Patent Prosecution

Do you have an idea and need to protect it?

If so you may need a patent. 

The owner of a patent has the legal right to prevent others from making, using, selling, importing, or exporting things that encompass or implement the idea described in the patent.

The patent application process is very “expert friendly”; it is most efficiently navigated by practitioners familiar with the many laws, rules, and procedures involved when applying for a patent. These practitioners are typically referred to as “patent prosecutors.” 

A patent prosecutor is a patent attorney who drafts and files patent applications with the U.S. Patent and Trademark Office, makes arguments to the patent examiner explaining why an inventor is entitled to a patent, and takes the steps needed to keep the patent application in good standing.

After a patent application is prepared and filed with the Patent Office, it will be reviewed by a patent examiner, whose job is to determine if the idea described in the patent application is actually patentable. 

In reviewing the patent application the examiner will consider issues such as:

• Is the idea truly new, never done before?
• Is the idea an obvious change to an existing idea?
• Does the idea have a useful purpose?
• Is the idea adequately described in the patent application?

If the examiner concludes that the answer to each of these inquiries is yes, the examiner will issue a “notice of allowance.” 

In the large majority of cases, however, the first communication an applicant receives from the examiner is an “office action,” rejecting the application, challenging it on one or more of the grounds mentioned above. This is a normal part of the patent application process. 

Patent applications average about two and a half office actions before there is a final disposition: an allowance, abandonment, or appeal.  

The number of office actions varies significantly depending on the type of technology described in the application. Software or business-method applications tend to receive more office actions than applications about things like chemical processes or simple mechanical devices.