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By J.D. Houvener
Patent Attorney and Founder

Understanding patents involves grappling with specific legal terms and processes that may seem similar but serve distinct purposes. One such area where confusion often arises is in the distinction between “patent prosecution” and “patent litigation.” Although both terms are essential in the realm of patent law, they cater to different aspects of acquiring and protecting intellectual property rights. 

What Is Patent Protection?

Patent prosecution refers to the administrative process of interacting with a patent office, such as the United States Patent and Trademark Office (USPTO), to obtain a patent. During this stage, inventors or their representatives file a patent application that includes a detailed description of their invention. The patent office then reviews the application, often requiring multiple rounds of correspondence and revisions to clarify the scope and novelty of the invention. The ultimate aim is to secure formal patent rights that provide the owner exclusive use of the invention for a set period, usually 20 years from the filing date.

An essential player in the patent prosecution process is the patent attorney, who specializes in drafting applications and communicating with patent examiners. Their expertise is crucial in addressing the technical and legal intricacies that arise during examination, ensuring that the patent application meets all requirements for grant. This phase is mostly proactive, aiming to establish the broadest and most robust protection possible for an invention. Therefore, the role of a patent attorney during prosecution is to guide and advocate for the applicant to ensure the strongest patent rights are secured.

What Is Patent Litigation?

Patent litigation is the legal process where a party seeks to enforce its patent rights against alleged infringers or defend against a patent infringement claim in a court of law. Unlike patent prosecution, which is an administrative process, litigation is a judicial proceeding that often involves a plaintiff, a defendant, and a judge or jury. The plaintiff, usually the patent holder, claims that the defendant has infringed upon their exclusive rights to an invention, while the defendant argues against such infringement. Cases may settle out of court, but if not, they culminate in a trial where both parties present evidence and legal arguments.

In patent litigation, the role of a patent attorney becomes even more critical and specialized. They must not only understand the complexities of patent law but also have a grasp of the technical aspects of the patent at issue and the rules of civil procedure and evidence. These cases are often protracted, expensive, and unpredictable, involving extensive discovery, expert testimony, and legal maneuvering. Thus, having experienced legal representation is crucial for either enforcing a patent successfully or defending against infringement claims.

Key Differences Between Patent Prosecution and Patent Litigation

  • Nature of the Process: Patent prosecution is an administrative procedure that involves interacting directly with a patent office, like the USPTO. In contrast, patent litigation is a judicial process that takes place in a court of law and involves a legal dispute between parties.
  • Objective: The main objective of patent prosecution is to secure patent rights for an invention by satisfying the patent office’s criteria for novelty, utility, and non-obviousness. On the other hand, the primary aim of patent litigation is to enforce or defend those patent rights, often through legal disputes that claim infringement or invalidity.
  • Timeframe: Patent prosecution generally has a more predictable and often shorter timeframe, usually spanning a few years from the application to the grant of the patent. Litigation can be a lengthy and unpredictable process, sometimes taking several years to reach a conclusion.
  • Cost: Patent prosecution can be relatively less expensive, depending on the complexity of the invention and the number of rounds of examination needed. Litigation is generally far more costly, requiring significant financial resources for legal representation, discovery, expert witnesses, and court fees.
  • Complexity: Both processes require an understanding of legal and technical nuances, but litigation often involves an additional layer of complexity. This includes the rules of civil procedure, evidence, and in some cases, a jury trial, which necessitates expertise in both legal and technical aspects.
  • Role of Patent Attorney: In prosecution, a patent attorney primarily focuses on drafting applications and communicating with patent examiners to secure a patent. In litigation, the attorney needs to be adept at legal strategy, argumentation, and courtroom procedures while also understanding the technical aspects of the patent at issue.

Getting Help with Your Patent Prosecution or Litigation

Whether you’re an inventor aiming to protect your innovation or a business facing infringement claims, expert legal guidance can make all the difference. A specialized patent attorney can help you navigate the complexities of both patent prosecution and patent litigation, ensuring that your intellectual assets are both secure and effectively leveraged. If you have questions or need representation, don’t hesitate to contact an attorney at Bold Patents for a free discovery call tailored to your specific patent needs.

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