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"The best way to predict the future is to invent it"-Alan Kay

Patent Prosecution

This term canbe a little misleading. Formany patent attorneys and their clients, patentprosecution involves a processwhich can be time consuming and involvesnumerousrejections.However, inmostcases,patent prosecution is necessary. Thismay mean thatan inventionisone step closer to beingpatented.

What Is Patent Prosecution?

This termdescribes the interaction between patent attorneys, their clients, and representatives of the patent office who examine patent applications.Thiscan be split into pre-grant or post-grant prosecution. Pre-grant prosecutionrefers toattorneys andclients negotiatingwith the patent office toget their application accepted. Post-grant prosecutionrefers toissues with an existingpatentandmakingamendments afterit has been granted.

Is Patent Prosecution The Same As Patent Litigation?

Patent prosecution is not related to patent litigation.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 clients patented invention.

How Does Patent Prosecution Work?

Usually anattorney and their client will submit their patent application to a United States Patent and Trademark Office examiner. The examiner reviews the paperwork andoftenmakes one or more statutory rejections of the product claims. A client and his patent attorney will then review the examiners claims and make amendments to the claims. The examiner reviews the patent paperwork again and makes further rejections before returning the paperwork to the attorney for review. The 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?

The prosecution process can vary widely based upon the complexity of the patent, the style of the examiner, and the skill of the attorney and inventor.For instance, one study showed that patent applications with 30 claims took 33 percent longer than those with two claims. This is simply a result of the amount of time ittakesexaminers to review applications and attorneys to respond to rejections.

Once Patent Prosecution Ends, APatent Decision Can Be Appealed.

If a patent application is rejected during the patent 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.