Patent Prosecution
Patent prosecution refers to the process of applying for a US patent and having
the patent examined by the US Patent Office. There are many complex legal and
technical requirements that must be fulfilled in order to obtain not only an
issued patent, but a valuable patent that includes broad claims and is immune
from defects or serious limitations. It is important to note in advance that
no one can guarantee that any patent claims will be allowed or a patent will
issue. The patent prosecution phase can typically take 2 - 3 years from the
filing date of the utility application, although it may be longer or shorter
depending upon the circumstances.
After the utility patent application is drafted and filed with the necessary
signature documents in the U.S. Patent Office, it is assigned to one of over
4000 Examiners at the patent office. This is the person who will review the
patent application and "examine" the application for compliance with
the patent statutes and patent office rules. The patent prosecution includes
the required steps of filing information disclosure statements, assignments,
and the procedural aspects for compliance with the patent requirements.
The first substantial patent prosecution communication from the patent office
is generally an “office action,” in which the examiner is likely
to make one or more statutory rejections of some or all claims, with an explanation
of the legal basis for the rejection. The patent attorney normally reviews
the office action, consults with the client about the reasons for the rejection,
and prepares an “office action response” which may contain amendments
to the claims and arguments in support of the application.
The cycle of office action and response may continue for several iterations
during the patent prosecution until either the patent is allowed (allowance)
or receives a final rejection. Following a final rejection, the applicant has
several options including filing an appeal of the final rejection to the Board
of Patent Appeals and Interferences. Ultimately, if the patent application
is not allowed and the rejection is not appealed or continued, the application
will be abandoned and the patent prosecution comes to an end.
If the patent prosecution of the application is successful, and the patent
application is allowed, a notice of allowance is issued and the applicant is
invited to pay the issue fee. Upon payment of the issue fee, the patent will
issue.
For a more extensive explanation of the patent process or details concerning
patent prosecution, consult the Patent Practice section of our website, or
contact any of our registered patent attorneys:
Additional Patent Information:
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