Patent Attorney and Founder
Patent Prosecution is a fancy-sounding term that really just means the process for getting a patent.
“Patent Protected” is what inventors seek, and with good reason. It grants exclusive rights to an inventor (or co-inventors) to make, use, sell, and import their invention for 15 or 20 years (depending on the type of patent).
“Prosecution” is a bit more ambiguous and legal-ish. When I heard “prosecution” for the first time (and even still today) I get an image of a classic attorney in trial speaking before a jury. Kind of like a criminal prosecutor, right? Perry Mason and the whole bit?
So, we’re going to look past the first definition (which is like the above), and use the second form of its definition (at least per the Oxford dictionary). “The continuation of a course of action with a view to its completion”. Ah, that’s better.
So… what “course of action”? What are we “completing”?
Well, in this case, it means to guide an inventor through the course of action (the patent process at the USPTO) with the goal of “completing” the process: acquiring a patent!
Ok, so now you understand fully what “patent prosecution” means (at least how it is properly defined). So, let’s look a bit deeper so you can appreciate the steps within the process and some of the best practices along the way.
Pre-Filing Considerations
Before prosecution starts, it is very wise to begin by doing some diligence first. Figuring out if your invention is even eligible is the first order of business. Next, you’ve got to determine patentability. This is made up of confirming that your invention is novel, non-obvious, and has utility.
Another consideration is whether to keep your innovation as a trade secret within your own company or to seek patent protection. This decision will be one to make with the advice of a patent attorney, and it largely depends on how difficult your invention is (once sold) to reverse-engineer. If it’s easily reverse-engineered, then you should seek patent protection. If not, then you may be able to keep it in-house as a trade secret.
To actually do the search, you’ll want to seek the advice of a USPTO Registered Patent Attorney who will help you perform a professional search and give you an opinion on the scope of rights you could prospectively get if you were to go through with the patent application. The attorney can advise you on the merits of filing and enforcing your rights in court.
Your Patent Attorney will also help guide you toward filing either a design, plant, provisional, or non-provisional patent application. There are many different types of claim structures to think about as well, and it’s best left to a professional to make sure you’re protected completely.
Filing a Patent Application
After getting sound advice on your invention’s patentability, now it’s time to file your patent application. Assuming you’re looking to protect rights in the US, you’ll want to file with the USPTO. Again, however, I strongly recommend you seek the counsel of a patent attorney and have the law firm file and docket the case.
The type of application is important to know as well. There are the following types of patent applications to choose from:
Utility Patent Application: This protects the FUNCTIONALITY of the invention
- Provisional: A less formal version of the non-provisional and allows the priority date to be set. It doesn’t require as much rigor/formality with the specification/drawings
- Non-Provisional: Formal application for submittal that does require formality in specification, drawings and set of numbered claims
- Divisional: This is when an examiner believes there to be more than one invention on an initial application – you split off one invention from the parent
- Continuation: When a new claim set is chosen that captures come or all-new subject matter than was originally filed in the parent application
Design Patent Application: This protects the 3D APPEARANCE of the invention
- Divisional: This is when an examiner believes there to be more than one invention on an initial application – you split off one invention from the parent
- Continuation: When a new claim set is chosen that captures come or all-new subject matter than was originally filed in the parent application
Plant Patent Application: Protects a living growing plant/organism as a species
- Non-Provisional Plant Patent Application: Everything in the Utility Patent application except it must include a complete botanical description which usually requires chemical formula and modeling. Formal application for submittal does require formality in specification, drawings and set of numbered claims
- Divisional: This is when an examiner believes there to be more than one invention on an initial application – you split off one invention from the parent
- Continuation: When a new claim set is chosen that captures come or all-new subject matter than was originally filed in the parent application
Special Requests at Time of Filing
There are MANY different ways to make a patent application “special” and change the process or flow/timing of the application as it goes through or is prosecuted at the USPTO.
Yes, there is a “SPECIAL” status! This means that you get to the front of the line in prosecution!
In order to get a “Special” status, You can make an application special for the following reasons (see screenshot below as excerpt from 708.01 or 37 CFR 1.102):
- You can pay a fee to see if your petition will be granted if you argue that your invention is “deemed to be of particular importance to some branch of the public service…”
- There is NO FEE for submitting a petition to make special for the following reasons:
- The applicant is over the age of 65
- The applicant has a terminal illness
- The invention will enhance the quality of the environment
- The invention will contribute to the development or conservation of energy resources
- The invention will contribute to countering terrorism
There is a more complete list of the possible rationale for making special below:
There is also a way to simply PAY for an expedited examination if you do not qualify or wish to pursue a petition to make the patent application special.
There is the Track I program, which strives to get to a FINAL disposition (allowed or finally rejected) within 12 months! Most patent applications take between 18-24 months to get through prosecution, and some are well beyond that.
In addition to expediting or making special, you can and should consider seriously whether to file internationally using the Patent Cooperation Treaty (PCT) process. This process allows you extra time in order to prosecute your patent application in several of the 100+ countries that have signed onto the treaty.
As with most of my recommendations and steps here, you’re going to be in the best position to assure your rights are maintained and protected if you have hired a registered patent attorney. This is especially the case if you’re seeking rights overseas as you’re going to want to have a trusted professional to help be your liaison between the various country’s offices.
Now… back to the USPTO!
Formalities Review
So, once you’ve decided what application to file and whether to submit any special requests, petitions, expedited programs, or international filings, you now have to WAIT! Woohoo!
I know… waiting can be hard. But just know that there is a process by which the USPTO will handle your patent application once submitted.
The first step is the “Formalities Review”. This assures that you have submitted ALL of the paperwork necessary in order to meet the requirements for the type of application you’ve submitted. For example, the following is a list of all of the documents that are required in order to complete a utility non-provisional patent application:
- Utility Patent Application Transmittal Form or Transmittal Letter
- Appropriate Fees
- Application Data Sheet (see 37 CFR § 1.76)
- Specification
- Claims
- Drawings (when necessary)
- Executed Oath or Declaration
- Nucleotide and Amino Acid Sequence Listing (when necessary)
- Large Tables or Computer Listings (when necessary)
If you do not submit one of these items, the formalities review will fail, and you’ll get either a “Notice of Missing Parts” or “Notice of Incomplete Application” as a result. These notices will vary and it’s important to note whether you have been granted a filing date or not. The filing date is what will secure the inventor’s place in line should another inventor file the same/similar invention later.
Here’s an example (you’re going to want to pay attention to the red-circled areas to make sure you appreciate the deadlines involved in properly and promptly responding):
The Filing Receipt
This is the notification to the inventor that the patent application has officially been received and the filing date is SET. This means that the invention is PATENT PENDING!
Below is an example of a filing receipt:
Assignment of Class/Subclass
There are MANY classifications within the USPTO. Each invention gets assigned into one class and a sub-class based on its subject matter. There are three different classification systems: Cooperative Patent Classification (CPC), United States Patent Classification (USPC), and International Patent Classification (IPC).
YIKES! We need a classification system for all of the classifications systems… I kid. Ok, so this is fairly technical, and the classes and sub-classes are very specific and require a careful read through each invention.
The USPTO will decide which class is the best through the 9 CPC listings.
YES – you read that right, over 250,000 classification entries!
Technology Center Dockets Case to Examiner
What’s a technology center? Well, there are groupings of examiners within certain subjects, and they are called technology centers or “art units” once you get to a specific enough sub-group. Once an invention has been assigned a specific classification, it is also assigned into a technology center or art unit.
Each technology center has sub-groups. An example is the highlighted Technology Center 1600 (which, once clicked, opens up all of the sub-groups and the various directors responsible for the sub-groups/art units).
Finally, after clicking “1620” you can see the various ART UNITS that are associated with that major sub-group. As you will see below, each art unit will have a Supervisory Patent Examiner (SPE) identified. Depending on the volume of inventions for each art unit, there will be several patent examiners assigned to each art unit.
Publishes Patent Application
The patent application, even if still pending, will be published after 18 months from the priority date. This means that if you filed a nonprovisional and it doesn’t claim priority back to a provisional or earlier filing date, then 18 months after filing, the application in his entirety will be published and the entire prosecution history will be available for public viewing on the PUBLIC Patent Application Information Retrieval (PAIR) system.
Note, for applications that are not public yet, the attorney and their inventor may access the PRIVATE PAIR system to see the updated status and interact with the examiner.
The actual publication is from the Official Gazzette, a journal that publishes both published and issued patents. Once a patent application is published, it is assigned a publication number. You can tell a publication number because it starts with the year, such as 2019. Below is a picture of a publication, showing “US 2013/0141419A1” for the “Augmented Reality with Realistic Occlusion”. It is not an issued patent and is still pending.
Once published, in order to see more about this invention, you can go to the Public PAIR website, and enter in this publication number as shown below to access the “file wrapper” and see ALL of the interaction thus far with the patent office and examiner.
Once you enter in the publication number, (which you actually have to type in as “US 2013-0141419 A1” with the spaces and dashes as shown), you’ll get this view below and see a LOT of information about the publication (examiner’s name, art unit, class/sub-class, and inventor information). Then, you can go into the “Image File Wrapper” to see the interaction and prosecution history.
Just showing a little of the file wrapper (it goes for over 50 lines by the way), you can see the path the inventor (and their attorney) has taken so far. In this case, as you can see below, the application was filed on 12/1/2011 and they didn’t hear back from the examiner (via a Non-Final Rejection) until 9/27/2013! That’s almost 2 years.
Examiner Conducts Substantive Examination
As you can see in the above screenshot, the examiner, after reviewing the invention in full detail, conducts their own search and examines the invention for patentability. The examiner is required to provide a LOT of information regarding if/when they make a decision on whether to “REJECT” or “ALLOW” a patent application. As shown in the example, on 9/27/2013, the examiner included the following:
- Bibliographic Data Sheet
- Search Information including classification, databases and other Search Notes
- Examiner’s search strategy and results
- Index of Claims
- List of References cited by the applicant (inventor)
- List of References cited by the examiner
- A “Rejection” (either Final or Non-Final)
Examiner Notifies Applicant via Office Action
The last item in the list is also called an “Office Action”, and this is always sent to the inventor and their attorney via e-mail or hard copy and requires a response within a statutory period of 5-6 months. Here is what an office action looks like:
The red highlights showcase some important areas of an office action that should be paid special attention to, including the mail date, the period for reply (3 months, extendable up to to 6 months – see green highlight), and the other areas about whether its a final or non-final rejection, how many claims are rejected, and whether the drawings are accepted or objected to.
Inventor/Attorney Replies with Argument/Amendments
For every office action, there is a required response. As you saw above, there is a time period of 3 months that was given to the inventor/attorney to fully respond to the examiner’s rejection of claims 1-20. This time period is extendable for up to 6 months, but they have to pay extension fees if they wait that long.
The types of responses vary so much because the inventor/attorney can come up with amendments or legal arguments to try to convince the examiner that the invention should be “allowed” and not “rejected”.
This work is called an “Office Action Response”. Note that for most inventions, it is a careful dance that you do with the examiner, and the extent to which you argue with the examiner or amendments will mean a higher or lower risk of a subsequent office action.
Please see the patent prosecution flowchart which shows a typical back and forth (with office action 1, 2, and 3) as well as a “Request for Continued Examination” which is required after a Final Office Action. No, “Final” doesn’t really mean “final”. 🙂
Examiner Considers Allowance of Patent Application
Once an examiner has received the Office Action Response and it adequately addresses their concerns, they will make a determination as to whether to “ALLOW” the patent to be issued and rights to be granted.
If the examiner decides to reject the invention, the process starts over again, and another office action is sent and must be responded to with an Office Action Response. You can see in the flowchart above, there are THREE noted rejections.
This is pretty common, so don’t get too worried if it happens to you. And the harder you argue and push for the biggest scope of rights, the more office actions you’ll get.
Once you get the patent application “ALLOWED”, you should CELEBRATE! This is the END of a long journey, and, for those inventions that make it this far, a ribbon copy is sent to them.
In Summary
Hopefully, the word “prosecution” feels a little less scary to you now and you’re more comfortable in pursuing a patent for your unique invention!
To recap, here are the big steps in the process:
- Pre-Filing Considerations
- Filing a Patent Application
- Special Requests at Time of Filing
- Formalities Review
- Filing Receipt
- Assignment of Class/Subclass
- Technology Center Dockets Case to Examiner
- Publishes Patent Application
- Examiner Conducts Substantive Examination
- Examiner Notifies Applicant via Office Action
- Inventor/Attorney Replies with Argument/Amendments
- Examiner Considers Allowance of Patent Application
Now it’s time to secure your patent attorney and embark on this adventure yourself! Someday, you might find yourself amongst the countless other inventors who can proudly display their patent and turn their ideas into reality. Do you feel ready for patent prosecution?
Legal Note: This blog article does not constitute as legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.