Patent Prosecution

Home Patent Prosecution

Patent prosecution is an industry term that describes the process of drafting, filing and negotiating with the United States Patent and Trademark Office in order to acquire a patent on an invention or design.  Only a patent attorney registered to practice before the USPTO can prosecute a patent application on behalf on an individual or business.  The attorneys at The Plus IP Firm are registered to practice before the United States Patent and Trademark Office and have prosecuted hundreds of patent applications on behalf of clients in the Miami, West Palm Beach, Fort Lauderdale and Naples areas.

To initiate the process of obtaining a patent, a patent attorney must first prepare and file a patent application with the USPTO.  After a patent application is filed, an examining attorney or examiner at the USPTO will review all the documents to determine if the documents meet the USPTO filing requirements.  Additionally, an examining attorney with the USPTO will also conduct a “prior art search”.

A “prior art search” is the term used to describe a search to discover patents, patent applications and other publications that may affect an applicant’s ability to acquire a patent on an invention. It is not legally necessary for an applicant to have a “prior art search” conducted before he or she files a patent application.  However, many applicants choose to have a prior art search conducted and have a registered patent attorney review the results to determine the probability of acquiring a patent on an invention.

Office Actions

If a patent application does not meet the USPTO filing requirements, or an examining attorney does not believe an invention is patentable, then the USPTO will send a document known as an Office Action to an applicant.  If an applicant does not respond to an Office Action within a certain time, a patent application will be abandoned.  It is the job of a patent attorney to respond with legal arguments to the Office Action in order to overcome the rejection.  In many cases, a USPTO examining attorney will issue a rejection based upon the following statutes:

35 U.S.C. § 101 (known as a 101 rejection);

35 U.S.C. § 102 (known as a 102 rejection); and,

35 U.S.C. § 103 (known as a 103 rejection).

101 Rejections

USPTO examining attorneys reject patent applications based on 35 U.S.C. § 101 stating that the invention does not comprise “patentable subject matter”.  If you received a 101 rejection, the patent attorneys at The Plus IP Firm are experienced in responding to such office actions and can assist you in overcoming such rejections. In fact, Mark Terry, Esq., one of the firm’s partners, is a former USPTO examining attorney.  Mr. Terry uses his insight and experience obtained at the USPTO to assist his clients to overcome 101 rejections.

 

102 Rejections

If you received a 102 rejection, you may overcome the 102 rejection by pointing out why the prior art cited by an examining attorney does not disclose all elements of the claimed invention or by amending the claims.  Again, the attorneys at The Plus Firm are experienced in responding 102 rejections.

103 Rejections

The 103 rejection is frequently cited by USPTO examining attorneys.  That is because with a 103 rejection an examining attorney may combine multiple “prior art” citations in order to reject an applicant’s patent application.  If you receive a 103 rejection, there are several arguments that you use to overcome a 103 rejection.

The patent attorneys at The Plus IP Firm keep up date with the patent law and cases in order to respond to the types of rejections listed above.   If you received an Office Action rejecting your patent application, call The Plus IP Firm to put your patent application in the best position to obtain a patent on your invention.