Patent Step 5: Prosecuting the Application
Patent Prosecution Services: The fifth step to patenting an invention is prosecuting the application. Generally, prosecution services are one of these three activities:  representing a patent application through examination (responding to office actions),  appealing an examination decision, or  conducting opposition, reissue, or reexamination proceedings. Prosecution happens after an invention is patent pending.
Carson Patents helps with prosecuting both before and after a patent is granted. We can represent your invention before the United States Patent and Trademark Office (USPTO) and the World Intellectual Property Office (WIPO).
What is patent prosecution strategy? Good prosecution strategy starts in writing and filing a complete and proper first application. Good claims, specification, and drawings are the best strategy.Carson Patents®
Pre-Grant – Office Action Responses – Application Amendments – Examiner Interviews
Pre-grant prosecution is conducting communications with the USPTO about an application. Specifically, it is communication regarding the examination of an application. Generally, pre-grant prosecution is these one of these five things:  responding to office actions.  filing amendments.  new claims.  petitions.  examiner interviews.
Office Action Responses
Responding to an office action is submitting a responsive written reply back to the patent office. The USPTO sends communications to the applicant as action on the patent application happens. In particular, when the examiner examines the application, they will send communications called office actions that the applicant will need to respond to in order to continue seeking patent protection. USPTO office action responses must include a complete response to all issues raised in the office action.
Office actions include both rejections and objections. Office action responses are written to provide a proper and complete response to all issues raised in the office action. Thus, Carson Patents highly recommends patent practitioner help to respond to USPTO Office Actions. Contact us for help responding to an office action or to start the steps to patent your invention or idea in a patent application.
Amendments to patent applications become necessary for many reasons. In other words, a complete USPTO office action response can make an amendment necessary. For example, if updates, corrections, and explanations are needed, submitting an amendment is necessary. Patent applications must fully disclose both how to make and use the invention. The application documents also need to be clear, complete, and in proper form. In other words, details matter. Carson Patents provides all patent services for writing and submitting amendments for patent pending applications. Contact us to get an amendment written or to start the steps to patent your invention or idea in a utility patent application.
Revising Existing Claims
For pending patents, and in response to office actions, revising existing claims and writing new claims may become necessary. Generally, submitting new claims and revising and resubmitting existing claims occurs as part of office action responses. Above all, claims must be in proper form, not indefinite, and supported by the written description and the drawings. Carson Patents provides writing new and revised patent claims. Contact us to get new or revised claims written for your pending patent or to start the steps to patent your invention or idea in a utility patent application.
USPTO Petitions – Patent Prosecution and Maintenance
- Petitions to Make special – age and health
- Revival based on unintentional delay
- Petitions to Revive Abandoned Applications
- Small Entity Entitlement
- Petitions to Review Previous Decisions
- Expungement of papers
- Prioritized Examination (Track One)
- Patent Prosecution Highway (PPH)
- Petition for retroactive foreign filing license
These interviews are audio or video interviews with the examiner about the details of a patent application. Consequently, examiner interviews are conducted for many reasons. For example, with patent applications, it is often for the purpose of advancing prosecution. In other words, to move the application forward as quickly as possible. We can discuss examination details and claims. 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. As a result, examiner interviews can help determine the best way to respond to an office action. Frequently, examiner interviews can be pivotal during the prosecution of a patent application. Therefore, Carson Patents highly recommends patent practitioner help for examiner interviews.
Post-grant prosecution is conducting communications with the USPTO after grant of a patent. In addition, post-grant prosecution may include any of these three actions:
First: USPTO issues regarding opposition to the patent.
Second: reissues to add claims or correct mistakes in granted patents.
Third: reexamination proceedings.
Contact us for details and options for post-grant proceedings or to start the 5 steps to patent your invention or idea in a utility patent application.
Other Patent Related Actions
USPTO patenting actions may also include many other things such as: submittals, petitions, and actions. Contact Carson Patents. We offer help with any patent or patent application action.
- Requests for Continued Examination
- Restriction Practice (proper responses to restriction office actions)
- Double Patenting
- Terminal Disclaimers
- Citation of Prior Art
- Supplemental Examination
- Ex-Parte Reexamination
- Requests for Reconsideration & Appeals
- Patent Trial and Appeal Board Proceedings
Online Patent Prosecution – Patent Petitions
Online Patent Prosecution
Patent Center controls electronic application filing at the USPTO. Correspondingly, 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. Moreover, 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 a viable option in addition to electronically. To prosecute by mail, a printed set of the documents needed for the action is mailed. Postal mail prosecution for both U.S. and International patent applications is available. The USPTO, however, recommends and encourages electronic prosecution.
Patent help for patent application prosecution services from a USPTO licensed patent prosecution lawyer, starting at – $800.
Patent Confidentiality. Invention disclosures to patent practitioners are covered by client controlled privilege.
Important Tip: When looking for expert patenting services help only a patent attorney or patent agent can prosecute patents for you.