Patent Prosecution


Patent prosecution, also known as patent procurement or preparation and prosecution, refers to the filing of patent applications with a patent office, and the subsequent actions undertaken for the procurement of letters patent based on such applications (as well as various post-procurement activities such as obtaining certificates of correction, or filing for reissue or reexamination based on an issued patent). Such practice typically includes conducting ex parte proceedings before the patent office, and in a general sense may also refer to the pre-filing preparation of patent applications (although in a strict sense, the preparation of patent applications prior to filing is not practice before the patent office).

Patentable subject matter

Although patents are typically associated with legal protection for inventions of novel machines, processes or materials, the protection granted by patent offices for these types of inventions-termed "utility patents"-are not the only type of patent protection granted by various jurisdictions. Some patent offices also issue letters patent for new and useful asexually reproducing plants, newly discovered sequences of DNA, or industrial designs (such as microchip layouts). In the United States, for example, protection is also granted for novel ornamental designs (devoid of any substantial functionality) in the form of a design patent.

Patent agents and attorneys

In some jurisdictions, such as Germany, Japan and the United States of America, practitioners who represent inventors or other applicants before the patent office must be authorized by the patent office or other sanctioning body, often being required to demonstrate their sufficient knowledge of patent law by passing an examination (see also patent bar). In Germany, Japan and the United States, for example, such practitioners need not necessarily be lawyers (and indeed although general lawyers may also qualify as patent practitioners by passing the patent bar in those jurisdictions, merely holding a license to practice law as a lawyer is insufficient to practice before the patent office without also being licensed by the particular patent office in question). Practitioners are referred to as a patentrechtsanwalt in Germany, benrishi in Japan, and patent attorney or patent agent in the United States.

Procurement process

The process of procuring a patent begins with preparation of the application; which is followed by a period of pendency before the patent office during which time the patent office may issue rejections of the application; and then concludes with either a successfully convincing response to any such rejections, an appeal of the rejections, or abandonment of the application by the applicant.

Preparation of an application

In obtaining patent rights for an inventor, the practitioner first drafts an application typically by interviewing the inventor to understand the nature of the invention and help clarify novel features (and often to ascertain what is already known to people familiar with the general field of the invention-such already-known material is termed the prior art), and to obtain drawings and written notes regarding the features of the invention and the background. During this initial phase, termed "patent preparation", the practitioner may also seek to determine precisely who contributed to the making of the invention (because an incorrect listing of inventors may incurably invalidate any patent that might result from an application), and to find out whether any publications, offers for sale, or other such public disclosures of the invention were made. These issues are important because under certain circumstances, public disclosures or offers to sell an invention prior to filing an application for a patent may prevent or the issuance of a patent for the invention, under the laws or regulations of some jurisdictions (in the United States, the laws preventing obtaining patents because of previous disclosures or offers to sell are termed "statutory bars").

After drafting an application for patent, complying with any further rules (such as having the inventor or inventors review the application prior to filing), and obtaining the applicant's permission, the practitioner then files the patent application with the patent office. Usually, the practitioner seeks to file the application as soon as possible, because in a majority of jurisdictions (such as Europe and Japan) if two or more applications for the same subject matter are filed, then only the party who filed first will be entitled to seek a patent (this is known as the "first-to-file rule"). Even in other jurisdictions (such as the United States, which does not follow the "first-to-file rule"), early filing may prevent the use of certain materials from being applied against the patent application as prior art while the patent application is pending before the patent office.

Filing an application

Most patent applications have at least two components, including a general, written description of the invention and at least one "embodiment" of the invention, and a set of "claims" written in a special style and which precisely define exactly what the applicant regards as the particular features of his or her invention. It is these patent claims which are used to distinguish the invention from the existing prior art, and which are compared by the patent office to the prior art before issuing a patent.

Patent applications in most jurisdictions also usually include (and may be required to include) a drawing or set of drawings, to facilitate the understanding of the invention. In some jurisdictions, patent models may also be submitted to demonstrate the operation of the invention. In applications involving genetics, samples of genetic material or DNA sequences may be required.

Search and examination

Once a patent application is filed, in many jurisdictions, the patent office will review the patent application and search the prior art for relevant, already-known materials. If no relevant prior art materials are found which were known or published before the invention was either discovered or filed, then the patent office may issue a patent based on the application. More usually, however, the examiner (an agent of the patent office, whose job is to examine patent applications and direct the patent office's actions regarding them) will discover prior art which, in the professional opinion of the examiner, either completely anticipates every aspect of the patent claims in the application or renders the claims obvious.

Examiners are typically trained in engineering or a scientific field (often holding at least a university-level degree in such discipline, with many examiners holding doctorates in science or engineering), and experienced or senior examiner frequently have extensive knowledge of the "state of the art" in their field, which facilitates the comparison of patent applications to the prior art. In addition, examiners are usually bound by the law of patents and any rules (see, for example, MPEP) promulgated by their respective patent office in the way they examine patent applications; as a result, examiners often gain extensive expertise in patent law, and many attend law school and may become full attorneys.

Invention registration

In some jurisdictions (such as Japan and Korea), however, examination after filing an application is optional rather than automatic, and frequently only a portion of the total number of filed applications are selected for examination by the applicants. Such unexamined application systems are known as "invention registration" regimes, and have the benefit of reduced costs because applicants may postpone or completely forego the expensive process of examination for inventions that bear only minimal value to the applicant's main fields of endeavor, or which later are discovered to be anticipated by prior art. At the same time, simply lodging an application usually preserves the applicant's right to later seek full examination and protection for his or her invention, if a competitor or pirate is later discovered to infringe the applicant's invention.

Office actions and responses

Once the examiner discovers prior art relevant to a patent application, he or she typically issues an "office action" that informs the applicant that the application has been rejected, and details the precise reasons for the rejection and the prior art on which the decision to reject was based. The office action can also reject an application, or prevent issuance of a patent based on the application, based on errors in fact or form (such as spelling mistakes) discovered in the application; these mistakes can usually be corrected by the applicant in a response to the office action.

Usually, the applicant then has the right to respond to the office action, by setting forth the reasons why the applicant believes the rejection to be in error (known as "traversing a rejection") and/or amending (changing) the claims of the application to further distinguish the claims from the prior art cited in the office action.

If the response filed by the applicant convinces the examiner to withdraw his or her rejections, the examiner may then recommend that the patent office issue a patent to the applicant based on the application.


However, if the examiner and the applicant cannot reach agreement regarding the patentability of the application, the applicant may lodge an appeal to either the patent office or to a court of law, asserting that his or her patent application was wrongly rejected. For such an appeal to be successful, the applicant must prove that the patent office was incorrect in its application of the law, in interpreting the claims of the patent application, or in its interpretation and application of the prior art vis a vis the patent application. If the appeal is successful, the patent office or court may order that a patent be issued based on the application, or that the patent office correct its examination of the application if the patent office is found to have been incorrect. Otherwise, if the applicant is not found convincing, the rejection of the patent application may be upheld.


Generally, an applicant is free to abandon his or her patent application at any time, and in many jurisdictions may "disclaim" his or her patent even after the patent is issued. Such abandonment may occur during the prosection process, such as when the applicant is unable to convince the patent office to withdraw a rejection of his or her patent application. Further, abandonment is often held to have occurred if the applicant fails to respond within a certain time period to an office action issued by the patent office, or if the applicant specifically expresses his or her intention to abandon the application.

Following abandonment, in most jurisdictions, an applicant is usually barred from later seeking patent protection for the same subject matter which was earlier abandoned by the applicant.


If the applicant successfully convinces the patent office of the patentability of his or her patent application, the patent office may then issue a patent based on the patent application. The issued patent may be printed on ornate paper or be sealed with ribbons, and in most jurisdictions the possession of an issued patent gives the holder of that patent the right to exclude ( i.e. , the right to prevent anyone else from manufacturing any item using the patented invention or performing a process covered by the patent), unless the patent holder gives permission to use the invention (this permission is termed a "license").

Issued patents are usually valid for a fixed period of time (calculated either from the date the patent application was filed, or from the date the patent was issued) known as a "patent term." The patent term may be subject to "maintenance fees," which must be paid at various times during the patent term in order to maintain the validity of the patent, or to "renewal" which operates in a similar fashion.

Reissue, Reexamination and Interference

Once a patent is issued, in some jurisdictions, the patent holder may request a "reissue" of the patent to correct mistakes in the issued patent. Such "reissue applications" must typically be filed within a particular period of time following issuance of the original patent. In some jurisdictions, such as the United States, the patent holder may even seek to broaden the scope of the invention defined in the claims by filing a reissue application; also, in the United States, only the patent holder may file for reissue.

In United States patent practice, "reexamination" refers to the process of requesting that the patent office once again subject an issued patent to further examination, usually accompanied by newly discovered prior art and/or an explanation of the relevance of the prior art to the claimed invention. Unlike reissue, reexamination may be requested by anyone , not only the patent holder or inventor, although whoever requests reexamination must also submit the fee (which is about equal to the full cost of filing a new patent application). A benefit of reexamination is that issued patents may be either invalidated or once again deemed valid, without the considerable cost and lengthy time required for a full infringement lawsuit or declaratory judgment action.

Also, in the United States, if two patent applications are filed which set forth claims directed to the same subject matter, the patent office may declare an "interference" and require that each of the parties appear before the patent office to determine who was the earliest to discover the claimed invention. This "interference practice" is not followed in most other jurisdictions, because it is obviated by the "first-to-file" system used in most countries. During an interference, parties may submit evidence supporting their contention to be the earliest inventor, and the patent office issues a decision following the trial-like interference process.

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