Have you ever encountered the question, “What is patent prosecution?” Well, this is a legal term that can be challenging if you are unfamiliar with the complex legal and technical factors involved. Having been in the legal field for over ten years, I will help you understand patent prosecution in detail.
We will also understand how to simplify the process. This will ensure your patent application is well-prepared and presented, maximizing the approval chances.
What Is Patent Prosecution?
Patent prosecution is when an inventor or an applicant and their representatives (an attorney) interact with the government patent and Trademark Office. The main reason for interaction between these parties is to ensure the inventor or an applicant obtains a patent for their invention.
The process involves drafting, filling, examining, and negotiating with the U.S. Patent and Trademark Office (USPTO) to obtain patent rights for an invention. This ensures an inventor obtains exclusive rights to make, use, and sell their invention, stopping any third party from doing so without permission from the inventor.
Since the process is challenging and requires a legal mind, it is vital to seek help from a patent attorney to help you out. The attorney you choose to prepare the patent should be licensed to practice law and also have a license from USPTO to do the same.
The Patent Prosecution Process
Patent prosecution is a step-by-step process journey to help secure patent inventor rights. The process must be done correctly and by the law to ensure the applicant secures all their invention rights. It also includes various parties (applicant, attorney/agent, and patent officer) who ensure everything runs smoothly.
That said, here is the process involved in patent prosecution:
Invention disclosure is the initial stage in patent prosecution. Here, the inventor discloses the invention to a patent attorney, giving complete information about the invention. For instance, the inventor may include technical specifications, drawings, ideal specifications, and other relevant information.
The invention disclosure may occur in two phases:
- Initial Discussion: This is where the inventor meets an attorney to discuss the invention. Here, the client (inventor) gives out the basic information about the invention, plus the time when the invention took place. This will help the attorney to know how to begin the process.
- Detailed Information: During this phase, an inventor presents complete and detailed information about the invention. The information includes a detailed invention description, technical aspects, and drawings. The goal here is to ensure the invention’s uniqueness, plus the innovative factors.
After the inventor has disclosed all the information about the invention, the two parties (the Attorney and the Inventor) must sign a Non-Disclosure Agreement (NDA). This document ensures that a patent attorney keeps the disclosed information confidential.
Prior Art Search
After receiving all the information, the attorney is entitled to conduct a thorough search to identify any similar inventions. The search is conducted by researchers and patent professionals, who will then inform the attorney of the authenticity of the invention.
The prior art search may take between 4 to 5 days to complete. However, this time may vary depending on various factors, such as experience, skills, and quality of the database used to retrieve the information.
The type of invention also plays a role in the time it takes to complete. If, for example, the search involves a device like a car, the researcher must consider components such as a wiper blade, pump, titanium screw, or other elements that may seem less important in the car. It is advisable to stay patient to ensure the search is conducted satisfactorily.
Based on disclosure information and prior art research, a patent attorney will draft a legal document that describes the invention’s technical and legal aspects. Again, you must give an attorney enough time to draft the application. This ensures all the aspects are covered in the application document.
Some of the elements in the application drafting include detailed information about the invention, drawings, the time of invention, and claims defining the extent of protection needed. The attorney will provide you with the application draft and explain every single aspect of it. Therefore, you need not worry about the terms used.
Filling the Application
Once the patent application has been drafted, the attorney proceeds to the next stage of filling it with the relevant patent officer. In the United States, the body tasked with the job is the U.S. Patent and Trademark Office (USPTO). This is where your attorney will take the application document.
The attorney will also manage all the formalities at this stage. They (attorneys) will manage all the paperwork and deadlines, ensuring all the submissions are accurate as drafted.
After the application has been filed, the jurisdiction will examine it to check if it meets the legal requirements. Sometimes, the examiner may conduct an oral interview to advance the process. This stage has two outcomes: Accepting or objecting to the application. Let’s see what happens in each outcome:
- Granting the Patent: Your application has been accepted, and no further adjustments are needed. The jurisdiction will issue a patent, preventing anyone from manufacturing, selling, or using the product without permission. The permission is usually granted for a period of time, 20 years.
- Objecting: At times, the examiner may object to the application, explaining why the decision was made. Some applications are rejected as not being patentable. In case of an objection, your attorney may need to make some adjustments that define an invention that meets the patentability threshold. If the application is rejected and you feel it was done due to misinterpretation of the prior art, you may appeal rather than amend the document.
Now that you have been granted the patent, you must pay a maintenance fee to keep the patent in force during its term period. The fee (there is a grace period of six months) is paid to the institution annually.
If an annual fee is not paid within the stipulated time, the application may be withdrawn, or the patent lapses. This may allow any individual to apply for the patent and acquire complete protection from the state.
Patent Prosecution Strategy
Some strategies can be implemented to ensure patent prosecution succeeds and consumes less time. The following are some of the strategies you should apply during the process:
- Draft a high-quality patent application: A patent application that covers all aspects and spectrum will make it easy for the examiner to grant a patent. Ensure you have an attorney who will draft your application ideally.
- Ensure effective communication with examiners: Submitting a draft application is not the final interaction with the examiner. You must find an ideal communication channel to understand the process. Sometimes, the examiner may even require an oral interview to enhance the process. That is why you must be in constant communication with the examiner.
- Understand amendments and claim strategies: The applicants should understand how to make amendments that meet the patent claim threshold. Should the applicant narrow or broaden the amendment to fit the patent claim?
- Ensure a continuous application: After the first application has been rejected, it is essential to make amendments and reapply. The examiner will check the amendments and grant a patent.
Common Challenges in Patent Prosecution
Patent prosecution may be a simple process if you have a competent patent attorney to help you out. However, this process comes with various challenges that you should consider before commencing. Here are some of the challenges applicants face:
- Office Actions: The jurisdiction often offers office actions to determine the outcome of the application. The outcomes may be objections, rejections, or clarifications on the application draft. This may be demoralizing and time-consuming, especially for impatient individuals.
- Delays in the Process: At times, the process may take longer than expected due to various factors, such as the type of database used or the researcher’s experience during the prior art search. Patent offices in busy jurisdictions may also experience a backlog, delaying the whole process.
- Resources and Costs: The process requires resources and fees to ensure the whole process is a success. For instance, the applicant must seek the services of an attorney and pay for filing and maintenance fees. This can be a costly affair if you have limited resources.
- Patent Quality: A poorly drafted application with vague claims may lead to difficulties during examination and enforcement. The challenge may arise in determining the quality of the patent if you don’t have an attorney conversant with patent laws.
Frequently Asked Questions
What Are the Two Types of Patent Law?
The two types of patent law are utility and design patents, each applied differently. A utility patent law grants inventors exclusive rights to manufacture, use, and sell new and useful compositions or matter. On the other hand, design patent law protects the ornamental designs of functional items from manufacturing and selling.
What Is a Utility Patent Example?
A utility patent is a common law granted by the US government under its agency, USPTO. Examples of utility patents include manufacturer articles, a device composed of moving parts, such as computers or engines.
Who Gives Out Patents?
It is the government that gives out patents through agencies. The US government gives out patents through the U.S. Patent and Trademark Office (USPTO). In the United Kingdom, the patents are given out through the Intellectual Property Office (UKIPO).
Patent prosecution is a vital process that protects innovation. The process also requires proper strategies to ensure it works perfectly quickly. However, with an experienced attorney, you can complete the process faster. This will help secure exclusive rights and protect intellectual property globally.