Patent Prosecution

The process of applying for, arguing for, and receiving a patent is traditionally referred to as patent prosecution, although most of the activities that occur in patent prosecution occur after the patent examiner reviews the claims, which may be years after the patent application is filed. As the patent examiner reviews the patent application, he or she primarily considers the language of the claims in light of prior art. Under US law, a patent applicant who has properly filed a patent application is entitled to a patent unless certain barring circumstances exist or barring activities have occurred. Barring circumstances mostly relate to prior published patents (i.e., prior art) and may also include other publishings, statements, or activities that may bar the patent application from being granted. Often, the prior art applied include only other patents or publishings.

The patent examiner will reject one or more of the patent claims by deeming them unpatentable in light of the prior art. The reasons for deeming such claims as unpatentable must be set forth in the "office action," the actual written document prepared by the patent examiner and sent to the patent attorney. The office action typically sets a 3-month period for a response. Thus, the inventor and patent attorney should carefully consider the reasons for the rejections and plan a response to be filed within that 3-month period. The rejected claims may be canceled, amended, or maintained along with a written explanation of why they should not have to be changed in order for the patent to be granted.

After a response is filed in response to the patent examiner's office action, the patent examiner must consider the merits of the response, including any new or amended claims, and make a final decision on the status of the claims. The patent examiner may reject all of the claims, allow all of the claims, or allow some of the claims and reject the rest. The patent examiner must make a decision typically no more than 2 months from receiving the patent attorney's response. Thus, patent attorneys and inventors should expect to hear back from patent examiners no more than about 3 months after they have filed the response. Final decisions are forwarded to the patent attorney. If the patent examiner does not allow all of the claims, the patent attorney then may advise the inventor to either continue the prosecution process, take any claims that are allowed, appeal the patent examiner's decision, abandon the patent application, or some combination of the above.

0 0

Post a comment