Patent Prosecution
Patent prosecution entails the process of preparing a patent application that publicly discloses an invention, filing the patent application to a patent office, and working with the patent office to address any issues found in the patent application. Ultimately, the goal of this process for the inventor (who also may be the applicant) is for the patent application to be deemed allowable by the patent office and mature into a patent grant. As simple as that may sound, the journey from conception of the invention to a patent grant can be long and arduous.
Prior to filing the patent application, the applicant should start considering which markets to target. For many markets, the time window to file is one year from the filing of the initial patent application. This time window applies to the five patent offices that handle approximately 80% of the world’s patent application filings: Korean Intellectual Property Office (“KIPO”), European Patent Office (“EPO”), Japan Patent Office (“JPO”), China National Intellectual Property Administration (“CNIPA”), and United States Patent and Trademark Office (“USPTO”). Alternatively, the applicant may decide on filing a Patent Cooperation Treaty (“PCT”) to target multiple markets simultaneously. Filing patent applications in international markets will be covered in subsequent articles. For purposes of simplicity, this discussion will focus on the patent prosecution process for the USPTO.
For filing in the USPTO, the only requirement to establish a filing date is to file a specification that discloses how to make and use the invention. See 37 C.F.R. § 1.53(b) and 35 U.S.C. § 112(a). However, it is advisable that the patent application is filed with detailed drawings and a set of claims to ensure that the contents of the entire disclosure (specification, claims, and drawings) are accorded the initial filing date of the application. It is worth noting that design patent applications require the specification, at least one claim, and any required drawings to establish its filing date. After the patent application is filed, the USPTO will check with certain formalities and then assign the application to a patent examiner (“Examiner”) of an art unit who will substantively examine the application.
The time that it takes for the patent application to reach the Examiner’s desk may be quite long though. Due to the backlog of other patent applications, and depending on the art unit, two to three years may pass before the Examiner substantively examines the patent application. If time is of the essence, the applicant may file a petition to advance the examination of the patent application out of turn. If the petition requirements are met, then the patent application reaches the Examiner’s desk for substantive examination much earlier than the typical two to three year wait period.
If the patent application reaches the Examiner’s desk and the Examiner determines that the claims encompass two or more independent and distinct inventions, then the Examiner will mail a Restriction Requirement to the applicant with instructions to elect one invention. See 37 C.F.R. § 1.142. The applicant responds by electing one invention to proceed with for prosecution while the Examiner considers the remaining claims to be withdrawn (for now). Additionally, the applicant can argue against the Restriction Requirement. Following applicant’s election, the prosecution process can now move towards substantive examination.
During substantive examination of the patent application on the merits, the Examiner examines the patent application to determine if the claims satisfy the statutory requirements for patent eligible subject matter (see 35 U.S.C. § 101) and patentability (see 35 U.S.C. §§ 102-103). Furthermore, the Examiner examines the patent application on matters related to form. For patentability, the Examiner conducts a search to find any prior art references that predate the filing dating of the patent application. If any prior art references are applicable against the claims, then the Examiner may use these references, or a combination thereof, to reject the claims for obviousness and/or lack of novelty. The Examiner will mail the results from this round of substantive examination to the applicant or the applicant’s representative as the first Office Action on the merits. If the Examiner found that the claims passed the statutory requirements, then the Examiner might mail out a Notice of Allowance instead. The Notice of Allowance informs the applicant that the patent application passed substantive examination and that the patent application is ready to be issued as a patent following payment of the issue fee.
The first Office Action on the merits is often a non-final rejection, which means that the Examiner found issues with the patent application during substantive examination and prosecution of the patent application remains open. See 37 C.F.R. § 1.114(b). For example, the Office Action may provide the Examiner’s rationale in making the rejection to the claims. After reviewing the Office Action, the applicant may decide to set up a formal Examiner Interview to talk to the Examiner and articulate why the rejections to the claims were improper in light of the prior art references. Alternatively, the applicant may respond to these issues in a Response that argues against the rejections, often together with proposed amendments to the claims that may overcome their respective rejections. If the applicant determines that the prior art used in the rejections is insurmountable, then the applicant may decide not to do anything, which will result in the abandonment of the patent application after passage of the statutory period for the response. If the Examiner agrees with the applicant’s arguments, then the Examiner will likely send out the applicant a Notice of Allowance. However, if the Examiner disagrees with the applicant, then the Examiner will mail out a second Office Action on the merits, which often is a final rejection. A final rejection indicates that the prosecution of the patent application is closed. See 37 C.F.R. § 1.114(b). Not all is lost however, as the applicant has several options: Answer a final rejection (limited), appeal the Examiner’s rejection to the Patent Trial and Appeal Board (“PTAB”), participate in the After Final Consideration Pilot Program (“AFCP”), or reopen prosecution of the patent application under a Request for Continued Prosecution (“RCE”).
As one can see, patent prosecution can be smooth sailing with a quick Notice of Allowance or it can turn into choppy waters. To safely navigate through this process, it is advisable that an applicant consults with a patent professional as early in the process as possible. With that in mind, please feel free to contact us to discuss the patent prosecution process with regards to your invention.
Disclaimer: This post is for general information only, and thus does not serve or represent any legal advice. No attorney-client relationship is formed.
