Legal Definitions - Patent prosecution

Patent prosecution refers to the comprehensive legal process involved in obtaining a patent from a government patent office, such as the U.S. Patent and Trademark Office (USPTO). It encompasses all the steps an inventor or company takes, often with the assistance of a patent attorney, to apply for a patent, respond to official communications from patent examiners, and ultimately persuade the office that their invention meets the legal requirements for patentability. The term also includes the subsequent process of defending the patent's validity if it is challenged by others after it has been granted.

Here are some examples illustrating patent prosecution:

• Example 1: Securing a New Technology Patent

  A small technology startup invents a groundbreaking new algorithm that significantly improves data compression for streaming video. To protect their innovation, they hire a patent attorney. The attorney drafts a detailed patent application, outlining the algorithm's unique features and benefits, and files it with the USPTO. Over the next two years, the attorney engages in a series of communications with the patent examiner, responding to questions about the algorithm's novelty and non-obviousness, amending claims as needed, and providing arguments to distinguish it from existing technologies. This entire back-and-forth process, from initial filing to the eventual grant of the patent, is an example of patent prosecution.

• Example 2: Overcoming Patent Office Rejections

  An independent inventor develops a unique, ergonomic tool for gardeners that reduces strain. After filing a patent application, the USPTO examiner issues an "Office Action," rejecting some of the inventor's claims by citing several pieces of "prior art" (previously existing inventions or publications) that the examiner believes are too similar. The inventor's patent attorney then meticulously reviews the prior art, drafts a detailed response explaining why the inventor's tool is distinct and non-obvious compared to the cited references, and potentially amends the patent claims to highlight the inventive aspects. This strategic effort to overcome rejections and persuade the patent office to grant the patent is a core part of patent prosecution.

• Example 3: Defending a Granted Patent's Validity

  A large manufacturing company holds a patent for a proprietary material used in high-performance athletic footwear. Several years after the patent was granted, a competitor files a "post-grant review" petition with the USPTO, arguing that the original patent should be invalidated because new evidence suggests the invention was not truly novel at the time of filing. The manufacturing company's legal team then engages in a defensive patent prosecution process. They gather evidence, submit legal arguments, and participate in hearings before the USPTO's Patent Trial and Appeal Board to demonstrate the validity and enforceability of their patent against the competitor's challenge. This defense of a granted patent's legal standing is also a form of patent prosecution.