Patent Prosecution

What it is

Everything that happens after your application is filed. Filing starts an examination; prosecution is the lawyers' word for the process that follows.

Most applications are rejected the first time. That is ordinary rather than alarming — the patent office's opening letter, called an office action, usually rejects your application for one or more reasons, and it is the start of a negotiation about how much protection you get, not the end of the road. Rejections are frequently based on both administrative formalities and substantive examination questions. Prosecution is the work of answering the patent office: reading what the examiner actually relied on, deciding whether to argue, narrow the application, or both, and choosing a course of action for the entire portfolio.

What it covers

Reviewing the office action and the challenges that it raises to your application. Writing the response—the arguments, and any narrowing of what you are claiming. Sometimes we have an opportunity to speak with the examiner directly, which can resolve questions more quickly than formal responses. Asking for another round of examination when one is not enough, appealing to the patent office's appeal board when an examiner will not move, buying more time when a deadline needs it, and paying the final fee that turns an allowed application into a granted patent.

It also covers our answers to the questions we are frequently asked: whether a rejection is worth fighting, what a proposed narrowing would cost you, and when an application may no longer be worth pursuing. We try to arm you with all applicable information so that you make optimal decisions with respect to your intellectual property.

What happens next

Prosecution follows from filing. If we prepared your application, this is the work that comes after it, and we scope and quote a response in writing before any of it begins. If you are transferring a portfolio drafted by someone else to our firm, we take over prosecution of your already pending applications.