What Is Patent Prosecution?

Patent prosecution is the legal right to protect your intellectual property. In a legal sense, the phrase "patent prosecution" typically refers to the plaintiff's side of a patent-related lawsuit. But when looking at patent law as a whole, patent prosecution usually refers to the process of obtaining patent protection on an idea, invention, design, or plant. If a patent holder is looking to take legal action against someone who infringed on his patent, he would seek a litigator who specializes in patent law. But when going through the process of patent prosecution, or applying for a patent, you would want to look for a patent lawyer.

Patent prosecution includes several steps:

  • Developing a strategy for intellectual property protection.
  • Developing claims that define your invention.
  • Preparing patent applications to submit to the United States Patent and Trademark Office (USPTO).
  • Creating drawings and images to the USPTO specifications of the design or invention.
  • Filing patent applications with the USPTO.
  • Arguing your claims that your invention or design is eligible for patent protection.

When working with an attorney for patent prosecution, you must find one that holds a license to practice law in your state as well as a license to practice law in front of the patent office.

The first step in patent prosecution occurs when you file an application with the USPTO, or your attorney files it on your behalf. The waiting period is about 24 months for most patent applications, after which the application will be assigned to a reviewer.

The examining stage is a very important part of the patent prosecution process. The examiner and the applicant will typically go back and forth for a while to determine whether the claims are accurate and how much property the applicant owns. Your patent reviewer will also perform an extensive search of prior art to make sure your application doesn't violate patent terms.

The reviewer will either agree with your claims, thus approving your patent application, or deny the claims that your idea is patentable. If your application is rejected, the next step in patent prosecution is filing an appeal. If you don't want to fight the denial, you can resign the case, but you will not receive patent protection. You can also request for reconsideration of your case, file an appeal of the final rejection, or request a continued examination to extend the examination period.

You may choose to file a provisional patent application as your first step in patent prosecution. This application allows you to extend the deadline for filing for patent protection on your idea. The deadline for a non-provisional patent is 12 months from the introduction of your idea in a public setting. But filing a provisional application gives you another 12 months to prepare your non-provisional application. If you don't submit within that time frame, you could lose the opportunity to continue the patent prosecution process.

Patent Prosecution Highway Pilot Program

The Patent Prosecution Highway pilot program is offered to certain applications on the national level. Qualifying for the program requires the Office of First Filing to rule that one or more claims in the application are patentable. In order to meet that criteria, the application must go through pre-exam processing. Before going to examination, the applicant can request that it go to the Office of Second Filing for accelerated processing.

The purpose of the program is to reduce duplicate searches and reviews performed by USPTO officials since the workload can be shared between multiple offices in the review process. Both the Office of First Filing and Office of Second Filing partner with other countries, including Australia, Korea, Canada, Japan, Denmark, Singapore, Finland, Hungary, Germany, and the United Kingdom.

One of the benefits of this program is faster processing since the applicant should receive approval or rejection within two months of his or her request. Some applicants receive approval within just two to 15 days. Examiners can work quickly by reusing search and examination results, such as allowances and reports. The cost of participating in the Patent Prosecution Highway program is also less since it doesn't require a filing fee. The overall expense of patent prosecution is lower as well.

Participation in the Patent Prosecution Highway program does not guarantee approval of your application. But the success rate is higher: about 98 percent of applications submitted through the program are approved.

In order to participate, applicants must file:

  • A request for participation in the program, which will include a request to advance the application for examination out of turn.
  • A copy of the office action issued before the "Decision to Grant a Patent" was made.
  • A claims correspondence table that certifies all claims made correspond to patentable claims in the application.
  • An information disclosure statement that lists all documents included.

All documents must be in English.

The United Kingdom has its own fast track system, which is not part of the Patent Prosecution Highway Pilot program. It does allow applicants in the U.K. to request accelerated examination on applications that have received positive International Preliminary Reports on Patentability. The reports can be under either Chapter I or Chapter II and come from any authority. On June 8, 2012, the U.K. relaxed the system slightly to allow an applicant to change a submitted international application and still qualify for accelerated review.

Why Is Patent Prosecution Important?

Understanding every necessary step of patent prosecution is important for anyone who is considering applying for patent protection on an idea. The process of getting approval can take years, and there are significant fees associated with the applications. When you have a better understanding of what is required, you will know how to plan for the process and what to expect in terms of timeline and cost.

Working with an attorney who understands patent prosecution can simplify the process drastically. Your lawyer will help you fill out forms correctly and may even have contacts who can handle the specific drawings required for applications. Any correspondence from the USPTO and your assigned reviewer will go through your attorney, so you don't have to argue with the reviewer about your claims or decode confusing legal jargon.

Reasons to Consider Not Using Patent Prosecution

You might decide not to move forward in the patent prosecution process because it is so expensive and time-consuming. First-time inventors may not have enough money to pay the fees or hire a lawyer for assistance in filing for patent protection.

If you perform a search of existing patents and find that your idea is similar to another patented idea, you will most likely not qualify for patent protection. Going through patent prosecution is not worth your time or money because the USPTO will search through patents as part of the review process. 

Another reason you might not go through the patent prosecution process is if your idea includes more than one invention. In this case, you would need to submit separate applications for each invention. If the additional applications are submitted while the original application is in a pending status, they would be called "divisional applications" and fall under the original filing date.

It is very likely that the first application for a patent will be rejected. In fact, more than 85 percent of patent applications are rejected as the first office action. But over half of the patent applications submitted eventually are approved. If you want to continue to fight for patent protection, you have the legal right to do so. Some applicants will take the rejection and abandon the application, while others will adjust their claims and modify their patent requests until they can receive protection.

Another option after rejection is filing an appeal with the Patent Trial and Appeal Board (PTAB). In order to do so, you will need to submit a Notice of Appeal, a brief to support your position, and the required appeal fee. The PTAB may hold an oral hearing, but it typically takes several years to receive a decision.

If the PTAB rejects your appeal, you can file another appeal with the Court of Appeals for the Federal Circuit or take civil action against the Commissioner in the United States District Court for the District of Columbia. In the Court of Appeals for the Federal Circuit, a judge will review the record and either affirm or reverse the denial. If you take civil action, you may have to testify in court, and that court will make a decision. 

Instead of filing an appeal, you can request continued prosecution of the patent application by the patent examiner. This option requires you to submit a request for continued examination and your response to the final action from the USPTO. The USPTO will evaluated your application again and can either approve the patent or issue another office action. Some applicants choose to continue filing for continued prosecution multiple times to get an approved patent.

Reasons to Consider Using Patent Prosecution

Going through patent prosecution gives you the opportunity to protect your intellectual property and take legal action against anyone who tries to copy your ideas or designs. If you have an idea that meets all of the necessary criteria for a patent, it is worth pursuing patent prosecution to protect your interests.

When going through the process of patent prosecution, you must be careful not to make your claims too broad. Many patent applicants struggle to achieve broad protection, yet create narrow claims that will distinguish the invention or design from prior art.

All claims made during patent prosecution are binding on the application. The applicant no longer has the right to argue for certain specifics of the invention or design if he or she has made different claims about the function or appearance in patent prosecution. This is referred to as "prosecution disclaimer."

Deadlines

The deadline to begin patent prosecution is 12 months from the first introduction of your idea or design to the public. If you don't file an application, either provisional or non-provisional, in that time, you will likely lose the chance to file for patent protection on that idea. 

Most notices and responses from the USPTO examiner come with six-month deadlines, so the applicant or representing lawyer must respond within that time to avoid having to abandon the application.

What Could Happen When You Use Patent Prosecution?

When you begin the patent prosecution process, you should expect to wait months or years to receive a response. Most applications don't go in front of a reviewer for two years. But as soon as you begin the process, you can start using "patent pending" on your product or design to alert the public that you are seeking a patent.

You can only use the patent pending status when you have an application on file with the USPTO. If you submit a provisional patent, you may refer to the patent pending status. But if you don't file a non-provisional patent application within the 12-month time frame, you no longer have a patent application pending with the USPTO, and you cannot use that term on your product or materials.

If your patent is approved, you can take advantage of the legal protections that come from going through patent prosecution. You can take legal action against anyone who infringes on your patent and sue for damages to recoup funds lost as a result of the infringement. Patent holders also can license their ideas to other companies or individuals to make additional income.

What Could Happen When Don't You Use Patent Prosecution?

Without going through patent prosecution, your idea will not have any legal protection. Anyone can copy your design or invention without legal risks. You also will not own the rights to profit from the idea.

Frequently Asked Questions

  • How long does patent prosecution take?

Patent prosecution often takes several years. Most applications won't go into the review process for 18-24 months, and the review can last for several months as you go back and forth with your reviewer on claims and provide additional information.

  • What is the difference between patent prosecution and patent litigation?

Patent prosecution is the process of applying for a design, plant, or utility patent. Patent litigation is the legal action you can take against someone who violates the terms of your approved patent.  

  • At what point in the patent prosecution process can I begin using "patent pending" on my product and materials?

As soon as you have submitted an application to the USPTO, you can begin referring to your product as patent pending. The only exception to this is if you have submitted a provisional patent application but don't file a nonprovisional patent application within the required 12-month time frame. As long as you have a valid application on file with the USPTO, you can refer to your product as patent pending.

Steps to File

In order to begin the process of patent prosecution, you must determine the type of patent for which your invention might qualify. The options are plant, design, and utility. Plant patents only cover new plant species, while design patents are issued to protect the new and novel design of an existing product. If you want to protect the function or construction of your idea, a utility patent will cover those aspects.

When you submit the correct application for your patent, you have taken the first step to patent prosecution. The next steps include responding to any requests from your examiner and waiting for approval or rejection.

If you need help with patent prosecution, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.