What is patent prosecution?

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:

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:

  1. an attorney license by a state bar; and
  2. a USPTO patent practitioner registration.

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:

Need a patent prosecution attorney?

Contact US patent prosecution attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you file and obtain the right patents that make the most sense for your business.

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