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Patent Prosecution

Patent Prosecution

What is patent prosecution?

The applicant typically will amend the non-provisional patent application (hereinafter “patent application”), at least as to its claims, after it is filed in the Patent Office.  The amending usually occurs in the course of a back and forth interaction, over time, between the applicant and the patent examiner.  The patent examiner often will, in what is known as an “office action”, object to or reject one or more claims, and perhaps object to some aspect of what is written in the patent application or to the drawings.  For example, it is common for the examiner to argue that a claim is too broad in scope to distinguish sufficiently over the prior art, a prior art reference being most often a patent, patent publication, or other publicly accessible document that demonstrates that the invention in question is not new technology.  Thus, the examiner is suggesting that one or more of the claims be narrowed, or the examiner may indicate that there is a need to meet some other technical requirement such as regarding the form of the claim.  The applicant responds with amendment (such as a narrowing amendment of the claims) and/or argument.  The examiner considers the applicant’s reply and issues a next office action (which, at some point in the back-and-forth interaction, may be a Notice of Allowance which indicates that the Patent Office is ready to grant a patent).  The examiner’s role in what has just been described is referred to as “patent examination.” For the most part, “patent prosecution” refers to what the applicant does in this type of interaction between the examiner and the applicant.  However, the term “patent prosecution” as commonly used can additionally encompass patent drafting, i.e., the initial patent preparation.

replies to office actions and examiner interviews

During patent prosecution, the back-and-forth interaction between the practitioner and the patent examiner is characterized mainly by office actions issued by the examiner and replies by the practitioner to the office actions.  The back-and-forth communication ultimately results in a resolution of the patent examination, resulting in either an indication of patent application allowability or in abandonment by the applicant.

Interviews between the examiner and the applicant may be proposed by either party, and can often lead to either the application being deemed immediately allowable or an agreement or compromise on how the case may quickly be amended into allowable condition.  On the applicant side, a judgment may thus be made as to whether a possible compromise, for example regarding claim scope, is acceptable.

restriction practice and expedited procedures

Filing a patent application entitles the applicant, if the proper conditions for patentability are met, to a patent on one invention.  Sometimes, however, a patent application may claim what the patent examiner deems to be more than one invention.  The examiner will then issue a restriction requirement pointing out the alleged multiple inventions.  The applicant responds by electing (or “selecting”) only one invention for examination, and possibly also by arguing that some or all of the alleged inventions are aspects of a single invention.  These interactions between the examiner and the applicant are known as “restriction practice.”  If, ultimately, it is found that claims excluded by the restriction requirement from examination pertain to the one invention elected, these claims are then examined in the current patent application.  Any claims not found to be part of the one invention would require, for their examination, a second, subsequent patent application and the associated patent office fees.

Prioritized examination (PE) (i.e., “Track One”) is a program at the United States Patent and Trademark Office (USPTO) that allows a patent applicant to pay an upfront fee to, in return, markedly reduce waiting time between filing of the application and examination of it at the USPTO.  Pendency until a decision can be made on your patent application can typically be reduced from about a few years to within a year.  Since, statistically, fewer office actions arise under PE and since each office action costs attorney time to address, PE often pays for itself.  In addition, a quicker allowance, resulting in a patent, can attract earlier funding for the inventor’s enterprise.  As an alternative to PE, other types of expedited procedures may be of use.  Accelerated examination (AE) also reduces pendency until examination, and for merely a modest fee.  However, AE requires that the applicant initially perform a substantial prior art search and explicitly analyze the claims against the found prior art.  In addition to the expense involved in these extra steps, there exists the potential for, at an early stage, adversely shaping the applicant’s stance on the invention versus the prior art.  The Patent Prosecution Highway (PPH) pilot program leverages allowance of at least one patent claim in one jurisdiction, such as Europe, so that a similar claim or claims can potentially be allowed with minimal further examination in another jurisdiction, such as the United States.  Another avenue is that an application may be made “special” and therefore advanced out of turn for examination due to the applicant’s age or health, or based on any of several other specified conditions or circumstances.

appeals

The default model is that the second office action, if it does not allow the patent application (i.e., so that a patent can then be granted), is made final.  On the one hand, the second office action is often not made final.  When this happens, it may be the case that the examiner is in effect acknowledging the validity of the applicant’s argument against the first office action or that the examiner is, for any of several possible reasons, correcting, supplementing, or in some way substantially changing what the examiner argued in the first office action.  On the other hand, even if the office action is made final (i.e., is a final office action), this does not necessarily or even typically mean that no patent will issue.  Applicant can file a continuing patent application or can, alternatively, file an appeal.  A major difference between these two courses of action is that the continuing patent application affords the applicant the opportunity to amend the claims; whereas, on appeal, the applicant argues for the claims as they already exist.  The other side of the coin is that the examiner can cite new prior art against the continuing application, but generally cannot cite new prior art against a patent application on appeal – instead, the examiner would have to reopen prosecution which would allow patent examination to continue forward.  As during regular patent examination, the appeal involves the examiner and the applicant taking turns in making their arguments.  Ultimately, the appeal may be heard by the Patent Trial and Appeal Board (PTAB), for a decision that is usually on whether any, some, or all of the claims are to be allowed.  The appellant may challenge an adverse decision of the PTAB by filing a rehearing brief and by pursuing the matter further in the appeals process.

ex parte reexamination

Even a granted patent can have its validity challenged in court.  It may be alleged that the patent examination was not thorough and missed or did not adequately consider some prior art.  Prior art that was secret during examination may now have surfaced.  Or, since examination, a relevant law may have changed.  The patentee, to protect a patent under challenge, may want to have the patent examined once again by the United States Patent and Trademark Office (USPTO).  Although there are several bases for challenging a patent’s validity, a common basis would be another patent or a printed publication.  Thus, the patentee would seek, by means of ex parte reexamination, to have the patent in question reexamined in view of the submitted reference(s), to demonstrate that the patent remains valid.  Alternatively, any third party such as the challenger may call for ex parte reexamination.  The party calling for ex parte reexamination, whether the patentee or other party, must establish that a substantial and new question of patentability exists based on the submitted reference(s) in order for reexamination to be granted.

liaison with foreign patent agents

A United States patent can be asserted against infringement that occurs in the United States.  Patent protection for what occurs beyond the borders of the United States is outside the purview of a US patent and requires a patent in the additional jurisdiction for which protection is desired.  It is common to file an international patent application (or “Patent Cooperation Treaty” application, i.e., PCT application) and then, after it has been examined, to follow up with typically several national stage patent applications in respective jurisdictions.  Sometimes, a national filing is made directly in a jurisdiction without being derived from a PCT application.  In either case, each jurisdiction has its own rules, practices, and jurisprudence on how a patent application is examined.  It is common for a U.S. practitioner to work with a local practitioner, i.e., foreign agent, registered and qualified for his or her jurisdiction.  For example, the U.S. practitioner may receive, from the foreign agent, the foreign office action, or a translation of it as well as commentary or suggestions on addressing it.  When the foreign agent receives the U.S. practitioner’s reply, he or she may rework or reformat the reply accordingly before it is filed in the local jurisdiction’s patent office.  The foreign agent will also keep the U.S. practitioner apprised of the case’s procedural steps in the local jurisdiction.