Patent Prosecution

We can help clients obtain patent protection. The preparation and prosecution of a patent application can be summarized as a series of steps.

First, a patent attorney will review your invention disclosure and make a recommendation as to whether to perform a patent search.

Second, a patent attorney will prepare a draft patent application for the client’s review. If the draft is acceptable to the client, the attorney will file the application in the U.S. Patent and Trademark Office (the “USPTO”). The USPTO requires an applicant to pay a filing fee when an application is filed.

Third, the USPTO will examine the patent application after it is filed. The filing of a patent application does not guarantee issuance of a patent. The USPTO employs patent examiners who examine each application to determine whether it meets various requirements of patentability.

Each examiner makes an independent decision on the patentability of each patent application. In most cases, the first action taken by an examiner is a rejection on the merits. It is then the responsibility of the attorney and the client to respond to the rejection by either pointing out why the examiner’s position on the rejection is incorrect or amending the patent claims to overcome the rejection.

The correspondence between the patent attorney and the examiner is known as the prosecution history of the patent application. It is basically a negotiation process between the examiner and the attorney representing the applicant.
The cost of prosecuting a patent application is variable and is determined to a great extent by the actions that the USPTO takes after the application is filed. In most cases, an applicant must file at least two responses to Office actions. If the examiner does not allow the application and an appeal is filed before the Patent Trial and Appeal Board, then the cost of prosecution will be considerably higher.

Fourth, if the USPTO determines that the patent application is eligible for patent protection, the applicant will have to pay an issue fee to the USPTO. Then, the patent application will issue as a patent.

Fifth, the patent owner will have to pay up to three maintenance fees to the USPTO after your patent issues. The first fee will be due 3.5 years after your patent has issued. Generally, a law firm will continue to represent a patent owner after a patent is issued in order to ensure that the maintenance fees are paid. However, a patent owner can make other arrangements to ensure that the maintenance fees are paid.

Please note that applicants may elect to abandon the application at any time during this process to eliminate further expenses.