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Patenting Step 4: Prosecution

Patent Prosecution Services are usually one of these three activities: [1] representing a patent application through examination (responding to office actions), [2] appealing an examination decision, or [3] conducting opposition, reissue, or reexamination proceedings.

The fourth step in seeking patent protection for an invention is prosecuting the patent application.

For design and utility patents, prosecuting the patent application is the fourth step to patenting. Patent application prosecution is representing your invention before the United States Patent and Trademark Office (USPTO). Patent prosecution services are usually one of these three activities. Firstly, representing a patent application through examination (responding to office actions). Secondly, appealing an examination decision. Thirdly, conducting opposition, reissue, or reexamination proceedings. Prosecution happens after a patent is pending. In addition, it occurs both before and after a patent is granted. 

Pre-Grant Patent Prosecution

Pre-grant patent prosecution is conducting communications with the USPTO about an application. Specifically it is communication regarding the examination of an application. Most frequently, pre-grant patent prosecution is one of these five things; firstly, responding to office actions; secondly, filing amendments; thirdly, filing new claims; fourthly, filing petitions; and, fifthly, conducting examiner interviews.

Office Action Responses

Representing a patent application through examination is responding to office actions. Responding to an office action is submitting a responsive written reply back to the patent office. During processing and examination of an application, the USPTO writes letters to the applicant to address issues raised. For instance, many of these letters are office actions that are rejections and objections.

USPTO office action responses must include a complete response to all issues raised in the office action. Office actions include both rejections and objections. Proper and complete responses to all issues raised in an office action are important. Thus, addressing each rejection and/or objection is essential.

Addressing patent office objections and rejections is in the form of presenting fact, argument, amendments, and new/revised claims.

Amendments

Amendments to patent applications become necessary for many reasons. A complete USPTO office action response can make an amendment necessary. If updates, corrections, and explanations are needed, submitting an amendment is necessary. Patent applications need to fully disclose how to make and use the invention. The application documents need to be clear, complete, and in proper form. In other words, details matter. 

New and Revised Claims

For pending patents, and in response to office actions, revising existing claims and writing new claims can become necessary. Submitting new claims, and revising and resubmitting existing claims typically occurs as part of office action responses. Claims must be these three things: firstly, claims must be in proper form; secondly, claims must not be indefinite; and, thirdly, claims must be supported by the detailed description and the drawings. 

USPTO Petitions 

The patent office uses petitions for most actions outside of patent prosecution communication with an examiner. The following is a list of the most common USPTO petitions.

Examiner Interviews 

Examiner interviews are audio or video interviews with the examiner about the details of a patent application. Interviews are conducted for many reasons. For instance, with patent applications, it is often for the purpose of choosing among, or selecting, options for advancing prosecution. Advancing prosecution is moving the application forward through examination. We can discuss examination details, and claims during an interview. Further, we can propose new, or amended claims. 

There are, at least, three examples of good reasons to conduct an examiner interview: firstly, sharing understanding of the invention; secondly, discussing the patentability of the claims; and, thirdly, to determine election options after a restriction office action. Examiner interviews can help determine the best way to respond to an office action. Frequently, examiner interviews can be pivotal during patent prosecution.

Post-Grant Patent Prosecution

Post-grant patent prosecution is conducting communications with the USPTO after the grant of a patent. It may include any of these three actions: firstly, USPTO issues regarding opposition to the patent; secondly, reissues to add claims or correct mistakes in granted patents; and, thirdly, reexamination proceedings.

Processing/Filing Prosecution Actions

Online Patent Prosecution

Patent Center controls electronic application filing at the USPTO. Filing an application in Patent Center requires an online account. The account will also permit tracking of the application. An online account is available for free on the Patent Center page.

In addition to patent office prosecution with the USPTO, the World Intellectual Property Office (WIPO) accepts the PCT and Hague application prosecution documents directly. WIPO has a single online entry point for intellectual property (IP) applications. WIPO accepts both PCT and Hague patent application prosecution documents filed directly.

Postal Mail Patent Prosecution

Prosecuting patent applications via postal mail remains viable. To prosecute by mail, a printed set of the documents needed for the action is mailed. Postal mail prosecution for both US and International patent applications is available. The USPTO recommends and encourages electronic prosecution.

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