The Power Of Patent Prosecution

You have gone through the process of having a patent application drafted for your invention, paid a lot of money in the process, and had it filed with the United States Patent Office (USPTO). You have been waiting patiently for, in most cases, over a year and finally, you get a letter from your attorney saying they have received a notice from the USPTO. You have now entered patent prosecution, a normal and expected stage of the patenting process. As you read the letter you see words like rejected, anticipated, and obvious. All of this can be extremely upsetting and confusing.

Patent prosecution is a give and take process with a Patent Examiner. The process includes a search conducted by the Partner Examiner for prior art. The Examiner then uses the results of their search to explain why they feel that your invention was previously disclosed by the prior art. Do not worry, very often the Examiner has left open arguments by missing an aspect of your invention or misunderstood the invention. This is in part due to the complex nature of having to put a physical invention down on paper in a manner that everyone can understand. At this point, it becomes necessary for you and your attorney to craft a response to the Examiner and point out how your invention can be distinguished from the prior art and is therefore patentable. Very often this process includes claim amendments and legal arguments.

The purpose of patent prosecution is to strengthen the patents that are granted and ensure that an invention is truly novel. Patent prosecution can be an important tool to strengthen a patent that issues for your invention as well. The more rounds of prosecution that your application goes through the more prior art that will be addressed and the more you will be able to distinguish your invention over. This means that a prior art reference has been looked at by the Examiner and a determination has been made that your invention is patentable over that reference. When a reference is overcome at the patent office it is extremely difficult for others to use that reference to attempt to invalidate the patent. This is due to the different rational used at the Patent Office and in the courts.

The Patent Office uses the broadest reasonable interpretation standard while courts use a narrower standard. The broadest reasonable interpretation standard allows examiners to read the claims extremely broadly and often capture elements or features that are not intended to be captured by a claim. The courts use a standard known as the Phillips standard which is narrower than the broadest reasonable interpretation and makes it harder to invalidate a patent once it is in litigation. This is because the courts are careful to read the patent claims in view of the specification and to eliminate the items that are not meant to be captured by the claims. Because the courts have a narrower interpretation if the Patent Office deems a reference overcome a court most likely will too. This is extremely important when it comes to licensing and enforcing your patent rights. The stronger that a patent is the easier it is to enforce and the more valuable it is. While patent prosecution is an added up-front cost to obtaining a patent, it can be well worth the added expense.

With the different standards of review and the additional value that can be added to your patent as a result of prosecution, it is important to progress through prosecution at the proper speed in order to maximize the value. A long extensive prosecution may have a high up-front cost but rushing through prosecution is not always best in the long run. Always consult with a licensed professional to determine the best strategy in responding to your office actions and when entering patent prosecution.