Complete path from invention to patent grant
At Walnut Canyon, Athelia stands before the shimmering barrier between jurisdictions. Carved into the stone are three ancient paths:
Path One (Provisional): A placeholder, leaving a marker in time without committing to full examination. Inventors mark their territory for 12 months before the real journey begins.
Path Two (Non-Provisional): The complete path. Full examination. Full download. When Athelia touches this symbol, the barrier shatters. Knowledge floods her mind—not memorization, but understanding. She becomes Guardian Queen Examiner, and the system recognizes her authority.
Path Three (Continuation): Building upon what came before, claiming priority to an earlier filing. The foundation already laid, now reaching for broader protection.
This flowchart is the path she walked—from conception to grant, from invention to patent. The temporal boundaries are sacred. Miss the deadlines, and the invention falls back into the public domain, unclaimed and unprotected.
Decision tree after receiving a rejection
In her first days as Guardian Queen Examiner, Athelia learns that the examination process is a dialogue—a strategic back-and-forth between examiner and applicant. When she issues an Office Action, she is not declaring victory; she is presenting a challenge: "Prove to me that your invention is worthy of protection."
The applicant (often guided by Severen, the sapphire-eyed patent agent) has three primary weapons:
Amendment: Narrow the claims, add limitations, distinguish from prior art. Shape the invention into a form that can pass examination.
Argument: Challenge the examiner's reasoning. Show where the analysis went wrong. Demonstrate why the prior art doesn't actually teach what the examiner claimed.
Interview: Meet face-to-face (or voice-to-voice). Build understanding. Negotiate a path to allowance.
But when the Final Rejection comes—when Athelia has made her final stand—the applicant faces five critical choices: RCE (pay to continue), Appeal (escalate to PTAB), Continuation (file new application), After-Final Amendment (limited response), or Abandonment (surrender).
This flowchart is the battle map. Every decision point is a strategic crossroads. Every timing requirement is a sacred deadline. The examination system rewards those who understand the game.
Path from Final Rejection to Federal Circuit
When an applicant refuses to accept Athelia's Final Rejection, they invoke their right to escalate. The appeal process is a hierarchical climb—from examiner to the Patent Trial and Appeal Board (PTAB), and if necessary, all the way to the Federal Circuit and even the Supreme Court.
Notice of Appeal: The applicant declares, "I refuse this judgment. I demand review by higher authority."
Appeal Brief: The formal challenge. The applicant lays out their arguments, showing where the examiner erred, demonstrating why the claims should be allowed.
Examiner's Answer: Athelia responds, defending her rejection. If she discovers a new ground of rejection (a fresh attack the applicant hasn't addressed), she must offer them the choice: reopen prosecution or maintain the appeal.
PTAB Decision: The tribunal judges the case. Three possible outcomes: AFFIRMED (examiner was right), REVERSED (examiner was wrong), or AFFIRMED-IN-PART (mixed result).
Federal Circuit Appeal: The final mortal court. If PTAB affirms the rejection, the applicant may appeal to the Court of Appeals for the Federal Circuit (CAFC). From there, only the Supreme Court remains—but cert is rarely granted.
This flowchart maps the escalation path. Every deadline is sacred (6 months for Notice of Appeal, 2 months for Brief, 63 days to appeal PTAB decision). Miss a deadline, and the rejection becomes final. The appeal dies, and the claims are lost.
IPR, PGR, and Reexamination paths
Even after Athelia grants a patent—even after the applicant receives their crown of protection—the patent is not invincible. Third parties may challenge the granted patent through post-grant proceedings, returning to PTAB to argue that the patent should never have been granted.
Post-Grant Review (PGR): Within 9 months of grant, challengers may attack on any invalidity ground—§§ 101, 102, 103, 112, written description, enablement, even best mode. This is the broadest challenge, but the window is narrow.
Inter Partes Review (IPR): After 9 months (or for AIA patents), challengers are limited to §§ 102 and 103 based only on patents and printed publications. But IPR can be filed at any time during the patent's life (with the 1-year infringement lawsuit bar). IPR is the most common post-grant challenge—fast, efficient, and deadly to weak patents.
Ex Parte Reexamination: The older sibling. Anyone (including the patent owner) can request reexamination based on §§ 102/103. The process is one-sided: once granted, the requester steps back and the patent owner fights alone.
The stakes are high: preponderance of the evidence standard (lower than district court's clear and convincing), 12-18 month timeline, and estoppel consequences if the challenger loses. If PTAB invalidates claims, they are cancelled—erased from the patent as if they never existed.
This flowchart is the challenger's playbook. For patent owners, it's a roadmap to survival. The granted crown can be stripped away, but only through this rigorous process.
Types of continuing applications and when to use them
Athelia learns that patent families are like genealogies—parent applications giving birth to children, each claiming the priority date of their ancestor. Continuation practice is the art of building upon the foundation, expanding protection without losing the temporal anchor.
Continuation (§ 120): Same disclosure, different claims. When the parent application approaches allowance but the applicant realizes there's more to protect, they file a continuation. Same specification, same priority date, but new claims pursuing different aspects of the invention. Like exploring different rooms in the same house.
Continuation-In-Part (CIP): Adding new matter. When an inventor makes improvements after filing, they can file a CIP that includes both the original disclosure and new embodiments. But there's a cost: the new matter gets a later priority date, creating a two-tier family—old claims with early priority, new claims with later priority.
Divisional (§ 121): The sacred divide. When an examiner issues a restriction requirement—declaring that the application contains multiple independent inventions—the applicant must elect one for examination. But they can file divisionals to pursue the non-elected inventions. The reward? Safe harbor from double patenting—no terminal disclaimer needed if filed timely.
Critical Timing: All continuing applications require copendency—at least one day of overlap between parent and child. File the child before the parent issues or abandons, or lose the priority claim forever.
This flowchart is the family tree. Master continuation practice, and you can build patent portfolios that protect inventions from every angle, all while claiming the priority date of the original filing. Fail to understand it, and you'll watch your priority dates slip away, exposing your claims to intervening prior art.