Patent Prosecution

Patent prosecution refers to the activity that occurs in a patent application during its pendency in the USPTO.  More particularly, it is the interaction between the applicant or the applicant’s legal representative and the USPTO.  See the USPTO's Process for Obtaining a Utility Patent.  Although the cost of prosecution varies, it can be more costly than the cost to prepare and file the application.  The minimum cost for responding to an Office Action from the USPTO in a simple mechanical patent application is typically about $1,500 USD.  Simple inventions are often difficult to prosecute because of the fine distinctions between the invention and the prior art (e.g., patents, published patent applications, and other published information, including non-patent literature that predates the invention or patent application).  Persuading the Examiner at the USPTO that such distinctions have patentable merit is often difficult and time consuming. 

On a rare occasion, the USPTO issues a First Action Allowance.  This is typically not a good thing.  It often occurs when the claims in a patent application are so narrowly drafted that the Examiner cannot find prior art that would allow him to properly reject the claims, or it would require the Examiner to combine too many prior art references to reject the claims.  A narrowly drafted claim is often difficult to enforce because it can be easily designed around by avoiding claim limitations when designing a competitive product. 

A good claim set often includes a hierarchy of claims (i.e., a few claims that vary in scope from very broad to relatively narrow) or claims that use different language or limitations to claim the same invention (e.g., using different terminology or claiming structure in terms of its function).  The broadest claim or claims typically encroach on the prior art, and such claims should.  Otherwise, there would be a risk that the applicant would be giving up valuable protection (i.e., taking less protection than that to which the applicant is entitled).  Though presenting such claims is in the best interest of the applicant, broad claims often solicit an unfavorable response (i.e., an initial rejection) from the patent Examiner. 

In the recent past, the allowance rate for patent applications at the USPTO was over 70 percent.  However, in recent years, the USPTO has granted fewer patents.  The allowance rate has fallen below 50 percent (see USPTO Allowance Rate 2009-2011).  Those that have been allowed often meet much resistance from the USPTO. 

Claims that are marginally patentable in a crowded field of technology tend to solicit lengthy Office Actions with the same claims receiving multiple rejections based on multiple references.  The applicant has to respond to each rejection, which typically requires a detailed analysis of every reference and often each of the claimsClaims charts are often useful in a complex analysis of rejected claims in view of the references relied upon by the Examiner in the rejection.  Patent Tools provides a Claims Chart Generator that is useful in analyzing claims. 

A simple telephone interview with an Examiner is often fruitful in resolving issues and advancing the prosecution of the application. 

When responding to an Office Action, inventor input is helpful.  Inventors are frequently intimate with the invention and the field of technology.  Inventors are sometimes familiar with prior art, including patents and published applications in their technical field, sometimes with the prior art cited in a rejection.  Inventors are often eager to review patent references applied in a rejection and provide valuable input that is useful in distinguishing the invention from the prior art. 

Attorneys or agents who practice in a particular art unit also become intimate with a field of technology and prior art, and further establish relationships with Examiners that aid in advancing the prosecution of patent applications. 

Patent prosecution can be streamlined when seeking patent protection in multiple countries.  Through the Patent Prosecution Highway (PPH) program, an applicant who has allowable claims in one country may request advancement of related claims in a related application in another country.  The PPH program allows applicants to obtain patents faster and more efficiently.  For more information on the PPH program, see Patent Prosecution Highway.

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