Patent Prosecution

Patent prosecution is the processing of a patent application through the United States Patent and Trademark Office.  The term encompasses all of the back-and-forth communications, letters, interviews, and actions between the USPTO and the applicant, generally via a patent attorney.

Patent prosecution begins after a patent application is filed.  A USPTO examiner is assigned to the application and will initiate the process.  Very rarely, prosecution proceeds without a hiccup and a patent application is given a notice of allowance, at which time the payment of an issue fee converts the application into a matured patent.  More often, however, prosecution involves communicating with the USPTO and explaining why an application should be issued as a patent.

A number of issues can arise during prosecution.  Frequently, the USPTO will cite prior art against an application and will reject it, stating that the prior art renders the invention non-novel or obvious.  It can also make a number of formal objections to the application, noting errors with the grammar, the formatting, or the logical syntax.  The issues that come during prosecution are varied and large, and can be difficult to overcome.  Applications are frequently abandoned, or their owners are not able to overcome the rejections made.  Having a patent attorney that can effectively argue over the rejections is vital.  Crucial to the ability to make arguments, however, is the strength of the underlying application.  If an application is poorly written, it can be extremely tough to prosecute through to issuance.

Often, the patent attorney that drafted the application will also prosecute.  That is not always the case, however.  Inventors will sometimes switch attorneys mid-stream and use another to prosecute the application.  That decision may be made for a number of reasons.  The attorney with the best likelihood of successfully prosecuting the application should be used.  If you need more information about the patenting process, please contact registered patent attorney Tom Galvani at 602-281-6481