A patent is a type of intellectual property that the inventor could seek protection by filing a patent application. Other forms of intellectual property that are protected include copyrights and trademarks. While the protection for copyrights and trademarks is automatic, one must officially file an application to receive protection under the patent law.
Patent prosecution refers to the typical application for a patent. Patent prosecution also serves to protect the validity of the patent when challenged by reexamination. The main interaction for a patent prosecution is between the patent applicant and the United States Patent and Trademark Office (USPTO). The inventor is generally accompanied by a patent attorney and the patent prosecution process consists of the drafting and filing of the application. The patent prosecution process also could involve a negotiation with the USPTO. Patent protection covers the physical or intellectual invention, as well as the process of the invention. The patent examiner looks into the invention to determine whether the patent law should protect it.
A patent prosecution differs from a patent litigation as patent litigation involves the legal proceedings of the patent infringement after obtaining the patent, while a patent prosecution is not an adversarial process. Instead, the inventor and the patent examiners from the USPTO cooperate to solve the possible problems and address the qualifications of the invention.
A typical patent prosecution begins with a patent search. A patent search provides the applicants with helpful information for them to determine the expected cost in moving forward with the patent application. Generally, a patent attorney will assist the inventor with the drafting and filing of the patent application. There are certain requirements to obtain a patent. For instance, the standard for a utility patent includes usefulness, novelty, and non-obviousness.
Patent examiners check whether the application meets the requirements and formalities of a patentable invention. The patent examiners may also inquire about similar inventions prior to the current patent application to determine the invention's originality. Most amendments to the patent application happen in this stage. In addition, the investigations conducted by the patent examiners work as a file history, which could serve as intrinsic evidence for potential patent litigation regarding the product. The examiner may also request an oral interview for the patent investigation.
After a thorough examination, the inventor will receive a patent or an objection, depending on the status of the invention. In some instances, the patent as a whole is seen as unfit to be patentable. In other instances, the invention may fail to meet some of the criteria. If an inventor faces a rejection, the examiner informs the inventor of the reason for the rejection. The inventor can appeal to the Patent Trial and Appeal Board as a last resort after the rejection based on the same claim twice.
See: USPTO: Patent Process Overview, The American Inventors Protection Act, Diamond v. Chakrabarty, 447 U.S. 303 (1980), Oyez - Patent Cases
[Last updated in January of 2024 by the Wex Definitions Team]