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By J.D. Houvener
Patent Attorney and Founder

For inventors and businesses, protecting intellectual property is paramount. However, the complex maze of patent law, specifically the patent prosecution process, can seem overwhelming. A clear understanding of this application process is vital as it can provide the line of defense between safeguarding an invention and leaving it vulnerable to infringement.

What Is Patent Prosecution?

Patent prosecution refers to the process of interacting with the patent office to establish and maintain the legal protection of an invention. This involves drafting and submitting a patent application, responding to inquiries or rejections from the patent examiner, and eventually obtaining a granted patent. Unlike patent litigation, which involves legal disputes over patent infringement, patent prosecution is a negotiation between an applicant and the patent office to define the scope of protection afforded by a patent.

Patent prosecution holds significant importance as it is the primary process by which inventors and businesses secure exclusive rights to their inventions. Through successful patent prosecution, inventors can protect their novel and non-obvious inventions, thereby deterring others from using, making, or selling their patented innovations without consent. Moreover, having a granted patent increases the market value of the innovation and provides a competitive advantage, potentially attracting investors or licensing opportunities.

Steps in Patent Prosecution

  • Drafting and Filing the Patent Application: This is the initial step in which a comprehensive document detailing the invention is prepared. The application should include a written description of the invention, claims that define the legal boundaries of the invention, and often, diagrams to help illustrate the concept. The complexity of the invention and the application may necessitate the assistance of a patent attorney.
  • Examination by the Patent Office: After submission, the application is reviewed by a patent examiner. The examiner checks for completeness, assesses the invention’s novelty, non-obviousness, and utility, and compares it with existing patents and public knowledge. This process may take several years depending on the patent office and the technology involved.
  • Responding to Office Actions: If the patent examiner identifies issues with the application, they will issue an “Office Action”. This document outlines the problems or objections with the application, which may relate to the form, substance, or both. The applicant then has a chance to respond, typically by arguing against the examiner’s rejections or amending the claims.
  • Arguing for the Novelty and Non-obviousness: This is a crucial step where the applicant needs to convincingly argue that their invention is not only novel, but also non-obvious when compared to the prior art (previous inventions or knowledge). The applicant needs to persuade the examiner that a person with ordinary skills in the field would not find the invention obvious.
  • Payment of Issue and Maintenance Fees: Once a patent application is approved, the applicant must pay an issue fee to have the patent granted. Further, maintenance fees may be periodically required to keep the patent in force. Failure to pay these fees can result in the patent expiring before the end of its maximum term.
  • Potential for Appeals or Continuation Applications: If the applicant disagrees with the final decision of the examiner, they may appeal to a higher authority within the patent office. Alternatively, the applicant might choose to file a continuation application to pursue additional claims based on the original application. These options provide additional chances to secure broader or more suitable patent protection.

Role of a Patent Attorney in Patent Prosecution

A patent attorney serves a pivotal role in patent prosecution, aiding inventors and businesses through their extensive knowledge of both technology and law. From crafting a legally sound and technically accurate patent application to formulating responses to Office Actions, their expertise is vital. They ensure the patent claims are drafted in a manner that optimizes protection scope and reduces potential hurdles during the examination. 

Beyond the initial application, they interpret objections from patent examiners, advise strategically on decisions around potential appeals or continuation applications, and help clients navigate the complex landscape of patent law. Through their guidance, the chances of securing a robust and enforceable patent are significantly improved.

Bold Patents Can Help You With Your Patent Prosecution

Understanding and navigating the intricate process of patent prosecution is no small task, but it is a crucial step towards protecting your innovative ideas. A seasoned patent attorney can make this journey not only more manageable, but also more successful, enhancing the chances of obtaining a solid and enforceable patent. Our attorneys at Bold Patents are equipped with the expertise and experience to guide you through every step of the patent prosecution process. We invite you to reach out to us for assistance in securing the protection your innovation deserves.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at