Intellectual Property Law · Licensing · Technology Innovation

What is patent prosecution?

On Behalf of | Jul 21, 2021 | Patents |

Patent prosecution includes a number of activities such as working with innovators and inventors to assess your business’s inventions. The goal with the initial activities is to decide if you want to begin patent searching or to continue writing out patent applications.

A patent attorney files a patent application once a client has completed writing it out. Then, they monitor the application and its statues, discussing any issues that may arise with the patent office.

Put basically, patent prosecution is when your patent attorney works with your business on a strategy for obtaining patents and responding to actions from the patent office. With patent prosecution, your goal is to convince the patent examiner working at the patent office to grant your company a patent for your invention.

What happens if the examiner doesn’t grant the patent right away?

If they don’t grant it right away, part of the patent prosecution process is to respond to their findings and to negotiate with the patent examiner. You might provide an interview that discusses why your invention should be patentable or what it does, for example. You may provide other kinds of convincing documentation to help the examiner see why your invention should be granted a patent.

What makes patent prosecution different from patent litigation?

Prosecution is normally used, in the legal sense, to discuss when someone is being charged with a crime. The prosecutor brings a case against them, and then they have to defend themselves. This is not the same with patent prosecution. Patent prosecution is a process for obtaining a patent. Patent litigation is when you file a lawsuit for patent infringement. For instance, if your company receives a patent and a competing company uses your schematics to create a new device, you may be able to file a patent infringement lawsuit against that company.

Prosecution means to carry out an action, which is what you’re doing with your patent prosecution process. Developing a strong patent application and building a response to any questions from the examiner will help you get the patent that you need, so that you have protections if you need to litigate in the future.