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Everything You Need To Know About Patent Prosecution

Typically when most people hear the term “prosecution” they immediately think of civil or criminal litigation, conjuring up images of a courtroom trial. However, when it comes to patent applications, patent prosecution is just part of the process.

What Is Patent Prosecution?

Patent prosecution is the process of going back and forth with the USPTO to come to a resolution of what is actually patentable about your invention, if anything. Typically patent prosecution will begin 1.5-2.5 years after you file your non-provisional patent application or national stage entry. At that point the USPTO will assign a patent examiner who is skilled in the art of your invention to perform their own patent search in an effort to identify any prior art or previously issued patents that your invention may be infringing upon. Genius Patent guarantees that your representative will be a patent prosecution specialist, giving you a leg up in the patent prosecution process.

The patent examiner will examine any of those findings against your patent application and come back with a decision as to the patentability of your invention. This decision will either reject your claims, object to your claims or allow your claims and for applications that include numerous claims (as most applications do) the patent examiner will go through and provide claim by claim decisions and these will be the basis for any further interactions with the examiner.

What Happens If The Patent Examiner Accepts The Claims Of My Patent Application?

Obviously, if the examiner simply accepts and allows your claims, then congratulations, your patent will issue.

What Happens If The Patent Examiner Rejects My Patent Claims?

It is far more common for the examiner to initially reject some claims in an effort to seek greater clarity or because it appears to them that your claims are infringing upon a previous patent or prior art that has been discovered during their patent search. While the likelihood that these initial rejections will occur can be somewhat mitigated by having first performed a thorough patent search, there is no way to guarantee that an initial claim rejection will not happen. However, having first conducted a thorough patent search of our own, we will be much more likely to already be aware of the potential issues that will lead an examiner to initially reject claims and be far more prepared to present our case to the examiner pointing out how your patent claims are unique and indeed patentable. This is called the patent prosecution process. The USPTO allows a maximum three rounds of office actions and responses. If these negotiations do not result in an issued patent, then there is the option to file an appeal. To this point, Genius Patent has a 100% success rate in patent appeals.

The Patent Prosecution Process Is A Negotiation

When a patent examiner initially gets back to you with a decision it is referred to as an “office action.” If the office action involves a rejection of claims, we are able to schedule an “interview” with the patent examiner to discuss the issue in an attempt to either convince them of the differences or to gain clarification as to how the patent application may be amended in order to gain approval. Based on the discussion during the interview with the patent examiner we will file a response that addresses the examiners concerns, explains why and how the invention is different than the prior art, or includes claim amendments that either clarify what those differences are or narrow the scope of the invention so that it avoids other prior art that the patent examiner might be citing. During this process it is fairly typical that we will go through two office actions and two responses before you will get allowed claims. Certainly there are many cases where claims are allowed sooner for inventions that are incredibly unique. However, for inventions that offer improvements upon existing concepts, which covers most inventions, typically the patent prosecution process will involve two rounds of office actions and responses on the way to achieving allowed claims.

All Final Decisions About Patent Claims Are Up To The Inventor

During the patent prosecution negotiation with the USPTO, Genius Patent will represent your best interest and clearly explain any roadblocks to patentability that the patent examiner has identified and negotiate with the patent examiner to clarify any and all options to amending claims so that they are allowable. However, as claim amendments can have ramifications as to the scope of protections delivered by the patent, it is ultimately up to you, the inventor, to decide what claim amendments are acceptable. As your representatives it is our job to do all of the legwork and to ensure that you clearly understand the situation and are well informed and able to make a decision that is in your best interest.

Patent Prosecution Costs

Service Genius Patent Fees USPTO Small Entity Fee USPTO Micro Entity Fee
Reporting Of Office Action $0 $0 $0
Response To Office Action (w/ Interview) $1,875 $0 $0
Response To Notice Of Allowance $400 $480 $240