Patent prosecution is the process of obtaining a patent from the relevant patent office. It involves a series of steps. At the Law Office of Kattina V. Barsik, Esq., LLM, we guide our clients through this complex and often lengthy process with confidence and efficiency.
Steps For Patent Prosecution
The basic steps of patent prosecution and our role for our clients can be summarized as follows:
- Initial consultation and invention disclosure: The process begins with an inventor or applicant seeking our counsel. During the initial consultation, we discuss the invention with the client to understand its novelty, its potential patentability and the scope of protection required. Our clients bring comprehensive invention disclosures, including detailed technical specifications and any prior art information.
- Prior art search and patentability assessment: We conduct a prior art search to determine if the invention is novel and nonobvious. We review existing patents, published literature and other relevant information to assess the patentability of the invention. Based on the search results, we advise each client on the likelihood of obtaining a patent.
- Drafting the patent application: Once it is determined that the invention is likely to be patentable, we begin drafting the patent application. This involves transforming the invention disclosure into a detailed and legally precise document. The patent application includes claims, which define the scope of protection sought, and a detailed description of the invention and its embodiments.
- Filing the patent application: After thorough review and approval by our client, we file the patent application with the United States Patent and Trade Office (USPTO). Timeliness is important because the filing date will be crucial for establishing priority and determining the patent term.
- Patent office examination: Once the application is filed, the patent office assigns an examiner to review it. The examiner assesses the patent application to ensure that it meets all legal requirements and that the claimed invention is novel and nonobvious. The examiner may issue office actions outlining any rejections or objections to the claims.
- Office actions and responses: As necessary, we work with clients to draft responses addressing the examiner’s concerns. This response may involve amending the claims, providing additional evidence or arguing the patentability of the invention. The process of office actions and responses may continue for several rounds until the examiner is satisfied with the application. (See the section below for more information.)
- Allowance and issuance: If the patent office is convinced that the invention meets all requirements, then the application will be allowed and the patent will be granted. The patent will typically be published after issuance, making the details of the invention public.
- Post-grant proceedings (optional): Even after the patent is granted, there may be post-grant proceedings, such as reexamination or opposition proceedings, where the validity of the patent can be challenged. We may represent the patent holder in defending the patent during such proceedings.
- Maintenance and enforcement: Once the patent is granted, we advise the client on maintenance requirements, including payment of maintenance fees to keep the patent in force. We may also assist in enforcing the patent rights against potential infringers, which may involve sending cease-and-desist letters, negotiating licensing agreements or initiating patent infringement lawsuits.
Overall, patent prosecution is a complex and intricate process that requires solid knowledge of patent law, technical understanding of the invention and effective communication with the USPTO.
Responding To Office Actions
While pursuing patent protection through the USPTO, it’s common to receive at least one office action from the assigned patent examiner. This written communication outlines the examiner’s stance on the patentability of the current formulation of our client’s invention claims. Throughout the patent application process, there’s flexibility to modify or amend these claims in order to precisely encapsulate their innovation and differentiate it from previously identified prior art.
Applicants, with the guidance of their patent attorneys, are required to promptly address office actions to prevent the risk of their patent applications becoming abandoned. In cases where the office action is a non-final or final rejection, applicants have two avenues to proceed without risking application abandonment:
- Revise the claims to establish a clear distinction between your invention and the cited prior art.
- Present arguments contesting the examiner’s interpretation of the cited prior art, aiming to demonstrate inaccuracies or misunderstandings.
Ensuring timely responses and navigating these options effectively are vital steps in advancing your patent application while safeguarding your intellectual property rights.
Litigation Before The Patent Trial And Appeal Board
The United States Patent and Trademark Office (USPTO) isn’t infallible as a government entity, and occasionally, it might erroneously grant a patent. In such instances, although the patent holder might be pleased with their newly acquired patent rights, other third-party entities, like the patent holder’s rivals, could feel frustrated. When individuals who aren’t patent holders suspect that a patent was mistakenly issued, they have a legal option known as an inter partes review (IPR), which is a type of patent litigation.
IPR offers the chance for non-patent holders to challenge the validity of a granted patent before the Patent Trial and Appeal Board (PTAB) at the USPTO. It’s a useful legal avenue, especially for businesses aiming to invalidate their competitors’ patents and for those entities accused of infringement.
Whether you need to initiate an IPR challenge for a granted patent or require defense against an IPR challenge, it’s advisable to seek our guidance at Law Office of Kattina V. Barsik, Esq., LLM. We are well equipped to assist you with any litigation matters you may encounter before the PTAB.
We Can Guide You Through Patent Prosecution For Your Company
We play a crucial role in guiding inventors through this process, from the initial consultation to the grant of the patent. We are also available for any post-grant proceedings or patent enforcement efforts. With our knowledge and skills, we seek to maximize the chances of obtaining a valuable patent that can provide meaningful protection for our inventor clients’ innovative contributions.