This is one of several blogs about patenting an invention.

  1. Tell me more about “patent prosecution.”

Patent prosecution is the process of getting the PTO to issue a new patent. At some point after your patent application has been filed, a patent examiner will review it. During that review, the examiner will try to find evidence that someone else has already described your idea. When the examiner finds evidence that seems compelling, the examiner will issue a document called an “office action.” Office actions are official documents issued by the PTO concerning some aspect of a patent application. Most of the time, they explain why an examiner believes an invention is not patentable.

In response to an examiner’s office action, a patent attorney can make all kinds of arguments about why the patent examiner is wrong. The attorney can also modify the claims to more accurately describe the invention or to get around prior inventions the examiner has found. This advocacy process is prosecution. If successful, a patent attorney’s prosecution efforts can result in the examiner allowing a patent to issue. Often, there are multiple rounds of prosecution, with the examiner issuing several office actions and a patent attorney responding with several arguments and/or amendments.

  1. How long does prosecution take?

Depending on the subject matter of the invention, a patent application may not be reviewed by an examiner for several years. So, after a patent application is filed, there is usually a long period of waiting. 

Once an examiner reviews a patent application and issues a first office action, prosecution can sometimes take only a few months, but it can also take several years and involve many subsequent filings. It is therefore hard to predict how long prosecution will take and how much it will cost. For planning purposes, however, it makes sense to plan on about one year for patent prosecution.

Clyde Findley is Special Counsel in the Intellectual Property practice at Berenzweig Leonard. He can be reached [email protected].