International U.S. Patent Filing & Prosecution
U.S. patent filing is the process of submitting a patent application to the USPTO. Prosecution is everything that happens after: the examination, the back-and-forth with an examiner, and the amendments that eventually lead to grant or rejection. For a funded tech company operating between San Jose and Bangalore, getting both stages right means coordinating U.S. filing strategy with Indian filing obligations from the start, not treating them as two separate problems handled by two disconnected firms.
What Is U.S. Patent Filing and Prosecution?
Filing is the act of submitting an application to the USPTO. Prosecution is the process that follows: an examiner reviews the application against the legal requirements for patentability and issues objections or rejections, and then the applicant responds with arguments or amendments until the claims are either allowed or the application is abandoned.
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Filing and prosecution are often talked about as one step, "getting a patent," but they are functionally different phases with different risks. Filing decisions, such as what to claim, when to file, and whether to go provisional or nonprovisional, shape everything that happens during prosecution. Prosecution decisions, including how to respond to an office action, whether to amend or argue, and when to file a continuation, shape how strong the resulting patent actually is once granted.
When to File
Whenever possible, file before any public disclosure of the invention. Demos, pitch decks, product launches, and even some technical conference presentations can start disclosure clocks that affect what protection is still available for an invention, and the safest position is a filed application before any of that happens.
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For a funded company, timing also has to account for the fundraising calendar. Investors and their technical diligence teams look for filings that reflect the technology the company is actually raising money on, not a filing made months later that doesn't cover what was pitched. Coordinating the filing timeline with the raise, as opposed to treating them as unrelated, avoids an awkward gap in the story during diligence.
What the U.S. Filing and Prosecution Process Involves
The process has a consistent shape, although the specifics vary by technology area and the examiner’s response.
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Provisional vs. Nonprovisional Applications
A provisional application is a faster, lower-cost way to establish a filing date. It doesn't require formal claims and isn't examined, but it's only good for 12 months. A corresponding nonprovisional (utility) application has to be filed within that window in order to keep the earlier priority date. A nonprovisional application is the one that actually gets examined, and can result in a granted patent; it requires a full specification, claims, drawings where relevant, and an inventor's oath or declaration.
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USPTO Examination and Office Actions
Once a nonprovisional application is filed, it is assigned to an examiner in the relevant technology area. The examiner reviews the application for novelty, non-obviousness, and compliance with the other statutory requirements, and searches the prior art. The examiner's first substantive response, the office action, only rarely allows the claims outright. More often than not, it rejects some or all claims and explains why, citing specific prior art or legal grounds.
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Responding to Rejections: Arguments, Amendments, and RCEs
A response to an office action can argue that the rejection is wrong, amend the claims to distinguish the prior art, or both. This exchange becomes part of the application's permanent prosecution history, and arguments made here can later affect how broadly the granted patent is interpreted. This is why the response has to be built with an eye toward the patent's eventual scope, not just toward getting the application past the examiner. If a final rejection doesn't resolve the issues, the options are an appeal, a request for continued examination, or a continuation application.
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Continuation and Divisional Strategy
A continuation application lets a company pursue additional or different claims from the original disclosure, as long as the parent application is still pending. It's one of the more useful tools for building a layered portfolio around a single core technology, rather than stopping at one granted patent.
A divisional application serves a related but distinct purpose: when the USPTO decides a single application actually covers more than one invention, the non-elected invention can be pursued separately without losing the original priority date.
Filing From India: Coordinating U.S. Prosecution with an Indian Origin
If an invention was developed in India, Indian law generally requires that it be filed first with the Indian Patent Office, or that the applicant obtain a foreign filing license, before a corresponding application can be filed outside India. This is a genuine procedural requirement, not a formality to skip, and getting the sequencing wrong can create real problems for the resulting patent rights.
Beyond that sequencing question, coordinating U.S. and Indian filings well means having counsel who can evaluate both applications together: consistent claim language, a shared view of the prior art, and a single point of accountability, instead of a U.S. firm and an unrelated Indian agent working from separate instructions and occasionally comparing notes.
International Filing Beyond the U.S.: The PCT Pathway
For companies that expect they will need protection beyond the U.S. and India, the Patent Cooperation Treaty (PCT) system offers a single international application that establishes one priority date recognized across more than 150 member countries. Filing a PCT application doesn't itself result in a granted patent anywhere; it delays the harder decision of exactly which countries to enter and the significant translation and national filing costs that come with it for up to 30 months from the earliest priority date. For a funded company that isn't yet sure which international markets matter most, that extra runway is often the most valuable part of the PCT route.
Common Challenges and Risk Points
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Missed disclosure timing: a demo, pitch, or product launch before filing can affect what protection is still available.
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Office action deadlines: replies are typically due within three months (extendable up to six with fees), and a missed deadline can result in an abandoned application.
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Weak or reactive continuation strategy: stopping at a single granted patent instead of planning for continued filings that cover the product as it evolves.
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Foreign filing license issues: filing outside India before satisfying the Indian filing or license requirement for an India-origin invention.
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Disconnected counsel: U.S. and Indian filings handled by unrelated firms, producing inconsistent claim language or duplicated cost.
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PCT national phase deadlines: missing the 30-month window to enter the national phase in a target country, which forecloses protection there.
How EVLG Helps
EVLG operates offices in San Jose and Bangalore directly, so U.S. and Indian filings for the same technology are handled by one firm rather than coordinated across separate, unaffiliated counsel. The firm has overseen more than 5,000 patent filings with an 87% grant rate, and its attorneys and technical specialists work across AI infrastructure, semiconductor, photonics, robotics, defense, and EV technologies.
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EVLG's Managing Shareholder, Kanika Radhakrishnan, is a Harvard-trained patent attorney and former patent litigator at Morrison & Foerster. Her litigation background shapes how the firm approaches prosecution. Claims and office action responses are built with an eye toward how a patent would actually hold up if it were ever litigated, not just toward getting past the examiner. Kanika is also an active startup investor who has backed more than 25 early-stage deep tech companies across the U.S., India, and Europe, which informs how EVLG times and sequences filings against a company's funding calendar.
Our Process
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Application drafting and review, including deciding between provisional and nonprovisional filing based on timing and budget
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Filing coordination across the U.S. and India (and additional PCT member countries as needed), handled by attorneys in both offices rather than outside agents
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Prosecution and office action responses, built with the eventual scope and defensibility of the granted patent in mind
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Continuation and divisional strategy planning, so the portfolio grows with the product instead of stopping at the first grant
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Grant, issuance, and integration into the broader patent portfolio strategy