What Are the Stages of Patent Prosecution?
The patent prosecution process generally involves a pre-grant stage, comprised of preparing and filing the patent application, arguing and negotiating with the USPTO, and the granting of the patent, and a post-grant stage wherein the rights afforded by the patent are maintained and enforced for the remainder of the patent period.
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Somewhat counterintuitively, the term “Patent Prosecution” simply refers to the process of obtaining a valid patent from the United States Patent and Trademark Office (USPTO)—you might hear a patent attorney say the phrase, “I’m prosecuting a patent with the PTO.” This name, however, derives from the intensive and somewhat argumentative process required. Further, the term also encompasses a post-grant stage involving maintaining and enforcing the rights in the granted patent.
The pre-grant stage begins with what is sometimes referred to as the ideation stage, wherein the inventor(s) thinks up their innovative idea. Then, the inventor begins the search stage and scours patent databases to see if the idea is already out there or if something similar had previously been rejected by the USPTO. Once this is complete, a patent application is prepared comprised of detailed patent claims and drawings, this is the drafting stage. A patent examiner with the USPTO then engages in a patentability analysis to determine if the idea meets the required criteria. If the examiner believes the application is incomplete or has errors, the inventor will be sent an office action from the USPTO detailing these issues, which must be addressed or risk abandonment of the application.
Assuming the patent is granted either initially or after tweaking in response to an office action, the post-grant stage then begins. Herein, the USPTO requires payment of maintenance fees 3.5, 7.5, and 11.5 years after the date of the grant. Further, others may begin to sell products infringing your patent, which will require enforcement and legal action to protect the immense value afforded by the patent grant. Additionally, competitors may move for reexaminations of the patent or challenge its validity so as to allow their would-be infringing products to enter the market legally. Any such challenge requires competent and experienced counsel who can navigate the contours of these complicated matters.
For more information on patents and intellectual property in general, see our patent services and intellectual property practices pages.
Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.
This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.
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