Patenting Patent Prosecution

Patent Prosecution

About Patent Prosecution

After completion of the patent application drafting process, Patent Prosecution begins. Patent Prosecution is a process by which National Patent Office Examiner will review the application for procedural compliance, merits, discrepancies and a search for relevant Prior Art. They compare those findings to the Claims of the application and grant a patent – or, in most cases – return it for amendments issuing an “Office Action”.

Each Office Action requires a timely and adequate response by the you or your agent. In a case of the Examiner arguing for obviousness or anticipation, appropriate argument must be provided to reverse the Examiner’s opinion. You may choose to agree with it and instead amend the scope of the claim in question. The amount of Office Action you might expect is not known, but predictable to a certain extent. Seeking broader protection by using “broad” claims will result in more Office Actions, as the Examiner in his search will be able to find more relevant Prior Art. When claims are “narrowed”, less prior art will be found and less Office Actions issued. However, the scope of protection of your patent will be narrowed as well.

When a patent is filed in multiple jurisdictions, an examiner from each will respond with an office action.   Bear in mind that each examiner will not necessarily cite the same prior art in response to your claims on file.

Your challenge will be to formulate responses for each that will enhance your IP strategy.  Do you accept a ruling, reducing the scope of your claims or dispute it?  Furthermore – strategically, which claims should be disputed or accepted? Would the said on one jurisdiction affect others? If so, how?

Patent Prosecution Pitfalls

Patent Prosecution
Patent Prosecution

Statements you make across jurisdictions can have consequences in other jurisdictions.

For example; statements made in European prosecution can be used against you in US litigation.  From what we have seen, the biggest problems facing most organizations are inconsistencies in claims across jurisdictions and unnecessarily disclosing too much information.   These are pitfalls that can have devastating effects on an organization’s patent portfolio.

Our job is to protect you from these patent prosecution problems.