What does patent prosecution mean?
Patent prosecution refers to the writing, filing and handling of patent applications. It encompasses the patent examination process from initial filing to the grant, including all the back-and-forth responses with the USPTO.
Prosecuting a patent application includes the following:
- drafting patent application
- responding to Office Actions, including amending claims and drafting arguments
- conducting Examiner Interviews
- submitting known prior art
- filing child applications
- paying the issue fee
Unlike a criminal prosecutor who is constantly involved in trials, patent prosecution does not include litigation. In fact, prosecuting patents refers to the transactional side of the patent practice as opposed to patent litigation.
Who can be patent prosecutors?
To prosecute patent applications, a patent attorney must have two licenses:
Though they are not lawyers, patent agents have the USPTO registration and may prosecute patents for others. Patent agents cannot represent clients in court (e.g., patent litigation) or in legal matters outside of prosecuting a patent applciation (e.g., drafting agreements, letters, etc.).
How To Find An Experienced Patent Prosecution Law Firm
You don’t need a law firm with 100+ patent attorneys in order to find a good fit for your patent application needs. What you should look for is a small team of experienced patent prosecutors. One way to filter out inexperienced practitioners is to ask about subtleties in the patent prosecution game.
Here are some questions to ask a potential patent prosecutor that you’re considering:
- How do you handle a Restriction Requirement or Species Restriction?
- Do you file foreign patents, including PCT applications? Which Receiving Office (RO) and International Search Authority (ISA) do you recommend?
- What do you do when you get an International Seach Report or Office Action from a related foreign application?
- How do you handle an Ex Parte Quayle Action?
- Does your team include a former USPTO examiner?
- What are your thoughts on the frequency and timing of Examiner Interviews?
- Will a patent agent or patent attorney be writing my patent application?
- What are strategies for obtaining stronger patent protection against competitors?
- What is your approach to writing independent claims?
- How many utility patents did you get granted last year? How many utility patents issued in your name this year?
- What is the difference between a Section 102 rejection and a Section 103 rejection?
- What factors would warrant another Request for Continued Examination (RCE) versus an appeal?
- When should you file a stand-alone application versus a CIP?
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