Patent Prosecution

After Filing

Once the patent application is filed, the Patent Office begins the review process in accordance with the legal standards for determining whether the invention described in the application is worthy of a patent.  Once the review is completed, the examiner will send a letter to the applicant.  This letter is called an office action.  The correspondence, which ensues between the applicant and the examiner subsequent to this first office action, is called patent prosecution.  This process, with minor differences, is practiced throughout the world.

Patent Examiner

The patent examiner is an employee of the Patent Office appointed to examine the application.  The examiner assigned to the application, as a rule, is technically skilled in the field of the invention.

Components of a Patent Application

The examiner will determine whether the application and the related documents comply with the law and other formalities.

Full Disclosure in the Application

Examiner will determine whether the application as submitted for examination, fully discloses and clearly defines the invention.

Preferred Embodiment Must Be Disclosed in the Application

The application must disclose the “best way” to make and/or practice the invention.

Utility of the Invention

Examiner must decide whether the claimed invention is useful.  Oftentimes, to satisfy the utility standard, the invention must work. This standard is quite low, and rejections based on the utility of the invention are rare.

The Invention Must be New

Examiner has to determine whether the claimed invention is novel.  To be novel, the invention must not be described in a previously issued patent, publication of a patent application, or some other source in the public domain.

Obviousness of the Invention

The examiner has to determine whether the claimed invention is obvious, given the existing public knowledge at the time of invention.  In order to make an informed decision the examiner must perform search of existing patents and other documents published in fields analogous to the field of the invention.  The examiner will determine whether a person reasonably skilled in the art and having considered the results of the search would find the invention to be obvious.  The standard of obviousness frequently changes.

Drafting a Patent Application

Drafting a patent application and drawing the corresponding figures is like an art, which is informed by the legal rules of the history of successful patent applications.  Claims do not just define clear boundaries of the invention.  Claims must be written using the terminology, which has meaning adopted by the patent law.  Claims must also protect from those who attempt to design around your invention in order to market and sell competing products.  In order to obtain best protection for your invention, a group of claims must be created, which includes claims of broad and narrow scopes.  This permits maximum flexibility in response to the office action rejecting the invention.

Office Actions

Approximately 16-20 months after filing of the patent application, the examiner will send the first office action objecting to or rejecting the claims for various reasons using the rules of patent law described above.

Rarely, an application is accepted without any objections or rejections.  Rejection is a denial to issue a patent to the invention as set forth in the claims because the examiner finds the claims to be unpatentable under the law.  Objection is a denial to issue a patent because the examiner finds the claims or other parts of the application not to comply with the rules.


The applicant, usually through a representative, will review the arguments behind the objections and/or rejections made by the examiner and will determine the best approach in advancing the prosecution forward.  All amendments made in the response should be supported by the disclosure of the application.  The first step after receiving the first office action can be a telephone conference or a personal meeting with the examiner.  A written response typically includes amendments to the claims, a petition, clarifications, a request for reconsideration of an examiner’s position due to a misunderstanding of facts or law, or other possible responses, as required by the federal regulations.  The second office action may contain further objections or rejections or the examiner may decide that the inventor, through his representative, has not responded to the previous objections and/or rejections and to declare the second office action final.  After that, the patent prosecution stops without a grant of a patent.  Possible options include filing of an appeal, a request for continuing examination, or a new application containing new matter.

Issuance of a Patent

If the applicant’s response is accepted and no further objections or rejections are provided by the examiner the patent application will be accepted for the issuance of a patent, pending timely payment of the issue and the publication fees.  The correspondence between the applicant and the patent office will be accessible to all who want to understand exactly what has been patented.