What is Patent Prosecution?

What is Patent Prosecution?

Patent prosecution is the process by which inventions embodied in a technical description are matured into a patent before a competent jurisdiction.  In the United States of America the competent jurisdiction is at the Federal level and is known as the United States Patent and Trademark Office (USPTO).  The term ‘patent prosecution’ whilst implying litigation does not normally signify prosecution before a court.  On the contrary, the prosecution of the specific innovation in the aforementioned technical description is conducted before a US Patent Examiner who has a quasi-judicial status whilst working within the US Executive Branch.  Thus, if you want someone to file a patent application and have it approved at the USPTO you are looking for a patent prosecutor not a litigator.  A patent litigator would be someone to defend your patent rights in an infringement of your patent or if you have infringed someone’s rights.  Patent Attorney and Patent Agents are both licensed to practice prosecution before the USPTO and have typically passed a rigorous examination process themselves to be registered thereby.

What Steps are Involved in Patent Prosecution

Typically an inventor or group of inventors approaches a patent practitioner  (a patent agent or patent attorney) in order to start the process.  Depending on their background knowledge level they can choose to order a patent search or bypass the search altogether and proceed forward to the writing of the patent itself.  Conducting a search is a good choice in the event that they are unsure that prior art exists that might be used against you.  On the other hand, avoiding a background search is possible in the event that you have such cutting edge technology that no one is likely to have created a similar product.

Adequate Written Description & Enabling Disclosure

A good patent practitioner will write the patent application such that the inventive novelties are disclosed in such a fashion that they provide both 1) an adequate written description thereof and an 2) enabling disclosure.  Whilst it would seem that these are synonymous, this is not the case so that a description that is adequately described is not necessarily an enabling disclosure.  It should be understood that to make an enabling disclosure the applicant must provide sufficient support to enable one of ordinary skill in the art to make and or use the invention.  An adequate description, however, must show that the inventor actually had possession of the invention when filed.   As an example of this problem, when an applicant amends the claims, the original specification is silent as to several things that are newly introduced into the claims leading the examiner to conclude that the applicant did not fully describe his or her invention at the outset.  There are many other instanced such when the original claims have no correlation between the structure and the function of an invention yielding an inadequately described invention; however, even with this problem the specification may yet be enabling.

Filing the Patent Application

Your patent attorney or patent agent will complete the disclosure of the invention in what is known as a specification.  The specification is a description in writing that has accompanying drawings that describes all facets of the concepts you are trying to protect. At this point, the final paperwork will be completed including but not limited to Power of Attorney documents, Declaration (Oath) forms, and other forms for the filing.  If you have a previously filed provisional applications please file your non-provisional application before the provisional application expires to ensure you have the benefit of the provisional application.  Then, the application is filed using the secure encrypted Patent Application Information Retrieval System otherwise known as PAIR.  And then the waiting game begins.

Responding to the Patent Examiner

Once a good deal of time passes typically a year or more, the patent examiner will act on your case and send you either of 1) an allowance or 2) a rejection on various grounds that could cover each and every part of your case.  The examiner will attempt to reject your application on what is known as A) anticipation (102) or B) obviousness (103).  Anticipation means that your invention existed in the public domain before you file it whilst obviousness means quite literally that your invention is obvious in view of what already exists.

You then have an opportunity to respond to the various problems that are allegedly found in the specification and drawings.  Negotiation skills are key here because patent examiners run the full gamut of personalities and personal foibles found in any organization.  These can range from the happy go lucky sort that wants to accommodate all your needs and will try to get you a patent to the strict business examiner who is going straight by the book to the crazed you are not getting a patent from me no matter what.  Yes, this latter type exists and I have had the unfortunate experience to run across them once in a while.  Being a former examiner, I was more middle of the road.  I hope this helped you.