Why Investors Care About IP: The Patent Process Explained for High-Growth Startups

By Andrew Rapacke, Managing Partner, Registered Patent Attorney

The USPTO’s backlog has exploded to over 1.19 million pending applications in 2024, a 23% surge in unexamined cases since 2021, meaning inventors now wait an average of 26.3 months just to get their patents reviewed. But here’s what most inventors don’t realize: despite this crushing delay, patent grant rates have actually climbed from 50% a decade ago to roughly 75% today, and startups with patents are 10 times more likely to secure funding than those without. A patented invention grants the inventor exclusive rights, providing legal protection and fostering innovation by encouraging investment in new ideas.

The patent system isn’t just bureaucratic paperwork; it’s the backbone of America’s innovation economy. IP-intensive industries account for 41% of U.S. GDP and support 62.5 million jobs, making strategic patent protection a critical business decision, not an afterthought. Intellectual property protection plays a vital role in supporting economic growth and driving innovation by safeguarding the rights of inventors and businesses. In 2023 alone, inventors filed nearly 518,000 patent applications in the U.S., while China led the world with approximately 1.64 million.

Whether you’re a SaaS founder protecting AI innovations, an independent inventor with a breakthrough concept, or an entrepreneur securing competitive advantages, understanding how this system actually works, including delays, costs, and all, determines whether your intellectual property becomes a valuable asset or a costly mistake. The United States Patent and Trademark Office (USPTO) is the federal agency responsible for granting and managing U.S. patent and trademark rights, providing essential legal protections for inventions. This guide breaks down every stage with current data, real timelines, and strategic insights you need to navigate the process successfully. Here is the patent process explained.

Understanding the Patent Process Timeline

Patent prosecution takes significantly longer than most inventors expect. The patent application process is a multi-stage journey, beginning with preparation and culminating in the grant of a patent. As of early 2025, the average total time from filing to patent decision has stretched to 26.3 months, over two years, with first Office Action reviews now taking roughly 20 months on average. This represents a steady climb from 23.3 months total pendency in 2021, driven by the USPTO’s mounting backlog.

The unexamined application queue has swelled past 804,000 cases, the highest level in over a decade. Despite the USPTO hiring over 2,000 new examiners between 2022 and 2024, the backlog continues growing as filing rates remain resilient and examiner attrition offsets new hires.

For SaaS founders and AI innovators planning fundraising rounds, this extended timeline makes provisional applications even more strategic, allowing you to secure ‘patent pending’ status quickly while the examination queue processes.

Breaking down the timeline by stage reveals where delays concentrate:

Preparation Stage (1-6 months): Documentation, prior art searching, and drafting consume the most variable time. Professional patentability searches typically cost $1,000-$3,000, but can save massive headaches by identifying blocking prior art before you invest in a complete application. For tech startups and AI innovators, this stage is particularly critical, as software and algorithm patents face heightened scrutiny, so comprehensive prior art analysis becomes essential.

Filing Stage (1-2 weeks): Filing a patent application electronically through the USPTO’s Patent Center takes a day, though gathering required documents, approvals, and inventor signatures typically extends this to 1-2 weeks. The USPTO strongly recommends electronic filing and charges a ~$400 surcharge for paper submissions.

Examination Process (12-24 months, often longer): After filing, applications enter the examination queue where over 10,000 patent examiners work through cases by technology field. Current wait times for the first Office Action average 20 months, though this varies significantly by field, software, and AI patent applications in Technology Center 2100 (Computer Architecture and Software) often face even longer delays due to high volume and complex subject-matter considerations.

More than 92% of applications receive at least one rejection during examination, so the first Office Action is almost guaranteed to include objections. Common rejections cite prior art under 35 USC §102 (novelty) or §103 (obviousness), or technical issues under §112 (indefinite claims or insufficient disclosure). For software patents, §101 rejections concerning abstract ideas are particularly common post-Alice.

Allowance Stage (3-6 months): When you overcome examiner objections, the USPTO issues a Notice of Allowance. You then have 3 months to pay the issue fee. As of 2025, utility patent issue fees are $1,290 for large entities, $516 for small entities, and $258 for micro entities.

Issuance and Publication (1-2 months): After paying issue fees, the USPTO prepares the patent for grant, typically within 4-8 weeks. Your patent receives an official number and is published in the Official Gazette, establishing enforceable rights. Patent grant numbers surpassed 11 million in 2021, and in 2023, the USPTO issued over 346,000 utility patents alone.

The reality: If you’re planning to bring a SaaS product or tech innovation to market, expect to rely on “patent pending” status for 2+ years before getting actual patent protection. The USPTO offers Track One prioritized examination ($4,515 fee for large entities) that can achieve final disposition within 12 months, which many tech startups use for critical AI or software patents they need quickly for fundraising rounds.

Patent Process Explained – Types of Patent Applications

The type of patent you pursue fundamentally shapes your strategy, costs, and the scope of protection. For tech founders and SaaS innovators, understanding these distinctions is critical to building a defensible IP portfolio. Non-provisional patent applications are required for full examination and enforceable rights, while provisional applications are simpler and mainly used to establish an early filing date.

Utility Patents: Functional Protection

Utility patents protect how inventions work and what they do, the functional aspects. To obtain a utility patent, you must file a nonprovisional utility patent application, which requires specific documents such as a specification, drawings, and formal declarations. This application secures a filing date and establishes patent-pending status. Utility patents last 20 years from the effective filing date (excluding provisional time) and cover processes, machines, articles of manufacture, compositions of matter, or improvements.

In FY2023, the USPTO received approximately 594,000 new utility patent applications and granted over 346,000 utility patents, making this by far the dominant category. Allowance rates vary dramatically by field:

• Software patents: ~42% allowance rate—the toughest category due to heightened scrutiny of abstract algorithms post-Alice.
• AI and machine learning patents: Similar challenges to software, requiring careful claim drafting to show technical improvements beyond abstract mathematical concepts.
• Biotechnology: ~72% allowance—one of the friendlier fields.
• Mechanical engineering: ~52% allowance—middle ground.

The average utility patent application includes about 20 claims (3-4 independent claims), which is included in the basic filing fee. Every nonprovisional utility patent application must include at least one claim to define the scope of protection and meet filing requirements. Beyond that, the USPTO charges excess claim fees.

For SaaS founders and AI innovators, utility patents are typically the primary vehicle for protection. The key is demonstrating that your software innovation provides concrete technical improvements, not just implementing known processes on a computer. 

For AI and software innovators navigating these challenges, our AI Patent Mastery guide provides detailed strategies to overcome §101 scrutiny and build defensible patent portfolios.

Design Patents: Aesthetic Protection

Design patents protect only the ornamental appearance, the visual design or shape, not function. They last 15 years from the grant date with no maintenance fees required, making them cost-effective to maintain.

Design patent filings have surged recently. In FY2023, inventors filed 53,665 design patent applications (a 20% jump from the prior year), and 34,673 design patents were granted. High-profile design patent cases, such as Apple’s iPhone design litigation, have demonstrated that these rights can be powerful enforcement tools.

Design patent lawsuits are actually increasing. Over 450 design patent infringement cases were filed in 2024, up 35% from 2023. For consumer products and user interface designs where appearance drives purchasing, design patents provide meaningful competitive protection.

Plant Patents: Agricultural Innovation

Plant patents protect new varieties of asexually reproduced plants (excluding tuber-propagated plants or those found in an uncultivated state). To obtain this protection, an inventor must file a plant patent application, which involves submitting detailed descriptions and evidence of the new plant variety to the USPTO; applicants can choose between provisional and non-provisional applications, each with specific procedural steps and strategic considerations. They also last for 20 years from the filing date. This niche category sees only a few hundred applications annually but remains crucial for nurseries and agricultural companies developing new cultivars.

Provisional vs. Non-Provisional Strategy

A provisional patent application is a placeholder that establishes an early filing date for 12 months at a lower cost and with fewer formalities. Provisionals never mature into patents on their own—you must file a corresponding non-provisional patent application within 12 months to claim the benefit of the provisional and pursue full patent rights.

The advantage: Provisionals let you secure “patent pending” status quickly and cheaply while giving you a year to refine the invention, seek funding, or evaluate commercial potential. Filing a provisional establishes an early effective filing date for the subsequent non-provisional application, which is critical for securing patent rights and setting priority. The USPTO processed over 149,000 provisional applications in FY2023, predominantly from startups and individual inventors.

Current provisional filing fees (2025):

• Micro entity: $80
• Small entity: $160
• Large entity: $320

Compare that to non-provisional utility applications, which require $2,050+ in USPTO fees for large entities ($1,025 for small, ~$512 for micro), plus examination and search fees. Non-provisional applications are required for the USPTO to conduct examination and for you to obtain enforceable patent rights.

The catch: Whatever you describe in your proposal is all that counts for priority. If you make significant improvements during that 12-month window that weren’t in the provisional, those improvements don’t get the early date. The provisional expires exactly 12 months from the filing date, with no extensions; miss the deadline, and you lose that filing date forever.

For tech startups: Provisionals are particularly strategic when you’re iterating quickly on AI models or SaaS features. File a provisional covering your core innovation, then use the 12-month window to refine your product-market fit while maintaining your early priority date. Our SaaS Patent Guide 2.0 walks through optimal provisional strategies for software innovations.

International Protection via PCT

A U.S. patent only protects your invention within the United States. For global protection, you file in each target country or use the Patent Cooperation Treaty (PCT) system through WIPO.

A PCT application holds your place in over 150 member countries for 18-30 months while providing a unified initial filing and international search report. Over 278,000 PCT applications were filed worldwide in 2023, including about 55,700 by U.S. applicants, underscoring the route’s popularity among international patent seekers.

The PCT doesn’t itself become a patent; later, you “enter national phase” in each desired country by filing translations and paying fees there. This buys valuable time to assess which markets justify the substantial costs of foreign patent prosecution.

Pre-Filing Requirements and Patent Search

Before filing anything, your invention must meet three fundamental legal requirements: novelty, usefulness, and non-obviousness. These three hurdles are legal requirements for patentability. Conducting a comprehensive patent search is crucial to evaluating existing patents and prior art, ensuring your invention is unique and does not conflict with existing disclosures. Failing any one criterion dooms your application.

The Novelty Requirement

Your invention must be new compared to everything publicly known, the “prior art.” If any single prior art reference discloses every element of your claimed invention, it’s not novel.

Prior art includes existing patents worldwide, published patent applications, scientific papers, products on the market, and even your own publications. Previous public disclosures, such as conference presentations or online publications, are also considered prior art and can impact the novelty of your invention. The USPTO maintains an “absolute novelty” standard; a Japanese patent, German journal article, or Chinese product manual all count as prior art that can block your patent.

During examination, patent examiners search for any reference that “reads on” your claims. If they find one, you get a §102 rejection for lack of novelty. For AI and software innovations, prior art searches must extend beyond patents to include academic papers, GitHub repositories, technical blogs, and conference proceedings where many innovations are first disclosed.

The Usefulness (Utility) Requirement

The invention must have specific, substantial, and credible utility. Under U.S. patent law, the invention must also be a new and useful process, machine, manufacture, or composition of matter. This is usually the easiest hurdle; virtually any functional invention that does something satisfies the utility requirement. Only truly theoretical concepts with no real-world application (like a perpetual motion machine) typically struggle here.

You must identify a clear use or benefit in your application. For AI algorithms, specify what technical problem they solve. For SaaS methods, explain what efficiency gain or capability they enable. As long as you’ve built or tested your invention to some degree, you likely satisfy utility.

The Non-Obviousness Challenge

This is the most challenging hurdle and the one that causes the most rejections. Even if your invention is new, you must show that it wouldn’t have been obvious to someone skilled in the field, considering existing prior art. A patentable invention can also be a new and useful improvement to an existing process, machine, or composition.

§103 obviousness rejections are the most common type of rejection at the USPTO. Examiners can combine multiple prior art references and argue that putting them together would have been obvious. The analysis considers:

• Do the references address similar problems?
• Would combining them be logical?
• Are there unexpected results from your invention?

This is where detailed documentation of surprising advantages or unexpected results becomes critical ammunition against obviousness rejections. For software and AI patents, demonstrating technical improvements (e.g., faster processing, reduced memory consumption, improved accuracy beyond predictable levels) significantly strengthens your non-obviousness case.

Conducting Professional Patent Searches

Professional patent searches cost $1,000-$3,000 depending on complexity, but this upfront investment can save you from pursuing an unpatentable idea and wasting far more in application costs.

Patent attorneys or professional searchers use specialized tools. USPTO’s Patent Public Search database, Google Patents, commercial databases, and foreign patent databases, to search both U.S. and foreign patent literature. Remember: prior art anywhere in the world counts against you.

The search should cover:

• Patent databases (U.S., European Patent Office’s Espacenet, WIPO’s Patentscope, and other foreign patent databases essential for identifying relevant prior art outside the U.S.).
• Non-patent literature (scientific journals, technical publications, conference proceedings, arXiv preprints for AI research).
• Product documentation (manuals, catalogs, websites with product descriptions).
• Code repositories (GitHub, GitLab for open-source implementations of similar functionality).

While not legally required, filing without a search is risky, especially for software and AI innovations where public disclosure often happens through non-traditional channels. A search usually reveals close prior art, allowing you to narrow your focus before spending on a full application.

The RLG Advantage: Our patent search services come with a guarantee—if our comprehensive search finds your invention lacks novelty, you receive a 100% refund. Our search package includes:

• FREE strategy call with the RLG team.
• Invention discovery call with your attorney to gather search information.
• Comprehensive patentability search for US and Foreign patents and published applications.
• Comprehensive patentability report and review call with an attorney for IP protection strategy.
• 100% refund if the search finds the invention is not novel*.
• Full refund or another search if patentability search uncovers patentability issues (your choice)*.

No other firm takes on this level of risk because they’re not confident in their search methodology.

The One-Year Grace Period Exception

The U.S. offers a unique safety net: inventors can file a patent application up to 1 year after publicly disclosing the invention (e.g., through publication, conference, sale, etc.). This grace period protects only against your own disclosures, not against those of independent third parties.

Most other countries, including Europe, China, and Japan, have no grace period or only a minimal one. If you publicly disclose before filing, you forfeit foreign patent rights in those jurisdictions.

Best practice: File a provisional application before any public disclosure. Treat the grace period as emergency protection, not standard operating procedure, especially if foreign patents are part of your business strategy.

Documentation Requirements

Keep thorough records of your invention’s conception and development: dated lab notebooks, diagrams, test results, prototype photos, and Git commit histories for software. While the U.S. moved to a first-to-file system in 2013, good documentation still helps in various scenarios, proving derivation if someone filed after learning of your invention, or simply helping your attorney draft a better application.

Also conduct a separate “freedom-to-operate” (FTO) search beyond patentability searching. An FTO search identifies active patents you might infringe by making or selling your product. You can have a patentable invention that still overlaps someone else’s patent, meaning you can get your own patent but can’t commercialize without infringing on theirs.

Filing Your Patent Application

Patent applications require meticulous preparation. Incomplete or incorrect filings trigger costly delays or even loss of rights. After submitting your application and paying the required fees, you will receive a filing receipt from the USPTO confirming your application details. A standard non-provisional utility application contains these essential components:

1. Detailed Specification

This is the written description enabling someone skilled in the field to make and use the invention without undue experimentation. The specification must satisfy the requirements of 35 USC § 112: written description, enablement, and best mode.

Structure typically includes:

• Background: Technical field and prior-art shortcomings addressed by the invention.
• Summary: Brief overview of the invention’s main features (optional but standard).
• Brief Description of Drawings: List of figures.
• Detailed Description: In-depth narrative of embodiments, referencing drawings by figure and part numbers.

If your specification is too skimpy or vague, expect a §112 rejection for lack of enablement or insufficient description. Since you cannot add new matter after filing, include all essential details and variations up front.

For software and AI patents, the specification must go beyond high-level functional descriptions. Include algorithmic details, data structure specifics, and technical implementation particulars that demonstrate how your invention achieves its results. Generic descriptions of “using machine learning” or “applying AI” won’t stand up to scrutiny.

2. Claims

Claims are the legal boundaries of your patent. The specific features defining what you can exclude others from making, using, or selling. Every nonprovisional application must include at least one claim to determine the scope of the invention. If someone makes a product with all the features claimed, they infringe.

The average application includes about 20 claims (3-4 independent, the rest dependent). Independent claims stand alone and are broadest. Dependent claims add limitations, creating fallback positions if broad claims get rejected.

Claim drafting is an art. Claims must be:

• Broad enough to cover variations and potential infringers.
• Narrow enough to be novel and non-obvious over prior art.
• Supported by the specification, every claim element needs a basis in your description.

The USPTO charges excess claim fees for more than 20 total claims or three independent claims. For large entities, each additional independent claim beyond three costs $480 extra ($240 small, $120 micro).

Software patent claims require particular care post-Alice. Claims that merely recite “do it on a computer” or generic implementations will fail §101 scrutiny. Instead, claims must articulate specific technical improvements, novel data structures, or unconventional computing architectures that provide concrete benefits beyond automating known processes.

3. Drawings

“A picture is worth a thousand words” is literally true in patents. Patent drawings are required for inventions that can be illustrated (most, except perhaps some chemical or algorithmic inventions).

The USPTO has strict drawing rules: black ink on a white background, specific margins, reference numbers, and no shading except for specific allowable techniques. Professional patent drafting technicians typically charge ~$75-$150 per figure, or $300-$500 per sheet for complex drawings.

Quality drawings help examiners understand the invention and become part of the legal definition, especially for design patents, where drawings ARE the claim. For software innovations, consider including system architecture diagrams, flowcharts that illustrate algorithmic logic, and user interface mockups that show how your invention presents information or accepts input.

Critical: You can never add new drawings after filing that introduce new content, so err on the side of including more rather than less.

4. Oath/Declaration and Inventor Information

Each inventor must sign an oath or declaration attesting that they believe themselves to be the original inventor(s) and authorizing the application. This oath or declaration is typically a simple one-page USPTO form (Form AIA/01).

All inventors must be named correctly. Omitting an inventor can jeopardize validity; naming someone who isn’t an inventor is also incorrect. If inventors have assigned rights to a company, file a separate assignment document.

The oath or declaration also acknowledges the duty to disclose all known relevant information, critical to preventing intentional withholding of prior art that could later render a patent unenforceable.

5. Application Data and Forms

The Application Data Sheet (ADS) lists the title, inventors’ legal names and addresses, correspondence address, domestic benefit claims (referencing any provisional), foreign priority claims, and entity size.

Entity size determines fees:

• Micro entity: Individual inventors or very small companies meeting strict income limits ($206,109 gross income threshold for 2025).
• Small entity: Companies with ≤500 employees receive a 50% fee discount.
• Large entity: Companies >500 employees pay full fees.

Total USPTO fees for a standard utility non-provisional filing (2025) include filing, search, and examination fees:

• Large entity: ~$2,050 (filing + search + examination).
• Small entity: ~$1,025 (50% discount).
• Micro entity: ~$512 (75% discount).

These are just USPTO fees. At Rapacke Law Group, we use a transparent fixed-fee model rather than unpredictable hourly billing that can balloon to $15,000-$20,000+ at traditional firms. You’ll know your total investment upfront, covering preparation, filing, all USPTO fees, and unlimited office action responses, with no surprise bills from lengthy attorney calls or email exchanges. This startup-friendly approach lets you budget accurately and focus on building your business, not worrying about your legal meter running.

6. Information Disclosure Statement (IDS)

While not mandatory at filing, you should disclose any prior art references you’re aware of that are material to patentability via an IDS. You have a continuing duty to submit this during prosecution.

Failing to disclose known prior art can later render a patent unenforceable due to inequitable conduct. Many applicants file an IDS with the initial filing or shortly after, mainly if a prior art search was conducted or related applications exist.

Filing Deadlines and Procedures

Electronic filing through the USPTO’s Patent Center is strongly recommended and avoids surcharges. Online submission through the patent office portal is the preferred method for filing applications, ensuring efficiency and compliance. The United States Patent and Trademark Office (USPTO) serves as the federal patent and trademark office responsible for processing applications. You’ll receive an Acknowledgment Receipt with your filing date and application number if everything is in order.

If something critical is missing (like drawings or a spec section), you might get a Notice of Missing Parts. Getting the filing date secured is vital under first-to-file rules; missing it by even a day can be disastrous if a competitor is racing or if public disclosure has occurred. The trademark office also handles related intellectual property filings.

Pro tip: Patent attorneys use filing checklists to ensure completeness. Missing pieces can sometimes be fixed for a fee or by filing a continuation, but some mistakes, like insufficient disclosure, are irreparable after the fact.

Provisional Patent Applications Deep Dive

Provisionals are strategic tools for establishing early filing dates with minimal formality while deferring full application costs. Filing a provisional application is the first step toward securing rights to a patented invention. Introduced in 1995, they’ve become extremely popular, with over 149,000 filed in FY2023.

Advantages of Provisional Filings

Immediate “patent pending” status: The moment you file a provisional, you can legally mark your invention “patent pending.” This signals to investors and partners that you’ve initiated the patent process and can deter potential copycats—particularly important when pitching to VCs or showcasing at demo days.

Lower filing requirements: No formal claims, oath/declaration, or examination needed. You need only a specification describing the invention (with drawings if required for understanding) and the filing fee. Many provisional filings are essentially rough drafts, sometimes even copies of scientific papers or technical white papers supplemented with patent-style language.

Reduced costs: Provisional filing fees start at $80 for micro entities, $160 for small, and $320 for large entities, roughly one-tenth the cost of full applications. Attorney fees are typically lower, too, since formal claims aren’t required (though quality matters).

12-month development window: Use this year to:

• Seek funding or conduct market research on viability.
• Develop improvements and test prototypes.
• Prepare a high-quality non-provisional.
• Validate product-market fit and customer traction.
• Evaluate whether the full patent investment is worthwhile.

For tech startups, that year could make the difference between securing Series A funding or pivoting before investing $15,000+ in full patent prosecution.

The RLG Guarantee for Provisionals: We’re so confident in our provisional patent process that if the USPTO denies your provisional application, we’ll issue a 100% refund. No questions asked. Our provisional patent services include:

1. FREE strategy call with the RLG team.
2. Experienced US patent attorneys lead the application from start to finish.
3. One transparent flat-fee covering the entire provisional patent application process.
4. Full refund if USPTO denies provisional patent application*.
5. Full refund or additional searches if the application has patentability issues (your choice)*.

We provide one transparent flat fee covering the entire provisional application process, and if patentability issues arise, you choose: a full refund or additional searches at no extra cost.

Critical Limitations

12-month deadline is absolute: File your corresponding non-provisional within 12 months, or the provisional is abandoned, and you lose that priority date. There are no extensions (except rare emergency exceptions). Miss the deadline, and any disclosure in the provisional could even count as prior art against a later filing.

Quality still matters: While provisionals are informal, the description is critical. Your non-provisional only gets the provisional’s filing date for what was adequately described. If your provisional is too skimpy and you add essential details in the non-provisional, those later details won’t get the early date.

No examination means no feedback: The USPTO doesn’t examine provisionals for patentability; they just sit on file. You get no indication whether her claim will succeed until you finally file a non-provisional. Provisionals can’t be enforced directly either. Only issued patents from non-provisionals grant rights.

Strategic Use Cases

Provisionals work particularly well for:

• SaaS startups are iterating on AI features before product launch.
• Academic researchers filing before publishing papers or presenting at conferences.
• Tech founders need “patent pending” status for investor pitches.
• Inventors are still refining the commercial embodiment.
• Budget-constrained innovators buying a year to raise funds.

One cautionary example: An inventor filed a provisional with a sketchy description, then publicly disclosed more details, then filed a non-provisional including those details. The non-provisional was later invalidated because the provisional didn’t adequately support the claims, so the inventor didn’t actually have the claimed priority date, and their own public disclosure became prior art.

Bottom line: Don’t treat provisionals too lightly. Make them as complete as possible. At RLG, we draft provisionals with the same technical rigor as non-provisionals, just without formal claims, ensuring your priority date actually protects what you’ve invented.

Patent Examination and Prosecution

Once your non-provisional application enters the USPTO system, it joins the examination queue, where it awaits assignment to a patent examiner with expertise in your technology field.

Having experienced legal representation during the examination and prosecution process is crucial, as it helps navigate complex patent law and maximizes legal protection for your invention by ensuring your rights are adequately secured and enforceable.

Examiner Assignment and Workload

The USPTO organizes over 10,000 patent examiners into Technology Centers (TCs) covering different areas:

• TC 1600: Biotechnology and organic chemistry.
• TC 1700: Chemical and materials engineering.
• TC 2100: Computer architecture and software (where most AI and SaaS patents go).
• TC 2400: Networking, multiplexing, cable, security.
• TC 2600: Communications.
• TC 2800: Semiconductors, electrical and optical systems.
• TC 3600: Transportation, construction, electronic commerce.
• TC 3700: Mechanical engineering.

Each TC contains Art Units specializing in narrow technology niches. For example, AI patent applications typically go to specific art units within TC 2100 focusing on machine learning, neural networks, or natural language processing.

Patent examiners are highly qualified, typically holding at least bachelor’s degrees (many have master’s or PhDs) in science or engineering in their assigned field, plus extensive training in patent law and examination procedures.

Examiners work under heavy workload pressure, measured in “counts” per biweek. They must balance thoroughness with efficiency. Understanding this helps frame your interactions, clarity, and conciseness in applications and responses, allowing examiners to do their jobs and potentially leading to quicker allowances.

The First Office Action

Typically, 12-20 months after filing (recently closer to 18-20 months for software patents), the examiner issues the First Office Action on the Merits (FOAM). This official letter, usually titled “Non-Final Rejection,” outlines the examiner’s decisions. The examiner’s decision in the Office Action determines the next steps in the prosecution process, such as whether to respond, amend claims, or consider an appeal.

In over 92% of cases, the first action contains one or more rejections:

§102 (Novelty) Rejections: The examiner cites one patent or publication that allegedly has all features of your claims, thus “anticipating” them. They’ll reproduce a claim and annotate it with reference numbers showing where each element appears in the prior art.

§103 (Obviousness) Rejections: More commonly, the examiner cites 2-3 references in combination, arguing your claims would be obvious given these references together. They must provide a rationale for combining references, though sometimes this rationale is weak or boilerplate, giving you angles to argue against.

§112 Rejections: Issues with claim clarity or specification support. For example, “claim 5 is indefinite because the term ‘fast’ is a relative term” (112(b)), or “the specification doesn’t support claim element X” (112(a) written description or enablement).

§101 Rejections: Concerning patentable subject matter. Post-Alice, many software/business method applications get initial §101 rejections, arguing claims are directed to abstract ideas without “significantly more.” For AI patents, examiners often initially reject claims as merely “applying known mathematics to data” unless your application clearly articulates technical improvements.

Over 92% of applications receive at least one rejection, so expect this. The average application sees 2-3 Office Action cycles before final resolution. View the first Office Action as the start of a negotiation, not a verdict.

Understanding Examiner Variability

Not all examiners are created equal. Research shows that about 35% of examiners allow 60% of their patents (more permissive), while 20% allow only 5% (highly stringent).

Overall, USPTO allowance rates have climbed from ~50% in 2009 to roughly 75% today, though field-specific rates vary dramatically:

• Software: 42%
• AI/machine learning: Similar to software, ~40-45%
• Biotechnology: 72%
• Mechanical engineering: 52%

Your examiner’s historical allowance rate impacts strategy. Tools like Patent Advisor provide statistics on individual examiners, such as their allowance rates, average office actions, and typical prosecution length. An examiner with historically low allowance rates might require more rounds or an eventual appeal to get allowed.

The RLG Difference: We track examiner statistics for every art unit and adjust our prosecution strategy accordingly. If you draw a tough examiner, we know from experience which arguments resonate and which fall flat. This institutional knowledge dramatically improves allowance rates compared to firms that treat every case generically.

Response Strategy and Timing

After receiving an Office Action, you generally have 3 months to respond (extendable to 6 months with fees). Your response should strategically address each rejection through:

1. Claim Amendments: Narrow claims to avoid prior art or clarify terms to overcome indefiniteness. For example, if your claim said “processing data using an algorithm” and prior art showed generic data processing, amend to specify “using a neural network with reinforcement learning to optimize data classification accuracy” if that’s your key technical innovation.

Your original specification must support any amendment; you can’t introduce new matter. Amendments should directly address the examiner’s stated rejection reasons while preserving the claim’s scope.

2. Arguments: Explain why the examiner’s rejection is incorrect or why claims are nonetheless patentable. For §102 rejections, show that a claim element isn’t actually disclosed in the cited reference. For §103, argue the combination is improper (maybe references are from disparate fields with no motivation to combine) or that unexpected results distinguish your invention.

Evidence bolsters arguments, submit declarations with test results showing unexpected benefits, or use authoritative technical sources to counter the examiner’s claim interpretations.

3. Examiner Interviews: Request a phone or video interview with the examiner before filing written responses. These discussions can be incredibly valuable; examiners often appreciate them because they expedite resolution. You can float potential amendments or arguments to gauge reaction.

Always summarize interview substance in your written response as required. Examiners might indicate which features would overcome rejections, saving you from wasted response efforts.

RLG’s fixed-fee model includes office action responses: Unlike firms billing hourly (where responding to office actions can add $3,000-$5,000+ per response to your total costs, often resulting in $15,000-$25,000 total prosecution costs), our flat fee covers the entire prosecution process, including unlimited office action responses. You get strategic prosecution without worrying about the bill escalating every time the examiner raises new objections.

Final Rejection and Continuation Options

The first Office Action is usually “non-final,” meaning you have the right to amend and argue. The examiner considers your response and issues a second action. If still rejecting and no new grounds are introduced, it’s often made “Final.”

A Final Rejection limits options; you can’t amend as freely. At this point:

Request for Continued Examination (RCE): Pay $1,500 (large entity) or $600 (small entity) to reset prosecution and get another examination round. This is the most common path. About 30-40% of applications file at least one RCE.

Appeal to PTAB: If you believe the examiner is wrong and you’ve made your best case, appeal to the Patent Trial and Appeal Board. This involves formal briefings and, potentially, oral hearings before administrative judges. About 1,600 appeals are decided annually. Appeals take 1-2 years to be decided, but sometimes lead to allowances or reopened prosecutions.

Continuation Applications: File a new application with the exact specification, claiming priority to the current one, to pursue different claim strategies or additional embodiments. This lets you accept narrower claims in the parent to get it allowed quickly while continuing to pursue broader claims separately.

Statistics show that about 12% of applications are abandoned after the first Office Action, often because rejections were too broad and inventors gave up. Don’t quit too easily; there are usually ways to amend or refine to get something patentable, even if narrower than sought initially.

Patent Allowance and Issuance

When you’ve successfully overcome all examiner objections, you’ll receive a Notice of Allowance (NOA), formal approval that your application meets all patentability requirements. At this stage, you will be required to pay the issue fee, and in some cases, a publication fee may also be necessary for the patent to be officially published.

Issue Fee Payment

The NOA lists allowed claims and specifies the issue fee due. You have 3 months to pay (not extendable). For utility patents in 2025:

• Large entity: $1,290
• Small entity: $516
• Micro entity: $258

Missing this deadline results in application abandonment, though the USPTO typically sends reminders. If you accidentally miss the window, you can petition for revival, but it’s easier to just pay on time.

Issue Date and Patent Number

After paying issue fees, the application enters the issue queue. The USPTO assigns an issue date, typically 4-6 weeks after fee payment. Patents are published every Tuesday in the Official Gazette.

Your patent number will be in chronological sequence. As of late 2025, numbers are in the 11-million range. Patent grant numbers surpassed 11 million in 2021, and the USPTO issued 315,000+ utility patents in 2023.

Patent Rights and Term

On the issue date, your patent officially grants enforceable rights. From that date forward, you can exclude others from making, using, selling, offering for sale, or importing the invention as defined in your claims within the United States.

Patent term for utility patents: 20 years from the effective filing date (not counting provisional time), adjusted for any Patent Term Adjustment (PTA) the USPTO grants for examination delays. If prosecution took 3 years and unavoidable delays are counted, you might get 6-12 months of PTA added.

Many patents get PTA if the USPTO was slow beyond statutory benchmarks (first action within 14 months, total pendency within 3 years). Check the PTA calculation on your NOA; occasionally, they miscalculate, and you can petition to correct within specified timeframes after issuance.

Design patent term: 15 years from grant date (no maintenance fees required).

Important distinction: Patent term runs from filing date, but you couldn’t enforce until the issue date. Any time spent in examination “eats into” your enforceable term, which is why long pendencies hurt patent value (though PTA compensates for some delays).

Publication and Public Access

If your application has already been published for 18 months, the world has seen the application. When it issues as a granted patent, it is published again in final form, with any prosecution amendments incorporated.

The granted patent includes a front page with:

• Patent number and issue date.
• Inventors and assignee.
• Field of invention and relevant classifications.
• Abstract and representative drawing.
• Referenced prior art.

This information is publicly accessible on USPTO databases, Google Patents, and commercial patent databases.

Post-Grant Patent Maintenance

Owning a utility patent requires periodic maintenance fees to keep it enforceable throughout its full term. Patent owners must pay maintenance fees at scheduled intervals, typically at 3.5, 7.5, and 11.5 years after the patent is issued, to keep their patents in force. This system encourages patentees to relinquish rights they’re not actively using.

Maintenance Fee Schedule

Utility patents require fees at 3.5, 7.5, and 11.5 years after grant. These escalate each time (2025 rates):

Due at 3.5 years:

• Large entity: $2,150
• Small entity: $860
• Micro entity: $430

Due at 7.5 years:

• Large entity: $4,040
• Small entity: $1,616
• Micro entity: $808

Due at 11.5 years:

• Large entity: $8,280
• Small entity: $3,312
• Micro entity: $1,656

These fees double at each stage. Maintenance fees comprise a significant portion of the USPTO’s revenue.

Payment Windows and Late Fees

You can pay within the six-month window before the due date or up to six months after, with a late fee. The surcharge is $540 for large entities ($216 for small, $108 for micro), regardless of stage.

If you miss the grace period (more than 6 months late), the patent expires on the due date. There’s a rescue mechanism. A petition to accept a late maintenance fee if you can show the delay was unintentional and pay a hefty petition fee ($2,260 for a large entity), but if years pass, revival becomes impossible.

Critical: The USPTO doesn’t send reliable reminders. They mail notices to the last listed owner, but if assignments have happened, these might not reach the right party. Patent owners must docket these fees themselves or use professional annuity services.

Design and Plant Patents: No Maintenance Required

Design patents and plant patents have no maintenance fees; once granted, they last their full terms (15 years for designs, 20 years for plants) with no additional payments. This makes them cost-effective to hold long-term compared to utility patents.

Maintenance Fee Economics

Over 50% of patents expire by the 12-year mark due to non-payment of maintenance fees. The drop-off pattern typically shows:

• ~70-80% pay the 4-year fee (corporate-owned).
• ~50-60% pay the 8-year fee.
• ~40-50% make it to the 12-year fee.

If a patent isn’t commercially valid or is superseded by newer technology, owners let it lapse to save money. Even large companies abandon many patents after 12 years if they lack obvious value.

Strategic decision: By year 12, ask “Is this patent still valuable enough to justify $8,280?” In fast-moving fields like SaaS and AI, technology can become obsolete quickly, with abandonment rates of 8 or 12 years common. In contrast, foundational software architecture patents or core algorithm patents often maintain value through the full 20-year term.

Working with Patent Professionals

Patent law’s complexity makes professional representation highly valuable for most inventors. Working with registered patent attorneys is especially important, as they have legal and ethical responsibilities to maintain confidentiality and correctly handle your invention throughout the patent application process. Understanding the types of practitioners and how to work with them optimizes your patent outcomes.

Patent Attorneys vs. Patent Agents

Both must pass the USPTO’s Patent Bar exam, demonstrating knowledge of patent laws and procedures. The key difference:

Patent attorneys are lawyers who have passed both the state bar exams and the Patent Bar. They can handle all aspects of patenting, as well as broader legal work, infringement opinions, licensing contracts, litigation, and IP strategy.

Patent agents passed the Patent Bar but aren’t attorneys. They can prepare and prosecute patent applications before the USPTO, but cannot represent you in court or give legal advice beyond patent prosecution.

Currently, there are approximately 38,000 active patent attorneys and 14,000 patent agents in the U.S. Both are required to have science or engineering backgrounds; you’ll often see credentials like “PhD in Computer Science, Patent Attorney” or “B.S. Electrical Engineering, Patent Agent.”

For tech founders who need a comprehensive IP strategy, including patent prosecution, licensing guidance, and VC contract review, a patent attorney with startup experience is preferable. For inventors who only need application preparation and USPTO prosecution, a patent agent might be cost-effective.

Costs and Fee Structures

Typical patent attorney hourly rates range from $300-$600, varying based on:

• Geographic location: Major metros like NYC and Silicon Valley often see $600+ for experienced partners
• Firm size: Big law firms have higher overhead and rates; boutique IP firms or solo practitioners might charge less
• Experience level: Junior associates might bill $200-$300/hour, senior partners $500-$800/hour

Total patent costs, including attorney fees, typically range $8,000 to $15,000 for standard utility patent applications, though complex inventions or difficult prosecution can cost significantly more. For AI and software patents that require extensive technical specification and strategic claim drafting, costs often range from $12,000 to $18,000 at traditional hourly-billing firms.

The RLG Fixed-Fee Advantage: We reject the unpredictable hourly model that leaves founders anxious every time they call their attorney. Our transparent flat-fee structure covers:

• Initial strategy consultation (free).
• Comprehensive prior art search and patentability analysis.
• Complete patent application preparation and filing.
• All USPTO fees.
• Unlimited office action responses.
• Examiner interviews and strategic prosecution.

You know your total investment from day one. No surprise bills, no meter running during strategy calls, no hesitation to ask questions because you’re worried about the cost. Most importantly, our fixed-fee model means we succeed only when you get a strong patent. This startup-friendly approach aligns our interests with yours, turning what traditional firms treat as billable hours into a strategic partnership focused on your success.

Selecting the Right Practitioner

Critical factors to evaluate:

Technology expertise: Find someone who quickly grasps your invention. If you have an AI algorithm for natural language processing, seek an attorney with a computer science background and extensive software patent experience, not someone who primarily handles mechanical or biotech patents.

Startup experience: Patent attorneys who primarily serve Fortune 500 companies often overbuild patents for startups, adding unnecessary complexity and cost. Look for attorneys who understand startup economics, fundraising timelines, and the practical realities of building a business with limited resources.

Track record with similar innovations: Ask about success rates with software patents, AI patents, or whatever category matches your invention. Some practitioners specialize in high-stakes prosecution, others excel at high-volume, quick filings. For complex tech innovations, you want someone who regularly navigates §101 rejections and has strong relationships with examiners in the relevant Technology Centers.

Communication style: Patent drafting is partly art. Some attorneys write comprehensive claims and fight hard (good for robust coverage but potentially longer prosecution), while others take a conservative approach (quicker allowance but narrower patents). Discuss your business goals upfront; if you need a patent quickly for Series A fundraising, that changes the strategy from building a long-term defensive portfolio.

Entity size qualification: If you qualify for small or micro entity status, properly claiming this dramatically reduces USPTO fees. For a micro entity, you must certify gross income limits and no prior assignments to large entities. Many independent inventors and early-stage startups qualify, paying just a few hundred dollars in initial USPTO fees, compared with thousands for large entities.

Value of Professional Representation

While pro se filing is possible, data suggest professional representation greatly improves outcomes. Patent law has nuances that aren’t obvious, claim-phrasing intricacies, procedural gotchas, foreign filing requirements, and §101 subject-matter eligibility analysis for software.

One study found that pro se applicants have significantly lower allowance rates than represented applicants, likely due to the complexity of their cases. Even experienced engineers without patent law training often make mistakes that patent attorneys routinely avoid, like inadequate specification support for claims, failure to include fallback claim positions, or missing critical prosecution deadlines.

If the budget is extremely tight, consider at least consulting an attorney for critical steps like claims drafting or the first Office Action response, even if you handle other parts yourself. The USPTO offers some pro bono programs for under-resourced inventors through regional Patent Pro Bono Programs.

At Rapacke Law Group, we specialize in tech IP—particularly AI, SaaS, and software innovations. Our team understands both the technology and the business challenges startups face. We’ve successfully prosecuted hundreds of software and AI patents, and we know precisely how to position technical innovations to survive §101 scrutiny and examiner challenges. More importantly, we do it with transparent fixed fees that let you budget accurately from day one.

Your Next Steps to Patent Protection Success

Understanding the patent process is one thing. Successfully navigating it to secure strong, enforceable patent protection for your innovation is another. With 26+ months of average pendency, mounting USPTO backlogs, and field-specific allowance rates ranging from 42% for software to 72% for biotech, strategic patent prosecution requires both technical expertise and procedural experience.

The bottom line: Weak patents don’t just fail to protect your innovation; they actively help competitors by creating roadmaps to design around your claims, providing them with cheaper and faster paths to market. Strong patents deter competition, build investor confidence, generate licensing revenue, and create genuine competitive moats for your business. But achieving strong patent protection requires experienced prosecution with comprehensive prior art analysis, strategic claim drafting, and sophisticated prosecution techniques that DIY inventors and template services cannot replicate.

Every month you delay filing means lost priority rights in a first-to-file system where competitors may be pursuing similar innovations. Public disclosures, conference presentations, product launches, and even casual conversations with potential partners can all jeopardize your patent rights if you haven’t filed at least a provisional application. With AI and software innovations moving at breakneck speed, securing early filing dates while maintaining flexibility through provisional applications is critical.

Here’s your strategic action plan:

1. Schedule a Free IP Strategy Call with our patent attorney team to evaluate your invention’s patentability and develop a customized filing strategy that balances protection strength, budget constraints, and business timelines. We’ll identify the optimal approach, whether that’s filing a provisional to secure an early date. At the same time, you validate market fit, going straight to a non-provisional to build investor credibility, or pursuing design patents alongside utility protection for comprehensive coverage.
2. Conduct a professional prior art search before investing in full application preparation. Our comprehensive searches cover U.S. and foreign patents, published applications, academic papers, GitHub repositories, and product documentation, all of which may contain prior disclosures of your innovation. Remember: we offer a 100% refund if our search finds your invention lacks novelty. No other firm takes on that risk.
3. Document your invention thoroughly right now: conception records, test results, prototype demonstrations, technical specifications, and algorithm descriptions. If you’re developing AI models, save training data specifications, accuracy benchmarks, and unexpected performance improvements. This documentation strengthens your patent application and provides evidence against obviousness rejections.
4. Review our specialized resources for your innovation type:
   • AI Patent Mastery for machine learning algorithms and AI system innovations
   • SaaS Patent Guide 2.0 for software-as-a-service methods and architectures
   • SaaS Legal Forms Checklist for comprehensive startup IP protection beyond patents
5. Act before any public disclosure: conferences, product launches, investor presentations, academic publications, or even detailed conversations with potential partners. File at least a provisional application first to preserve all your patent rights, both U.S. and international.

Patents aren’t just legal documents; they’re business assets that signal innovation capacity to investors, deter competitive encroachment, and provide licensing revenue opportunities. For AI and software innovations where technical implementation is easily replicated once the concept is known, strong patent protection becomes even more critical to maintaining competitive advantage.

The fixed-fee investment in proper patent preparation pays dividends throughout your patent’s 20-year term through more substantial claim scope, fewer prosecution challenges, and more enforceable rights. At Rapacke Law Group, we’ve built our practice around helping tech startups and innovators secure robust patent protection without the anxiety of unpredictable hourly billing or the compromises of budget template services.

Get your innovation protected properly or watch competitors copy it freely. Schedule your free strategy call now to develop your optimal patent filing strategy.

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Andrew Rapacke, Managing Partner
Registered Patent Attorney
Rapacke Law Group

Connect with us:
LinkedIn: Andrew Rapacke
Twitter/X: @rapackelaw
Instagram: @rapackelaw

To Your Success,
Andrew