Posted on April 30, 2024
JD: Hey everybody, welcome to the Bold Patents show. I’m JD Houvener, your host and also a patent attorney and owner at Bold Patents Law Firm. Today, we’re diving into an interesting discussion about patent law, specifically focusing on patent prosecution versus patent drafting.
JD: Let’s start by understanding the major difference between patent drafting and patent prosecution. These are two crucial aspects of the patent process that anyone new to the system or even those with some experience can appreciate.
JD: Firstly, patent drafting involves crafting the language of the patent application. It includes the written descriptions, drawings, and the claims that form the core of the application submitted.
JD: To break down patent drafting further, there are three key stages:
- Invention Disclosure: This is where you document in simple terms what your invention is. It serves as the foundation for discussions with your attorney and forms the basis of the patent specification.
- Patentability Search: Conducting a thorough search to assess existing patents and prior art related to your invention. This includes online resources and any information accessible to professionals in your field.
- Drafting: The actual writing process, involving multiple revisions to ensure clarity and completeness in describing your invention and its various aspects.
JD: The second part of the patenting process is patent prosecution, which begins after submission. Here, you engage with the examiner who reviews your application and typically issues initial rejections as part of their gatekeeping role:
- The examiner ensures novelty, meaning your invention is unique worldwide.
- They check for non-obviousness, ensuring your invention isn’t simply an obvious modification of existing ideas.
- They verify utility, confirming your invention has practical use.
JD: During prosecution, you may need to amend claims, provide legal arguments, or even present expert opinions to overcome rejections. This process may involve multiple rounds of interaction with the examiner, aiming ultimately to secure patent approval.
JD: Thanks for that overview. That sums up the basics of patent drafting and patent prosecution.
