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What is patent prosecution?

If you’ve looked into the patenting process, you’ve probably seen the term “patent prosecution.” What is it, and what are the steps in getting a patent? Here’s a brief explanation.

What is “patent prosecution”?

In the patent world, the term “prosecution” refers to the entire patent process, from the drafting of the patent application until it is allowed and issued, or finally rejected, by the USPTO. You may hear someone refer to the fact he/she is “prosecuting a patent before the USPTO.”

What are the steps in getting a patent?

Typically, a patent attorney works closely with the inventor(s) to define the invention, making sure it meets the requirements for patentability, and determining the best mode for practicing the invention. The attorney may conduct a prior art search and then prepares and files the application in the required USPTO format.

After a patent application is submitted to the USPTO, it receives a serial number and is reviewed initially to identify any defects relating to the declaration, drawings, nucleic acid or protein sequence submissions, or other formal matters. After any informalities are corrected, the application is assigned to a patent examiner for review. The examiner reviews the claims of the application and issues a first “Office Action,” which may take one of various forms.

For example, the first Office Action may be a “Restriction Requirement” if the examiner determines the application claims more than one invention. In response, an applicant may object to the Restriction Requirement, but must elect claims related to one of the inventions identified by the examiner for further examination.

The examiner then reviews the elected claims and issues the next Office Action, which evaluates the claims in view of the prior art and the supporting description in the application. The Office Action usually contains rejections of some or all of the claims based on the examiner’s view of the prior art and/or any perceived lack of written description or enablement for the claims in the specification. It is rare for all the claims to be initially allowed as filed.

What typically follows are one or more exchanges of written communications—responses and further Office Actions—during which the applicant can amend the claims and submit arguments to support patentability. An applicant can also schedule an interview with the examiner, either by telephone or in person, to explain the invention and address the rejections made by the examiner. The USPTO will consider a limited number of responses and may or may not modify its position with respect to all or a subset of the claims. These responses are typically prepared and filed by the attorney after consultation with the inventor(s). A patent is issued if the claims are found allowable and the applicant pays the required fee.

What if the USPTO rejects my patent application?

If you receive a final rejection, you can appeal to the Patent Office Board of Appeals, a three-member board that reviews the examiner’s decision and considers arguments in favor of patentability. If that decision is adverse, you can appeal to the Court of Appeals for the Federal Circuit (the federal appeals court that hears all intellectual property cases) or to a US district court. After a final rejection from the USPTO, you can also elect to continue prosecution by using different approaches.

If only some of my claims are allowed, can I pursue others?

Yes, you can obtain a patent on a subset of claims that are allowed and pursue rejected claims in a related later-filed application, provided it is filed before the allowed claims issue. The later-filed application is referred to as either a divisional or a continuation of the initial application.

Interested in learning more? Visit our patent page.