What Do We Mean by Patent Prosecution?

The prosecution of a patent includes the procedures that follow after a regular patent application is filed.

The prosecution of a patent application usually includes the first, second and final Office actions and consists of the period between the filing of the application and its issuance or abandonment. For more of an explanation, just keep on reading…

In the case of provisional applications, the completed application is just stored for a maximum of one year. In contrast, nonprovisional applications (these are also known as regular applications) are assigned to a specific examiner depending on the subject matter contained within the application (i.e.; computer related, biotechnology, engineering, etc.). The examiner will then review the application and he or she will eventually send the applicant what is called the first Office Action (this can take 14 to 20 months – so don't hold your breath).

This first Office (FOA) action will evaluate the entire application, the overall patentability of the invention and the wording and validity of the claims. The FOA will contain specific rejections or amendments to the claims that the applicant will need to make. The applicant will have a time limit (which is usually three months) to make the appropriate changes, attempting to overcome any rejections and then must send the application back to the PTO. The examiner will once again review the application, point out any shortcomings and send a review back to the applicant.

This second review is called the second Office action. Once the applicant receives this, he or she will need to amend everything the examiner commented on and once again send a reply back within the specified time period. Finally, the examiner will review the amended application again and determine whether to notify the applicant of a final rejection (stating that the application will not issue into a patent) or allow the application to issue into a patent.

If a final rejection is received, the applicant may appeal to the Board of Patent Appeals and Interferences (Board). If a Notice of Allowance is received, the application is approved for a patent as long as the applicant complies with any final amendments and sends in an issue fee within the appropriate time period of three months. Once all the final amendments and fees have been tended to by the applicant, the patent will issue. A summary of the patent will be printed in a publication called the Official Gazette and a copy of the official patent papers will be mailed to the applicant.

The examiner will usually reject at least some of the claims of any given application. There are three major laws governing the rejections of the claims. These laws consist of 35 U.S.C. 101, 102 and 103. Law 35 U.S.C. 101 summarizes what qualifies as patentable material. If the disclosed subject matter is not a process, manufacture, machine or composition of matter, it will be rejected under 101.