Patent Prosecution

The road toward getting a patent issued is long and challenging. An individual or start-up company seeking to file a patent will soon realize that there is a lot that goes into the patent process before it gets approved and issued by the United States Patent and Trademark Office (USPTO). Filing for a patent can also be costly, and the costs can add up considerably as the application moves through the steps towards the final decision by the USPTO. Seeking a highly accomplished trademark attorney in San Francisco, CA with substantial knowledge of intellectual property is crucial.

At the Law Office of Christopher Peil, we have the in-depth knowledge and understanding that can help get your patent moving forward from beginning to end of the patent prosecution process.

Unlike patent litigation, patent prosecution is the process that involves the steps required to apply for a patent with the United States Patent and Trademark Office or USPTO. Patent prosecution begins with drafting and filing the patent a company or individual wishes to register in order to acquire rights and protection for an invention, design, processes, or technology.

People who are not familiar with the terminology may assume that patent prosecution is the same as patent litigation. However, patent litigation and patent prosecution are two different things. Patent litigation involves the legal process of patent infringement. When someone else uses a patent without the permission of the owner, a patent litigation attorney should be consulted. But, if you wish to submit and register a patent with the USPTO, it is recommended to hire a patent and trademark attorney in San Francisco, CA with patent prosecution experience to help you with your patent-pending application. Moreover, a qualified patent prosecutor has to be licensed to practice patent law in front of the USPTO, unlike a patent litigation attorney who is not required to be licensed with the USPTO.

Both the patent prosecution and applicant work together to obtain a patent. The USPTO employs examiners who are in charge of the patent application from the beginning. The examiners determine whether a patent is patentable. They often address various issues, matters, and concerns regarding the patent and the application. In order to move the application along, these issues must be addressed, or the application can get denied.

Patent Prosecution Process

An expert patent and trademark attorney in San Francisco, CA will usually perform a patent search to make sure that the patent in question is patentable. During the patent prosecution, the attorney can also determine whether the patent is worth pursuing. Registering a patent is costly, and sometimes the patent prosecution will advise alternate means with favorable results if filing a patent with the USPTO is not feasible. It takes a qualified attorney in intellectual property in San Francisco, CA to verify the best approach to secure and protect intellectual property.

After making sure that the patent fulfills the requirements to be patentable, the application will be drafted with the help of the patent attorney. To be patentable, the patent must meet the USPTO’s patent requirements. According to the USPTO, the invention must be the following:

• Statutory (subject matter eligible)
• New
• Useful
• Non-obvious

If the invention meets all four requirements, the application will be prepared and filed with the USPTO.

Filing a Patent Application

Filing a patent application can be an arduous process. It is a process that takes time to complete. To file a patent application, the applicant, with the assistance of his or her trademark attorney in San Francisco, CA will need to include, at the bare minimum, a specification of the invention with or without claims. However, it is recommended to include quality drawings of the invention along with the application when submitting it to the USPTO. The USPTO will review the application to make that it is complete. To be considered complete, the application should include a specification with at least one claim, an inventor’s oath or declaration, requisite fees, and drawings, if applicable. Drawings, however, are usually necessary and should be submitted with the application.

If the application is deemed incomplete, it will not be moved to the next step. If the application is missing or incomplete, for instance, if it does not have the inventor’s oath, requisite fees, or submitted in English, a Notice to File Missing Parts will be sent to the applicant. If the applicant did not submit or is missing specifications or drawings that should have been filed with the application, the USPTO will send a Notice of Omitted Items. Responding to these notices is vital. If you fail to respond, the application will be abandoned, and you will have to start the process over if you still wish to register the invention. Acquiring a patent attorney with extensive experience in intellectual property in San Francisco, CA on your side can save you from submitting an incomplete or invalid application with the USPTO.

Once the application passes the USPTO’s approval, it is forwarded to a patent examiner. The patent examiner will thoroughly analyze the patent application and make sure that it meets all the requirements to award a patent.

Examination

It is important to note that patent examiners are thorough. They will examine the applications in the order received and will individually evaluate each one. An examiner’s job is to make sure that the claims in the application for the invention are patentable. An investigation of the patent will be initiated, and the findings will tell whether there are any discrepancies, restrictions, and prior art to compare. If there are issues with the claim, the examiner will send the applicant a First Office Action. The First Office Action informs the applicant about the allowable parts of the claim and the deficiencies that require to be remedied. In reality, it is common to receive a First Office Action. Applicants should respond and complete all of the requirements that the examiner is requesting as soon as possible.

The examination process can also include a Second Office Action if the requirements of the First Office Action are still not met. It is imperative to consult with an attorney with extensive experience in intellectual property in San Francisco, CA to avoid having to submit multiple actions, responses, and notices.

Once the examination process is complete, and if the examiner approves the application, the examiner will issue the patent.