent, which is the formal grant of patent rights. This is a happy endpoint for prosecution and a significant milestone for tech companies seeking investor confidence and market protection.

Final Rejection: If the examiner’s second (or later) action is marked “Final,” it means the examiner believes the applicant’s chances to amend and argue are essentially complete in that application. A final rejection is not literally “final” for the applicant, though—it triggers the need to choose a next step from several options:

• Request for Continued Examination (RCE): Filing an RCE (with a fee) reopens prosecution in the same application, essentially giving it new life as if a new application.
• Continuation Application: Filing a new application that starts fresh (with the same disclosure) to pursue different or broader claims. This lets an applicant continue the fight on claim scope while allowing the current application (with narrower claims) to issue.
• Appeal to the PTAB: Appealing the rejection to the USPTO’s Patent Trial and Appeal Board (discussed below).
• Abandonment: Deciding not to continue (sometimes an economical choice if the chances of allowance seem very low or business interests have changed).

Until late 2024, the USPTO also offered the After Final Consideration Pilot (AFCP) 2.0 program, which allowed examiners a limited time to consider certain after-final claim amendments without an RCE. This program expired on December 14, 2024, so after a final rejection, applicants now generally must file an RCE or appeal (or a continuation) to keep prosecution going.

USPTO Examination Process

Patent Examiner’s Role in Reviewing Claims

Patent examiners serve as the gatekeepers of the patent system, ensuring that only inventions meeting the legal requirements receive patents. For tech companies, understanding examiner behavior and motivations is crucial for successful prosecution. Their key responsibilities include:

• Conducting prior art searches to uncover relevant existing technologies
• Analyzing the scope of the claims and comparing it to the prior art
• Checking compliance with all statutory requirements (utility, eligibility, novelty, non-obviousness, adequate disclosure, etc.)
• Communicating findings via written office actions
• Holding interviews with applicants when requested, to discuss the case

Examiners must balance efficiency (closing cases promptly) with thoroughness (not allowing invalid patents). Many examiners have demanding production quotas, which can impact how thoroughly they review complex software applications. The USPTO provides data and analytics tools to examiners to help manage quality – for example, examiners can see statistics on their allowance rates, and the Office has implemented quality reviews.

From the applicant’s side, it’s worth noting that examiner behavior can often be anticipated via analytics. Some examiners have higher allowance rates than others, or tend to allow cases after interviews. Applicants increasingly analyze these trends to inform their strategy. For tech companies filing multiple applications, this data-driven approach can significantly improve success rates and reduce costs.

Types of Rejections: 35 U.S.C. 102, 103, and 112

Understanding common rejection types helps applicants prepare effective responses, particularly for software and AI patents that face unique challenges:

35 U.S.C. 102 (Novelty): A claim is rejected for lack of novelty when each and every element of the claimed invention is found in a single prior art reference. In essence, the examiner is saying, “this exact invention was already publicly disclosed.” The applicant can overcome a 102 rejection by amending the claim to include something not present in that reference or by arguing that the examiner’s reading of the reference is incorrect.

35 U.S.C. 103 (Obviousness): A claim is rejected as obvious if the examiner can point to a combination of prior art references that, collectively, teach all elements of the claim, and if it would have been obvious to combine them. Obviousness rejections are very common in software patents, where individual elements may exist separately. Applicants can respond by amending claims to include additional limitations that are not suggested by the prior art combination, or by arguing that the examiner’s rationale for combining the references is flawed (for example, the references teach away from the combination, or the combination would not have yielded the claimed results).

35 U.S.C. 112 (Written Description / Enablement / Indefiniteness): Section 112 rejections cover several issues:

• Written Description: The specification must clearly describe the invention that is being claimed. If an element of a claim isn’t explicitly or inherently supported in the spec, the examiner may reject the claim for lack of written description support.
• Enablement: The specification must enable a person skilled in the art to make and use the full scope of the claimed invention without undue experimentation. If a claim is too broad relative to what is taught, or a critical aspect isn’t explained, an enablement rejection may result.
• Indefiniteness: Claims must particularly point out and distinctly claim the subject matter regarded as the invention. Vague or ambiguous claim language (for example, a relative term like “high” without context, or inconsistent terminology) can draw an indefiniteness rejection.

35 U.S.C. 101 (Subject Matter Eligibility): This is the most significant challenge for software and AI patents. Under current law, software and business method inventions, as well as diagnostic methods and natural products in the biotech area, often face §101 rejections as “abstract ideas” or non-eligible natural phenomena. For tech companies, this is usually the make-or-break issue that determines whether a patent can be obtained.

Software patent applications must demonstrate that the claimed invention provides a concrete technical improvement or solves a technical problem in a non-conventional way. Simply automating a known process or applying it on a computer is typically insufficient. Notably, there are ongoing legislative efforts to clarify eligibility. In 2023, a bipartisan Patent Eligibility Restoration Act was introduced to expand what is considered patent-eligible, aiming to overturn restrictive court precedents.

Restriction Requirements and Divisional Applications

If an application is found to contain multiple distinct inventions, the examiner may issue a restriction requirement. For software applications, this commonly occurs when a single application covers both system architecture and user interface elements, or different functional modules that could operate independently. When faced with a restriction:

• The applicant elects one group of claims to proceed with in the current application
• The non-elected claims can be pursued in one or more divisional applications, which are new applications that split off the originally disclosed but unexamined inventions—a divisional application benefits from the earlier filing date for the elected subject matter.

Divisional applications allow applicants to eventually obtain protection for all inventions disclosed, but each divisional requires its own fees and will be examined separately. Strategically, if you have multiple inventions in one disclosure, you should budget for multiple application filings (or tailor your initial application to focus on one invention to avoid a restriction). For comprehensive software platforms, this can result in patent families covering different aspects of the system.

Interview Process with Patent Examiners

Examiner interviews provide a valuable opportunity for direct dialogue with the USPTO, particularly important for complex software applications where written explanations may not fully convey the technical innovation. These interviews (which can be done in person at the USPTO, by telephone, or by video conference) allow the applicant and examiner to discuss the application informally. Key points about interviews:

• The applicant can request them at any time after an application is in prosecution. Examiners will generally grant at least one interview, especially after a first rejection.
• Interviews are often most useful after getting an office action, to clarify the examiner’s positions or float potential claim amendments.
• All interviews must be documented – after the meeting, the examiner writes an interview summary that becomes part of the record, and the applicant can also submit their own summary.

Effective interviews often accelerate prosecution by achieving agreement on how claims can be amended to overcome rejections or by clearing up misunderstandings. In fact, statistical analyses show that interviews correlate with higher allowance rates and fewer office action cycles. Often, getting an examiner on the phone to talk through the inventive concept can humanize the process and lead to a quicker resolution.

For software patents, interviews are particularly valuable for explaining how the claimed invention provides concrete technical improvements that may not be immediately apparent from the written application. Demonstrating real-world implementation and measurable results can help overcome rejections of abstract ideas.

However, interviews must be used tactically. It’s essential to come prepared, usually with a proposed amendment or at least specific points to discuss. And while interviews can be beneficial, they do not guarantee an allowance; sometimes an examiner remains unpersuaded, in which case prosecution must continue in writing or via appeal.

Responding to USPTO Office Actions

Understanding Different Types of Office Actions

Not all office actions are the same. It’s essential to recognize the type of office action to know how to respond:

Non-Final Office Action: This is typically the first (and sometimes second) substantive action in a case. It presents the examiner’s rejections and objections, and the applicant has the full ability to amend the claims and/or present arguments. After a non-final action, the door is still open to negotiate with the examiner (including examiner interviews, filing affidavits, etc.).

Final Office Action: This usually comes after a non-final action if the applicant’s response does not persuade the examiner. A final action limits the applicant’s options: amendments after final are not entered as a matter of right (they must usually narrow the claims, and even then, the examiner can refuse to enter them if they raise new issues). Once a final action is issued, the clock is ticking toward either an appeal or abandonment (or filing an RCE/continuation). Applicants can still make an after-final submission, or they may request an Advisory Action to see if an amendment would be considered.

Advisory Action: If the applicant files a response after a final rejection (within the allowed time), the examiner may respond with an advisory action indicating whether the response has overcome the outstanding rejections or not, and whether any amendments were entered. An advisory action essentially tells the applicant, “your after-final amendment didn’t persuade me” (if it didn’t), and it maintains the status of the application as “final.” After an advisory action, typically, the applicant’s options are to appeal or file an RCE.

Recognizing a final rejection is critical – it means you should promptly decide on one of the continuation/appeal strategies (see below) before the response deadline passes.

Strategies for Responding: Amendments vs. Arguments

A successful response to an office action often requires both claim amendments and legal arguments, with special considerations for software and AI patents:

Claim Amendment Strategies:

• Amend claims to distinguish over prior art: add features or specifics that the cited references do not show. For software patents, this often means adding specific technical implementation details that provide concrete improvements. Ideally, amend in a way that preserves meaningful coverage but clearly avoids the prior art.
• Narrow claims strategically: rather than adding random details, focus on the inventive feature and make sure that aspect is clearly claimed. For AI patents, this might mean specifying particular machine learning approaches or data processing techniques.
• Introduce fallback positions: if you only had one independent claim, consider adding a new independent claim or ensuring your dependents cover important sub-features, so that even if the broad claim can’t be allowed, you have something patentable to fall back on.
• Avoid unnecessary limitations: don’t over-correct. You typically want to amend just enough to overcome the rejection, but not so much that competitors can easily design around your claim.

Argument Strategies:

• Point out differences between your invention and the prior art. If the examiner says Reference A + Reference B = your claim, walk through the claim elements and explain what is missing or why the combination is not as straightforward as alleged.
• For software patents facing §101 rejections, emphasize concrete technical improvements, measurable performance benefits, and specific problems solved in the technological field.
• Use legal precedent or USPTO guidance when helpful. For example, in an obviousness case, you might cite a case that says merely combining known elements is not enough without a reason, etc.
• Address each rejection clearly: for a §112 issue, for instance, cite the exact part of your specification that supports the claim language.
• Be respectful and persuasive, not confrontational. The goal is to convince the examiner (or later, the judges on appeal) that your position is correct.

The most effective responses show a clear understanding of the prior art and highlight the inventive concept of the application. Often, a concise and focused argument is better than a rambling one. Attorneys now frequently leverage examiner-specific data to inform their response strategy. For example, suppose an examiner is known to have a very high number of office action rounds per disposal (i.e., tends to issue many rejections per application on average). In that case, an attorney might be more inclined to appeal early rather than engage in endless back-and-forth. Conversely, if an examiner’s statistics show that an interview followed by a single focused amendment often leads to allowance, that path will be prioritized.

Working with Patent Attorneys to Craft Responses

Collaboration between the inventor and the attorney is vital when crafting a response, particularly for complex software applications:

• The inventor provides the technical truths – why the invention is different and vital. They can often spot misinterpretations of the prior art or suggest alternative ways to achieve a result that the examiner might not realize. For software patents, inventors can provide crucial insights into implementation details and technical benefits.
• The attorney frames these truths in the legal context, linking the technical distinctions to legal arguments under the patent laws and rules. The attorney will also handle the formalities (ensuring amendments comply with regulations, etc.).
• It’s often useful for the inventor to review draft responses for technical accuracy and completeness, while the attorney ensures the tone and structure meet USPTO expectations.

At RLG, we believe in transparent, collaborative prosecution. Unlike firms that charge by the hour and have incentives to drag out prosecution, our fixed-fee model ensures we’re aligned with your goals of getting strong patents efficiently. This collaborative approach is particularly important for software patents, where technical nuance can make the difference between allowance and rejection.

Timeliness is also essential. Extensions of time cost money (and too many extensions might send a signal of delay). A professional approach is to have a docket system to track deadlines and plan response work well ahead of the final due date.

Timeline for Responses and Extensions

By default, responses to USPTO actions are due within 3 months from the mailing date. The USPTO allows extensions (with fees) up to a maximum of 6 months from the mailing date. The fee for a large entity is currently: $235 for a 1-month extension (to 4 months), $690 for 2 months (to 5 months), $1,590 for 3 months (to 6 months). (Small entity fees are half, micro entity one-quarter.)

Failing to respond by the deadline (including any bought extensions) will cause the application to go abandoned. There are mechanisms to revive an abandoned application (if the delay was unintentional), but those also incur additional fees and require a petition.

It’s generally best practice to respond as early as possible. Procrastinating not only costs extension fees but also delays the eventual patent. That said, sometimes extensions are used strategically (e.g., to buy time for testing an invention, or to wait for the results of related cases).

Handling Final Rejection: Continuations, RCEs, and Appeals

When an application hits a Final Rejection, the applicant must decide how to proceed. Several options (which are not mutually exclusive) can be pursued:

Request for Continued Examination (RCE): An RCE involves paying a fee (currently $1,500 for the first RCE in a large entity case) to reopen prosecution in the same application. It’s like saying to the USPTO, “let’s continue talking.” After an RCE, the next Office Action will be a new non-final action (usually by the same examiner), giving you another chance to amend/argue. RCEs are a common strategy if you feel progress is being made with the examiner or if you have claim amendments left to try. (Note: RCE fees increase for second and subsequent RCEs – e.g., a second RCE is $2,860 for a large entity, a hefty 43% jump, to discourage endless RCE filings.)

Continuation Application: Instead of continuing in the same application, you can file a new application (a continuation) that is an identical disclosure but with a new set of claims. A continuation starts the examination process over, often with a different examiner, and gives you the ability to pursue a different claim scope. Many applicants will file a continuation to keep essential applications alive even after one version is allowed – this allows them to pursue broader claims that may have been difficult to get in the first round. (Continuations require paying the full filing/search/exam fees again, though.)

Appeal to the PTAB: If you believe the examiner is substantively wrong and further discussion is unlikely to help, you can appeal the final rejection to the Patent Trial and Appeal Board. To start an appeal, you file a Notice of Appeal (with a fee, about $840 for large entities) and then, within a few months, file an Appeal Brief (fee about $3,240) laying out your arguments in detail. The appeal process is described below. It moves the dispute to a panel of administrative judges. Appeals can be effective if the law is on your side, but they add significant time (often 1–2 years for a decision) and cost. Appeals should be used when you’ve reached an impasse with the examiner on important claim scope.

Abandon or Seek Other Protection: In some cases, after a final rejection, the applicant may decide it’s not worth pursuing further. This might happen if market conditions changed or the invention proved less valuable. Alternatively, the applicant might seek protection via a different route (e.g., refiling as a design patent if utility failed, or relying on trade secrets).

If prosecution is ultimately successful and a patent is granted, the patent holder gains exclusive rights to exploit the invention commercially. This means only the patent holder can make, use, sell, or license the patented invention during the patent term.

Often, applicants use a combination: for instance, file an RCE (to keep talking to the examiner on some amendments) and simultaneously file a notice of appeal (as a backup if the RCE round fails). Or file a continuation while also pursuing an appeal on the parent case (so if the appeal fails, the continuation is still pending to try again).

The PTAB Appeal Process

If an appeal is filed, the prosecution before the examiner pauses, and the case goes to the Patent Trial and Appeal Board (PTAB). Key steps in an ex parte appeal:

1. Notice of Appeal: A simple document alerting the USPTO that you are appealing. This preserves your rights before the 6-month post-final deadline. After this, you have time to prepare the brief.
2. Appeal Brief: This is a formal brief explaining why the examiner erred. It must follow a strict format (including a summary of the claimed invention, the issues, the argument, and an appendix of claims, etc.). This is your chance to present a thorough argument, potentially citing case law and pointing out every deficiency in the examiner’s rejection.
3. Examiner’s Answer: The examiner (often with help from a USPTO appeals specialist) will write an answer brief, defending the rejection and possibly addressing points you raised.
4. Reply Brief (optional): The appellant (you) can file a reply to address any new arguments in the Examiner’s Answer.
5. Oral Hearing (optional): You can request an oral hearing before the PTAB (for a fee). If requested, you (or your attorney) will get about 15–20 minutes to present the case to a panel of usually three PTAB judges, and they may ask questions. Many appeals are decided on briefs only, but oral hearings can be helpful in complex cases.

After that, the PTAB will issue a written decision. They may affirm the examiner (rejecting your appeal), reverse the examiner (in which case the application is sent back to the examiner with instructions to allow the claims or otherwise proceed consistent with the decision), or affirm-in-part (perhaps some claims are patentable, others are not).

Appeal outcomes: Historically, the overall success rate for appeals (any relief) is on the order of 40–50%. Recent statistics show roughly one-third of appeals result in a complete reversal of all rejections. Many appeals result in a partial win (some claims allowed or a rejection narrowed). The exact odds vary by technology area – for example, business method patents (USPTO Tech Center 3600) have a much lower reversal rate (only ~7% fully reversed in recent years) due to the prevalence of tough §101 rejections. By contrast, appeals in the chemical/pharma area might have a higher chance of overcoming obviousness because of more factual nuance.

As the chart below demonstrates, PTAB invalidation rates in post-grant proceedings (like IPR and PGR) have risen steadily, reaching approximately 71% in 2024. This trend highlights the growing scrutiny patents face even after issuance, reinforcing the importance of solid claim construction and clear prosecution history during the examination process.

For software and AI patents, appeal success rates fall somewhere in between, with eligibility (§101) rejections being particularly challenging to overcome. However, well-crafted appeals that clearly demonstrate concrete technical improvements can succeed even in difficult technology areas.

If you win the appeal, your patent usually proceeds to allowance (the examiner can sometimes come back with a new rejection, but they cannot reuse the same reasoning that was reversed). If you lose, you still could file an RCE or continuation to try again with new evidence or claim changes (unless you’re out of time or the issues can’t be fixed).

Example: A notable recent appeal involved a FinTech startup, TrendSpider, whose patent application (U.S. Patent No. 11,935,118) faced repeated § 101 rejections in the USPTO’s business method unit (Art Unit 3600). On appeal, the PTAB found that the claimed invention—real-time automated chart analysis—could not be performed mentally and was a genuine technological improvement. The Board reversed the examiner’s rejection on that basis. This was a rare complete reversal in that art area, and it allowed the application to issue as a patent. The case highlights that while appeals can be challenging, they are worthwhile for strong inventions where the examiner may have misapplied the law.

After PTAB: Federal Circuit Appeal (Optional)

If the PTAB rules against you, the next and final avenue is an appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC). This is essentially a lawsuit against the USPTO Director in the federal courts. Very few patent applicants take this step because:

• It is expensive (tens of thousands of dollars in legal fees).
• It is slow (another 1–2 years).
• The Federal Circuit gives deference to the PTAB on factual findings, so you usually need a clear legal error to have a chance.
• Often, it may be more productive to file a continuation and try a different approach with the USPTO than to fight in court.

However, in cases of significant importance (or to clarify the law), appeals to the CAFC do happen. For example, if an applicant wants to challenge the USPTO’s interpretation of eligibility or a procedural rule, they might pursue it. Success at the Federal Circuit can not only result in a patent for the applicant but also potentially set a precedent that helps others.

After the Federal Circuit, the only step is the Supreme Court, which rarely takes patent application cases (only if a significant legal principle is at stake).

Continuation and Divisional Strategies for Portfolio Building

Even as one application is being prosecuted or appealed, companies often file continuations to pursue broader or additional claims. For tech companies building comprehensive IP portfolios, this strategy is critical. A few strategic points:

Keeping Continuations Pending: For essential inventions, it’s common to have a “family” of applications. For instance, a first patent issues with some narrow claims covering specific implementation details, but a continuation is still pending, seeking broader claims covering the overall system architecture. This keeps competitors guessing and allows you to adapt claims if new competing products appear. (However, new USPTO fees effective 2025 impose surcharges on continuations filed more than 6 or 9 years after the original filing, to discourage significantly prolonged families.)

Divisional Protection: If you receive a restriction requirement, always consider filing divisional applications for the non-elected inventions. Otherwise, you effectively give up patent rights to those inventions. Divisional applications must be filed while the parent is pending to get the benefit of the earlier date.

Patent Portfolio Coherence: Use continuations to cover different aspects: one might have method claims covering algorithms, another apparatus claims covering system architecture, another claims focusing on user interface elements. This creates a stronger fence around your technology and makes it harder for competitors to design around your patents.

Cost-Benefit: Each continuation/divisional is a new application with costs. Balance the value of potentially broader coverage against these costs. Often, for a valuable invention (core to a product or licensing program), the incremental cost is justified.

In summary, final rejections are not “end of the road” – they are decision points. Sophisticated applicants plan ahead for them, budgeting for at least one RCE or an appeal in essential cases, and using continuation practice to ensure that even if one application gets fully allowed (perhaps with narrower claims), another can be pursued for broader protection.

Patent Prosecution Fees and Costs

USPTO Fee Framework (Large vs. Small vs. Micro)

The USPTO operates primarily on user fees, which have been increasing steadily. Understanding these costs is crucial for tech startups budgeting their IP strategy. The fee schedule is extensive, but key prosecution fees include:

Filing, Search, Examination Fees: For a new utility patent application, a large entity (standard) pays a filing fee ($320), a search fee ($700), and an examination fee (~$800) – roughly $1,820 total. (Small entities pay half, micro entities one-quarter.) As of 2025, these fees saw a roughly 10% increase, bringing the large entity total to about $2,000.

Issue Fee: Upon allowance, an issue fee (around $1,200 for large, $600 for small) must be paid to actually get the patent granted. (This was increased to about $1,300 for large entities in 2025.)

Maintenance Fees: While not part of “prosecution,” keep in mind issued utility patents require fees at 3.5, 7.5, and 11.5 years from grant to keep them in force. (These can range from a couple of thousand dollars to over $7,000 for the later stage for large entities.)

Additional prosecution fees to be aware of:

Excess Claims Fees: The USPTO charges extra if you have over three independent claims or over 20 total claims. Each claim above 20 is $200 (large entity, after 2025 increase, up from $100). Each independent claim above 3 is $600 (up from $480). This encourages applicants to be reasonable in the number of claims.

Extension of Time Fees: As mentioned, extending beyond the initial 3-month response period costs $ 200, $600, and $1,000 for 1, 2, and 3-month extensions (large entity).

RCE Fees: $1,500 for first RCE (large), $2,000→$2,860 for second and subsequent (43% increase in 2025). Small entities get discounts (50% off).

Appeal Fees: $840 for Notice of Appeal, $3,240 for appeal brief forwarding fee (large entity). These were marginally increased (~7.5%) in 2025.

Information Disclosure Statement (IDS) fees: New fees have been introduced for submitting a large number of references to the USPTO. The fees are as follows: $200 for citing more than 50 references, $500 for citing more than 100 references, and $800 for citing more than 200 references. (The first 50 references are still free – this change is aimed at outlier cases where applicants cite hundreds of references.)

The USPTO offers a 50% fee reduction for small entities (individuals, small businesses <500 employees, nonprofits) and a 75% reduction for micro entities (individuals who meet certain income and patent-filing thresholds, often independent inventors or academia). These discounts significantly lower the cost barrier for solo inventors and small startups. For example, a micro entity pays only $75 for that 1-month extension instead of $200, and $750 for an RCE instead of $1,500.

Professional (Attorney) Fees and the RLG Advantage

While USPTO fees can be in the thousands, attorney fees are often the larger expense in prosecuting a patent. Traditional hourly billing can result in unpredictable costs that spiral out of control, particularly problematic for startups with tight budgets.

At RLG, we believe in transparent, fixed-fee pricing that gives you certainty and aligns our interests with yours. While traditional firms charge:

• Patent Application Preparation: ~$8,000 to $15,000 for a moderately complex utility invention (electrical/mechanical/software). Highly complex biotech or chemical cases can be higher.
• Office Action Responses: ~$2,000 to $5,000 per response, with costs escalating if multiple rounds are needed.
• Appeal Brief: $5,000 to $15,000 just for the brief drafting, with full appeals costing $15,000 to $30,000.

These unpredictable hourly fees create perverse incentives where attorneys benefit from drawn-out prosecution. Our fixed-fee model eliminates this problem, ensuring we’re motivated to get you strong patents efficiently.

The RLG Guarantee for Patent Prosecution:

• FREE strategy call with the RLG team.
• Experienced US patent attorneys lead the application from start to finish.
• One transparent flat fee covering the entire patent application process (including office actions).
• Unlimited office action responses are included in our flat fee.
• Full refund if USPTO denies patent application*.
• Complete refund or additional patent search if application has patentability issues (your choice)*.

*Terms and conditions apply. See our service agreements for complete details.

Additional Proceedings and Their Costs

If prosecution extends into additional avenues, consider:

Appeals (PTAB): Traditional firms can double the prosecution cost of a case if you go all the way through an appeal, with costs often exceeding $30,000. At RLG, our fixed-fee approach provides cost certainty even for appeals.

Post-Grant Challenges: If you get a patent and someone challenges it in a PTAB trial (IPR/PGR), defending it will incur legal fees easily in the six figures. This isn’t a “prosecution” cost, but it’s a reminder to obtain the strongest patent possible during prosecution. Investing in quality prosecution up front can save enormous costs later.

International Prosecution: Each country has its own fees and attorney costs. Filing in Europe, China, Japan, etc., can each cost tens of thousands by the time patents are granted (including translations, foreign agent fees, annuities, etc.). Plan international filings strategically around markets of interest.

In summary, patent prosecution is an investment in your company’s future. The costs have to be managed, but cutting corners on quality can be far more expensive in the long run if weak patents issue that don’t protect your product or are easily invalidated.

International Patent Prosecution Considerations

U.S. patent prosecution is often just one part of a global strategy for tech companies seeking international market protection. If your software, AI system, or tech innovation has international market potential, you’ll need to consider filings abroad. Here are key points and recent trends for international patent prosecution:

PCT Applications (Patent Cooperation Treaty)

For broad international coverage, a common first step is to file a PCT application. WIPO administers the PCT and allows you to file once and later enter individual countries. Benefits:

Unified Filing: A single international application (in English, at the USPTO or WIPO) with effect in over 150 countries. This simplifies the initial process.

Delay of National Phase: You have 30 months (from your earliest priority date) to decide which countries to proceed in. This delay can be crucial for securing funding or gauging commercial interest before incurring considerable foreign filing costs, particularly valuable for startups seeking VC funding.

International Search & Opinion: The PCT process provides an International Search Report and a written opinion on patentability early (around 16 months). This gives a preview of what major patent offices might say. It’s not binding, but very informative for planning your global strategy.

Global Prior Art Effect: A PCT publication at 18 months serves as prior art against others’ filings worldwide (just as a U.S. publication would).

In 2023, approximately 272,600 international patent applications were filed via the PCT system, making it a heavily used mechanism for global patent protection, especially among applicants seeking multi-continent coverage. The U.S. ranked second with 55,678 filings, behind China’s 69,610 filings.

Cost-wise, a PCT filing is on the order of $4,000 (including fees to the USPTO as receiving office and the International Search Authority, often the USPTO or EPO). That covers the 18–30-month period. At 30 months, entering each country (Europe, China, Japan, etc.) will each typically cost a similar amount (a few thousand each at filing, plus local prosecution fees).

Prosecution in Major Jurisdictions

Each patent office has its own nuances, particularly important for software and AI patents:

European Patent Office (EPO): The EPO examines patent applications on behalf of all its member states. The standard is similar to the U.S. (novelty, inventive step). Notable differences:

• The EPO has a stricter approach to added matter and unity of invention.
• Software patents in Europe must demonstrate “technical character” and solve a “technical problem.”
• In 2023, the Unitary Patent system launched, allowing unified protection across many EU countries.

China: China is now the largest filing destination in the world by volume. Chinese patent examination tends to be fast (often <2 years). They have some unique aspects:

• Software patents are allowed if they have a technical effect (similar to Europe’s approach).
• It’s critical to have good translations for China – the exact wording in Chinese will govern the scope.
• China also offers Utility Model patents for quick coverage.

Japan: Like the EPO, Japan requires an explicit Request for Examination (within 3 years of filing) or the application will lapse. Japan’s patent law was harmonized significantly with U.S. practice.

International prosecution adds cost and complexity, but it’s indispensable for inventions with global market potential. Many U.S. tech companies file in at least Europe and China as well, given those markets’ size.

Best Practices and Emerging Trends in Prosecution

Collaborating with the Right Professionals

Working with patent attorneys who understand both the legal landscape and your technology is crucial for success. At RLG, we specialize in tech IP, particularly AI and software patents, giving us deep expertise in the unique challenges these applications face.

Choose the right attorney/firm: If your invention involves AI, machine learning, or complex software systems, use a practitioner with experience in these fields. They will understand the technical jargon, the prior art landscape, and how particular USPTO art units operate.

Communicate clearly: Provide your attorney not just with the technical details, but also with the business story of your invention – what problem does it solve, what’s the competitive advantage, how does it enable your business model? This helps in crafting stronger applications that align with your business goals.

Stay involved: Read drafts, ask questions. Inventors often catch subtle technical errors in claim language or description that the attorney might not realize. A team effort yields the best patents.

Strategic Claim Drafting and Amendment

Always draft claims with an eye on enforcement and business value. Ask: if a competitor were to try to work around my claim, how would they do it? Then preempt that with dependent claims or multiple independent claims.

• Use a mix of different claim formats: method, system, apparatus, etc., if applicable. One may catch an infringer where another might not.
• During prosecution, when you have to narrow, try to narrow to something you suspect competitors will still do. For example, if you have to add a limitation, make it one that is likely present in real-world use (so the claim remains commercially valuable).
• For software patents, focus on concrete technical improvements rather than abstract business processes.

Portfolio Management and Analytics

Smart companies now use data-driven approaches to guide prosecution:

Examiner analytics can identify patterns and optimize strategy. For example, if an examiner has a very low allowance rate, you might prepare for appeal early rather than engaging in endless back-and-forth.

Competitive intelligence: Watch competitors’ applications. Sometimes during your prosecution, a competitor’s patent or published application might appear, and you can cite it to ensure the examiner considers it.

One case study reported a 30% higher allowance rate after adopting a software tool that guided their response and continuation filing decisions based on past data. Data-driven prosecution is becoming a significant competitive advantage.

Quality vs. Speed vs. Cost

There’s always a tension among getting patents quickly, getting them cheaply, and getting them broad/strong. At RLG, our fixed-fee model helps resolve this tension by aligning our incentives with yours—we succeed when you get strong patents efficiently.

The best practice is to aim for quality first – a patent that doesn’t adequately protect the invention or that’s invalid is not worth rushing or saving pennies on. But within that constraint, programs like Track One can accelerate prosecution when speed is essential (for example, when you need issued patents for investor meetings or competitive positioning).

Your Next Steps to Patent Prosecution Success

Understanding patent prosecution is just the beginning—the real value comes from executing a strategic approach that protects your innovations while building competitive advantage for your business. For tech founders and inventors, getting this right from the start can mean the difference between patents that drive business value and expensive pieces of paper that provide no real protection.

The bottom line: weak patents help your competitors by teaching them your innovations without providing meaningful protection, while strong patents deter competition and create licensing opportunities that can fund your growth. In today’s first-to-file system, hesitation costs market share, competitive advantage, and potentially millions in lost revenue.

Every day you delay gives competitors more time to file their own applications, potentially blocking your path to protection. For software and AI innovations, where patent eligibility requirements are strict and getting stricter, professional guidance isn’t just helpful—it’s essential for success.

Take these immediate action steps:

1. Schedule a Free IP Strategy Call – Get a comprehensive evaluation of your invention’s patentability and develop a strategic protection plan tailored to your business goals and competitive landscape.
2. Conduct a Professional Prior Art Search – Before investing in full prosecution, ensure your invention is novel and understand the competitive landscape you’ll be entering.
3. Document Your Innovation Process – Start keeping detailed records of your development process, including technical challenges solved and improvements achieved.
4. Review Your Competitive Landscape – Identify key competitors and analyze their patent portfolios to understand gaps and opportunities.
5. Develop Your IP Budget and Timeline – Plan for the full prosecution process, including potential continuations and international filings aligned with your business expansion plans.

The most successful tech companies treat patent prosecution as a strategic investment in their competitive moat, not just a legal checkbox. With the right approach, professional guidance, and strategic thinking, your patents can become valuable business assets that drive growth, attract investors, and protect your market position for years to come.

Andrew Rapacke, Managing Partner, Registered Patent Attorney

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