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Patent Prosecution

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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.


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.


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


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.


The patent application process can be smooth and efficient with the right patent practitioner on your team. We also handle various petitions and applications, including:

  1. Petitions to Make Special – based on age and health factors
  2. Revival Petitions – addressing unintentional delays
  3. Petitions to Revive Abandoned Applications
  4. Small Entity Entitlement Applications
  5. Petitions to Review Previous Decisions
  6. Expungement of Papers
  7. Prioritized Examination (Track One) Requests
  8. Patent Prosecution Highway (PPH) Applications
  9. Petitions for Retroactive Foreign Filing Licenses

Having a skilled patent practitioner to navigate these aspects can significantly enhance the chances of successfully obtaining a patent for your invention or idea.

There may be instances when you encounter challenging situations that cannot be resolved without resorting to legal action. Our team possesses extensive legal expertise, honed by experience in various courts and legal systems. You can consult our attorneys to learn about the options available to you and how best to navigate these complexities to achieve a favorable outcome.


Examiner interviews are audio or video discussions with the patent examiner about the specifics of a patent application. They are conducted for various reasons, often to expedite the prosecution process and move the application forward efficiently. During these interviews, examination details and claims can be discussed, and new or amended claims may be proposed.

There are several compelling reasons to conduct an examiner interview, including:

  1. Enhancing mutual understanding of the invention
  2. Discussing the patentability of the claims
  3. Exploring election options following a restriction office action

Examiner interviews can help determine the most effective way to respond to an office action and often play a crucial role in the patent application’s prosecution. The Ernest Goodman Law Firm highly recommends seeking patent practitioner assistance for examiner interviews to ensure a successful outcome.


Post-grant prosecution involves communicating with the USPTO after a patent has been granted. This process may encompass any of the following three actions:

  1. Addressing USPTO issues related to oppositions against the granted patent.
  2. Managing reissues to add claims or rectify errors in the granted patents.
  3. Overseeing reexamination proceedings.

Post-grant prosecution ensures that any necessary adjustments or disputes are appropriately handled, maintaining the integrity and strength of the granted patent.

Contact us for details and options for post-grant proceedings or to start the 5 steps to patent your invention or idea in a utility patent application.


The USPTO patenting process involves various actions, including submissions, petitions, and other procedures. The Ernest Goodman Law Firm is here to assist you with any patent or patent application-related actions, such as:

  1. Assignments
  2. Requests for Continued Examination
  3. Restriction Practice (appropriate responses to restriction office actions)
  4. Double Patenting
  5. Terminal Disclaimers
  6. Citation of Prior Art
  7. Supplemental Examination
  8. Ex-Parte Reexamination
  9. Protests
  10. Requests for Reconsideration & Appeals
  11. Patent Trial and Appeal Board Proceedings

Please contact the Ernest Goodman Law Firm for help with any aspect of the patenting process, ensuring a comprehensive and efficient approach to securing protection for your invention or idea.


The trend of online patent prosecution has gained momentum, with the USPTO’s Patent Center serving as the hub for electronic application filing. To file an application through the Patent Center, an online account is required. This account also enables tracking of the submitted application. Signing up for an online account is free on the Patent Center webpage.

Besides the USPTO, the World Intellectual Property Office (WIPO) directly accepts prosecution documents for PCT and Hague applications. WIPO offers a unified online portal for intellectual property (IP) applications and directly processes both PCT and Hague patent application prosecution documents, streamlining the global patent application process.



Prosecuting patent applications through postal mail continues to be a valid method alongside electronic submission. For mail-based prosecution, a printed set of the required documents is sent via postal mail. Both U.S. and International patent applications can be processed this way. However, the USPTO recommends and promotes electronic prosecution.

Confidentiality is essential in the patent process. Invention disclosures made to patent practitioners are protected by client-controlled privilege, ensuring the security of your intellectual property.

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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