Patent Prosecution

These terms may be a little misleading. But for many patent attorneys and their clients, patent prosecution involves a process; which can be time consuming and involve countless rejections. But as any good inventor knows, patent prosecution is necessary. This means an invention to be one step closer to being patented.

Inventor Tip:

Registering your idea early could be vital to keeping your rights. Sometimes it's a race to the patent office, as was the case with the telephone with two patents being filed the very same day. Do you even know the name of the OTHER guy?

What is patent prosecution?

Patent prosecution describes the interaction between patent attorneys, their clients, and representatives of the patent office who examine patent applications. Patent prosecution can be split into pre-grant or post-grant prosecution. Pre-grant prosecution means attorneys and their clients negotiate with the patent office to grant their application. Post-grant prosecution means the patent office officials have some issues with a patent and want to make amendments after granting a patent.

Is patent prosecution the same as patent litigation?

Patent prosecution is not related to patent litigation. Patent prosecution simply refers to the process in which a patent is either approved or rejected and fails to become a patent. Patent litigation describes the legal action taken when a client is infringing on the rights of another client’s patented invention.

How does the process of patent prosecution work?

Usually a patent prosecution attorney and their client will submit their patent application to a United States Patent Office examiner. The examiner reviews the paperwork and likely makes one or more statutory rejections of the product claims. A client and his patent attorney will then review the examiner’s claims and make amendments to the claims. The examiner then reviews the patent paperwork again and makes further rejections before returning the paperwork to the attorney for review. The patent prosecution cycle continues and is only broken when a patent is allowed or receives final rejection.

How time consuming is it to get through the patent prosecution process?

In sampling 50,000 original patent applications (excluding applications that had continuances), it was found that claims were positive in regards to the patent prosecution process. Patent applications with 30 claims took 33 percent longer than those with two claims. This is because of the amount of time it took examiners to review applications and attorneys to respond to rejections.

Once patent prosecution ends, a patent decision can be appealed

If a patent application is rejected during the patent prosecution process, it may be appealed to the Board of Patent Appeals and Inferences. Generally, the process takes 18 months from the date of filing an appeal brief until a decision is reached by the BPAI.