What does patent prosecution mean in the United States?

The word prosecution typically means pursuing criminal charges against a person, but in the context of patents the word prosecution has a different meaning.

Patent prosecution in the United states is the process of securing a patent with the United States Patent and Trademark Office. The process includes writing a patent application, searching for prior art, filing the application with the United States Patent and Trademark Office and interacting with the United States Patent and Trademark Office during in the examination of the application. The examination may conclude with a grant of the patent application, a denial of the patent application or an abandonment of the application if the applicant feels a patent is not worth pursuing.

The attorney you choose to assist you with patent prosecution is important. If you want to sue someone who you believe is infringing on a patent which has already been granted then you want a patent litigation attorney. If you want to acquire a patent on your invention then you want a patent prosecution attorney. Patent prosecution attorneys are registered to represent clients before the United States Patent and Trademark Office, other types of attorneys are not allowed to help clients acquire patents.

The first step in the patent prosecution process is drafting the patent application. Typically drafting the patent application involves the patent attorney interviewing the client to learn: all the inventors involved in the creation of the invention, the nature of the invention and why it is novel, prior art that the client might be aware of, and any public disclosures of the invention of which the client is aware. It is a good idea to have the patent attorney perform a prior art search at this time also to determine what other inventions exist that are similar to the client’s invention. Gathering this information helps the patent attorney not only draft the patent application but also, advise the client on the likelihood a patent will be granted.

Many patent attorneys will want to draft the patent application quickly to avoid the possibility that a competitor files a patent application on a similar invention before the client. The United States used to be a first to invent jurisdiction, meaning that if a client could prove they invented an invention before a competitor they could still be granted a patent, but as of September 2012 the United States changed to a first to disclose requirement. This means that the first person to file a patent application with the United States Patent an Trademark Office will prevent other people from being granted a patent on the same invention.

After the patent application has been completed the patent attorney will file the patent application with the United States Patent an Trademark Office. The United States Patent and Trademark Office will assign a patent examiner to review the application and perform a prior art search of its own. After the prior art search the patent examiner can offer the applicant a non-binding opinion on the patentability of the invention to allow the applicant to decide how to proceed a an early stage. After the prior art search the examination of the patent application continues to determine whether the patent application meets the requirements for granting a patent.

If the patent examiner determines that patent application does not comply with the requirements for a patent grant, the examiner will issue an Office Action (other jurisdictions might call this an examination report). The office action will detail the examiner’s objections and request that the objections be addressed. The applicant may respond to the examiner’s objections by debating that the application does comply with the requirements for a patent grant, or making amendments to the application to conform with the examiner’s objections. But, if the examiner’s objections are valid and cannot be overcome, the application may be abandoned.

The process of objection and response is repeated until the patent examine deems the patent application can be granted, the applicant abandons the applications, or a hearing is arranged to resolve the matter.

If the examiner and the applicant cannot reach agreement on the examiner’s objections and the examiner rejects the patent application, the applicant may file an appeal asserting that his patent application was wrongly rejected. The applicant must prove that the patent examiner was incorrect in applying the law, interpreting the claims on the patent application, or interpreting and applying of the prior art to the patent application. If the appeal is successful, a patent may be granted based on the patent application, or that the examination of the patent application continue, depending on where the patent application is in the examination process. If the appeal is not successfully the rejection of the patent application may be upheld.

After the patent application has been granted, there are two instances where the patent might be reexamined by the patent office. Reissue – is when the patent applicant wants to correct a mistake in the granted patent, only the patent holder may request a reissue. Reexamination – is when there is a substantiation new question as to the patentability of an invention, any individual may request a reexamination of a patent.