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Patent Prosecution

Protect your IP assets
Law Offices of Ernest Goodman > Patent Prosecution

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

Patent prosecution refers to the process of interacting with a patent office, such as the United States Patent and Trademark Office (USPTO), to obtain a patent on an invention. This process involves a series of communications, negotiations, and amendments between the patent applicant (or their representative, such as a patent attorney or agent) and the patent office, primarily through a patent examiner.

The patent prosecution process typically includes the following steps:

  1. Filing a patent application, which comprises a detailed description of the invention, claims defining the scope of protection sought, and any necessary drawings or illustrations.
  2. Formalities examination, where the patent office checks if the application meets the filing requirements, such as the necessary documentation, fees, and format.
  3. Substantive examination, during which a patent examiner assesses the application based on the patentability criteria, such as novelty, inventive step (non-obviousness), and industrial applicability (utility).
  4. Receiving office actions from the patent office, which may include objections, rejections, or requests for clarification or amendments related to the application.
  5. Responding to office actions by providing arguments, amendments, or additional information to address the issues raised by the examiner. This step may involve multiple rounds of communication and negotiation.
  6. In some cases, appealing an unfavorable examination decision to a higher authority within the patent office or a specialized court.
  7. Once the application satisfies all requirements, the patent office grants the patent, providing the applicant with exclusive rights to the invention for a specified period.

It is important to note that patent prosecution is distinct from patent litigation, which involves resolving disputes over patent infringement or validity in court.

OFFICE ACTION RESPONSES

Submitting a response to an office action involves providing a written reply to the patent office, addressing the communications they send during the patent application process. The USPTO communicates with applicants through office actions as they examine the application. When an examiner reviews the application, they issue office actions, which require the applicant’s response to continue pursuing patent protection. It is crucial to submit a comprehensive response to all issues raised in the office action when replying to the USPTO.

Office actions may consist of rejections or objections, and responses should be crafted to address all concerns raised comprehensively. The Ernest Goodman Law Firm highly recommends seeking assistance from a patent practitioner when responding to USPTO office actions. Please contact us for support in replying to an office action or initiating the patent application process for your invention or idea.

APPLICATION AMENDMENTS

Amendments to patent applications may become necessary for various reasons, often due to a comprehensive USPTO office action response. For instance, when updates, corrections, or clarifications are required, submitting an amendment is essential. Patent applications must fully disclose the invention, detailing how to create and utilize it. Furthermore, the application documents need to be clear, complete, and properly formatted, emphasizing the importance of attention to detail. The Ernest Goodman Law Firm offers a full range of patent services, including writing and submitting amendments for patent-pending applications. Contact us for assistance with preparing an amendment or initiating the process to secure a utility patent for your invention or idea through a patent application

REVISING EXISTING CLAIMS

During the patent application process, particularly for pending patents and in response to office actions, it might be necessary to revise existing claims or draft new ones. Typically, these modifications and additions are submitted as part of the office action responses. It is crucial that claims are properly formatted, unambiguous, and supported by the written description and accompanying illustrations. The Ernest Goodman Law Firm offers services for drafting new and revising existing patent claims. Reach out to us for assistance with crafting new or revised claims for your pending patent or to initiate the steps for securing a utility patent for your invention or idea through a patent application.

We welcome you to call our office at +1818-858-0406 or complete our convenient online form, and our team will be happy to guide you towards a successful, stress-free resolution.

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