Patent prosecution is the process of converting a patent application into one or more granted patents by persuading a patent examiner that your claims are patentable.
The first patent application disclosing a new invention is usually a provisional application. Provisional applications don’t get examined and they never mature into a patent. The function of a provisional application is to establish a priority date by demonstrating possession of the invention. This priority date only applies to subject matter disclosed in the provisional application. Thus, a provisional application should describe every aspect of your invention, and it should have a full set of claims.
Provisional applications are only valid for one year. You must file a PCT or a regular US application before the provisional expires. This will be your last opportunity to add data and additional ideas.
A PCT is an international patent application, but its primary function is to extend the time before you have to decide where to file national phase applications for a total of 30 or 31 months. Patent prosecution costs explode when you file applications in multiple countries. The 30-month delay provides time to learn more about the value of the claimed invention before incurring these costs.
A regular US patent application is called a non-provisional or utility application. A non-provisional application can be filed directly, or it can claim priority from a provisional application or PCT. US applications are examined by the US patent and trademark off ice and can mature into a US patent which only protects against making, using or selling the claimed invention in the US.
The first office action is usually called a restriction requirement. Restriction requirements reduce the examiner’s workload by dividing the claims into groups. The applicant must select one group for continued prosecution and withdraw the other claims. The withdrawn claims can be filed again in a divisional application.
The next office action will be a non-final rejection. This is the first office action on the merits of the claims. The examiner will explain all the grounds for rejecting every claim. The applicant will be given three months to respond to every rejection in writing. The response will include claim amendments where the examiner makes a solid rejection and arguments when the examiner is wrong. The applicant also has the option to request an interview with the examiner. Interviews help advance prosecution by facilitating a dialog to clarify the issues and resolves misunderstandings.
The third office action will be called a final rejection. Don’t be alarmed by this term. You can continue prosecution by paying an additional fee with your response.
The examiner will issue a notice of allowance when she’s persuaded that your claims are patentable. Before proceeding to grant by paying the issue fee, you should decide whether to file a continuation or divisional application. These applications have the same specification as their parent, but different claims.
Startups are often motivated to obtain an allowance quickly, so they narrow the scope of their claims even when they disagree with a rejection. Filing a continuation offers the possibility of pursuing broader claims with less time pressure. You may also want to keep a patent family open to preserve your ability to file claims covering a product a competitor might sell in the future.
