Patent prosecution refers to the process of working the application through the Patent and Trademark Office (PTO) until it is either allowed or finally rejected. After the patent application is filed it may take as long as 2 or 3 years until it is reviewed by a patent examiner.
The PTO examiner performs a prior art search, compares the application claims to the prior art, and either passes the claims to issue or rejects the claims.
Claim Rejections: There are 2 basic types of rejections, for anticipation (35 U.S.C. 102) and obviousness (35 U.S.C. 103). These rejections are sent to the applicant’s Patent Attorney in the form of an Office Action.
Anticipation rejections are based upon the examiner alleging that a single prior art reference describes every single limitation recited in one or more of the applicant’s claims, and that the prior art was in existence before the applicant’s filing date.
The Patent Attorney has the opportunity to file a response arguing that the prior art lacks at least one of applicant’s claim limitations. Alternatively or in addition, the claims may be amended, so that the rejected claims include at least one limitation not mentioned in the cited prior art. New claims may also be added.
Obviousness rejections are not so straightforward and are usually based upon the combination of multiple prior art references. In the simplest case, the examiner alleges that the combination of cited references expressly describes or at least suggests every limitation recited in the rejected claims.
The rejection must also contain an explanation for why a practitioner in the art would have been motivated to combine the cited references in a manner that would make the claimed invention obvious. Since this definition of obviousness is somewhat tortured, obviousness is the subject of much litigation and case law.
In the rare case, applications are allowed without any Office Action rejections, but typically one or two Office Actions are received, which require responses by the applicant.
After a final rejection, which typically occurs in a second Office Action, the applicant must decide whether to abandon the application, appeal the examiner’s rejection, or continue prosecution. If appealed, the Attorney prepares an Appeal Brief, which resembles a more formal variation of Office Action response, with additional expenses to be proffered.
The Patent Trial and Appeal Board (PTAB) is a panel of Patent Attorneys (Judges) who act to either affirm or overrule the examiner’s rejection. If the examiner is overruled, the application is returned to the PTO examiner for reconsideration.
For an additional fee, the applicant can submit a Request for Continued Examination (RCE) with a reply to the final rejection, which may include new arguments, amended claims, or an entirely new set of claims, and prosecution of the application continues.
Allowance and Issuance: Once the application is allowed, an Issue fee must be paid. Approximately 6 to 8 weeks later the application issues as a patent. Thereafter, maintenance fees must be paid 3 years, 7 years, and 11 years after the issue date.
If the maintenance fees are not paid, the patent becomes abandoned. If the applicant intends to file a Continuation, Continuation-in-part, or Divisional application to take advantage of the allowed application’s filing date, these applications must be filed before the allowed application issues as a patent.
“The information and opinions expressed here are not intended to constitute legal advice, but are presented for informational and educational use.”
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