Patent prosecution is the processing of a patent application through the US Patent and Trademark Office. The term encompasses all of the back-and-forth communications, letters, interviews, and actions between the US Patent Office and the applicant, generally through a patent attorney.

Patent prosecution begins once a patent application has been filed. An Examiner at the US Patent Office having experience with the inventive technology will be assigned to the application. When the Examiner begins examining the application, typically after about a year, he or she will perform a search for relevant prior art. Prior art is the body of inventions, patents, patent applications, publications, and other disclosures which preceded the filing date of the application. If the Examiner finds relevant prior art, it will be cited against the invention. The Examiner will reject the patent application as lacking novelty, being obvious in light of the prior art, or both. The rejection is made in a written communication known as an Office Action.

The applicant must respond to the Office Action to keep the application alive. Failure to respond results in the abandonment of the application. Responses must be considered and written very carefully. There are a number of ways a rejection can be argued and overcome, but crucial to the ability to make those arguments is the strength of the underlying application. If an application is poorly written from the outset, it can be extremely difficult to prosecute all the way to issuance.

Often, but not always, the patent attorney that drafted the application will also later prosecute it. Sometimes, however, inventors will have a change of heart and hire a new patent attorney to prosecute the application. The attorney with the best likelihood of successfully prosecuting the application should be used. Tom Galvani has not only prosecuted many of his own applications to issuance, but has taken over many applications written by clients and other attorneys and gotten them issued. If you need more information about the patenting process, please contact patent attorney Tom Galvani at 602-281-6481.