A Guide to Patent
Prosecution in the US

Patent Prosecution in court can be time-consuming and complex. Having a professional on your side can help. Call the Evergreen Valley Law Group for information.

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What Is Patent Prosecution?

A patent is an exclusive property right granted by the government over inventions to encourage creativity and innovation. These rights are granted by the United States Patent and Trademark Office (USPTO) to allow inventors to reap the financial gains of their creative efforts by giving them control and ownership over their Intellectual Property. Anyone else who wishes to use a patented product or process can only do so with the permission or license of the inventor or patent owner. 

However, patent rights are not granted automatically but upon application to the USPTO. This patent application process is known as patent prosecution. The process involves all activities, negotiations, and correspondence between the patent applicant, their representatives, and the USPTO examiners leading to the grant of a patent.

Patent prosecution in the US is governed by the USPTO’s Manual of Patent Examining Procedure. The document explains the laws and regulations relating to the examination of patent applications in the United States.

The patent prosecution process could be complex as there are many rules to follow, deadlines to meet, and paperwork to file. So, if you’re an inventor who’d like to begin the patent application process, it is important to know what patent prosecution entails, even if you intend to hire patent attorneys to represent you throughout the process.

Why Is it Called Patent Prosecution?

When you hear the word ‘prosecution,’ the first thing that probably comes to mind is a government agency charging a suspected criminal to court and making them face a criminal trial. While that is probably a correct interpretation of prosecution, it would not be appropriate here. ‘Prosecution’ has several meanings. In the present context, it means continuing a course of action (patent application) until completion.

It’s probably all just a matter of semantics, really, but patent prosecution is the accepted terminology for all the activities, negotiations, correspondence, arguments, and concessions between the parties in a patent application, which leads to the grant of patent rights.

Patent Litigation vs. Prosecution

Another concept that could cause some confusion here is patent litigation.

    For the avoidance of doubt, patent litigation is simply litigation involving patents and patent rights. Patent litigation is a dispute resolution mechanism facilitated by the court system. A patent holder whose patented innovation has been used illegally can file a patent infringement claim against the perpetrator (defendant). In such an instance, the court could grant an injunction blocking the defendant from continued infringement and also order payment of damages.

    In essence, patent prosecution is not the same as patent litigation, and they cannot be used interchangeably, although this is probably evident from the explanation of patent prosecution in the previous section.

    The Patent Prosecution Process

    The procedure for patent prosecution is summarized as follows;

    Determination of Patentability

    The patent prosecution process typically begins with a patent search that determines if an applicant can patent their invention. The applicant also needs to determine whether other forms of intellectual property protection, such as copyright or Trademark Prosecution, would better protect their product. If a patent is appropriate in the circumstances, the applicant needs to determine the type of patent they intend to apply for.

    The two most common kinds of patents are design patents and utility patents. Design patents relate to the appearance of the intellectual property, while a utility patent relates to their function. Plant patents are the third kind of patent specifically relating to the discovery or invention of new varieties of plants.

    Each patent type has its specific application method, so it is essential to identify the appropriate one before you begin to avoid any mistakes.

    Preparing and Filing Patent Applications

    Generally, patent applications consist of several details, including an abstract, specification details that explain how the invention was created, and a description that explains how to use the invention.

    The application should also contain numbered statements that describe the extent of patent protection sought and how the invention would be protected from unlicensed third-party usage.

    All other requirements for a valid application can be found on the USPTO website. It is important to meet all the requirements. Otherwise, your application could be rejected. You can ask a patent attorney for help if you can’t do this on your own.

    After Filing

    If there’s an issue with your application, the USPTO will send you a letter detailing the deficiencies and giving you time to resolve them. Once this is done, your application is complete, and it will be assigned to an examiner.

    The examiner will assess your application and determine whether it meets the legal registration requirements. You can argue your case if the examiner raises objections to your application.

    Once the patent examiner approves your application, you’ll receive a Notice of Allowance from the USPTO, after which you’ll need to pay the issuance and publication fees. You’ll receive your patent grant by mail subsequently.

    How Long Does Patent Prosecution Take?

    Patent prosecution is a lengthy process and could take months to complete. But please don’t let this deter you. You can get some protection for your invention just by filing a complete application. Once you do this, your invention is referred to as ‘patent pending.’ This status is related to the first-to-file patent rule in America, which awards patent protection to the first to file a patent application rather than the first to invent, where the registration of two similar inventions is at stake. So, it is essential to take advantage of this situation and begin patent prosecution as soon as your invention is complete before someone with a similar invention beats you to it. 

    You can also reduce the processing timeframe by applying for a prioritized examination under the USPTO’s Prioritized Patent Examination Program, also called Track One. The program is only available for plant and utility inventions. It may allow applicants to get final dispositions within about 12 months. Other ways to abridge the patent prosecution time include applying for accelerated examination and the Full First Action Interview Pilot program. You can visit the USPTO website to determine if you qualify for any of those processes.

    How a Patent Attorney Can Help

    Registered patent attorneys are specifically licensed to help you with the patent prosecution process at the USPTO.

    With their knowledge of intellectual property (IP) law, they can help you determine if patent protection is appropriate for you or whether some other form of IP protection, such as copyright, would be sufficient. This way, you don’t get to spend your time, effort, and money pursuing the wrong procedure.

    A patent attorney can also represent you throughout the patent prosecution process in all the relevant ways. They can prepare and file the application according to the legal requirements on your behalf. They will also receive and respond to USPTO correspondence and argue your case if the examiner raises any objection to your application.

    In the event of rejection, your attorney can appeal the decision with the Patent Trial and Appeal Board (PTAB).

    Basically, a California patent attorney does everything legally possible to ensure your application scales through. This means less stress for you and more time to continue your creative engagements. 

    Evergreen Valley Law Firm: Your Patent Prosecution Law Firm

    If you have further questions about patent prosecution, how to begin the process and whether a patent is appropriate for your invention, contact us at Evergreen Valley Law Group.

    We are a full-service intellectual property law firm, and our goal is to help our clients get the highest possible levels of protection for their intellectual property. Our experienced patent attorneys are licensed to practice by the USPTO and can represent you throughout the patent prosecution process.

    We are based in San Jose, California, but we serve clients all over the United States and in Bangalore, India. 

    Call us at (408) 273-4640 or contact us online to schedule a consultation with an attorney.