Patent prosecution
Patent prosecution is the interaction between applicants and a patent office with regard to a patent application or a patent.
The prosecution process is broadly divided into two phases: pre-grant and post-grant prosecution. Pre-grant prosecution includes the drafting and filing of patent applications, responding to patent office actions, and navigating the examination process to meet all legal requirements for patentability. This phase requires a strategic presentation of the invention's novelty and inventive step over existing technologies. Post-grant prosecution deals with activities that occur after a patent has been granted. This includes maintaining the patent, handling oppositions or challenges from third parties, and making amendments or corrections to the patent documentation. It ensures that the patent remains enforceable and continues to provide value to the patent holder. Patent prosecution is distinct from patent litigation, which describes legal action relating to the infringement of patents.
The rules and laws governing patent prosecution are often laid out in manuals released by the Patent Offices of various governments, such as the Manual of Patent Examining Procedure in the United States, or the Manual of Patent Office Practice in Canada. The formalities and substantive requirements for filing patent applications and for granting patents vary from one country or region to the other.
Pre-grant prosecution
Preparation of an application
To obtain patent rights for an inventor, the practitioner typically first drafts an application by interviewing the inventor to understand the nature of the invention and help clarify its novel features. Practitioners need to ascertain what is already known to people familiar with the general field of the invention—such already-known material is termed the prior art, and to obtain drawings and written notes regarding the features of the invention and the background.During this initial phase, sometimes termed "patent preparation", the practitioner may also seek to determine precisely who contributed to the making of the invention. A prior public disclosure of the invention or an incorrect listing of inventors may incurably invalidate any patent that might result from an application.
This determination is particularly important in the United States, but may be considered less important in other jurisdictions, because in the US, applications are required to be filed by inventor rather than by patent owner. The practitioner may also seek to find out whether any publications, offers for sale, or other such public disclosures of the invention were made. In the U.S. these laws are laid out in Title 35 of the United States Code, §102.
Under the rules of most jurisdictions, inventor’s own public disclosure or an offer to sell an invention, prior to filing an application for a patent, counts as a public prior art, which destroys the novelty of the patent application and prevents the issuance of a patent. As of May 2023, some countries give the inventor a one-year grace period, when their own disclosures do not count as a prior art to a subsequent patent application, although in practice it is difficult to take advantage of this rule. Austria, Germany, and the UK have a 6-month grace period. Notably, the World Intellectual Property Organization and the proposed Patent Law Treaty do not give any grace period to their patent applications. The practice of the grace period was more common prior to 1970 than it is today.
After drafting an application for patent, complying with any further rules, and obtaining the applicant's permission, the practitioner files the patent application with the patent office. Usually, the practitioner seeks to file the application as soon as possible, because in all countries/jurisdictions presently, if two or more applications on the same subject matter are filed, only the party who filed first will be entitled to a patent under the "first-to-file rule". Until the enactment of the America Invents Act, the United States followed a first-to-invent rule, under which early filing may prevent the use of certain materials from being applied against the patent application as prior art while the patent application is pending before the patent office. However, three consecutive congressional sessions in the United States from 2005–2009 have attempted to change the United States to the first-to-file rule with the Patent Reform Act of 2005, the Patent Reform Act of 2007, and the Patent Reform Act of 2009. Finally, on September 16, 2011, the United States shifted to the first-to-file rule with the enactment of the America Invents Act. Canada and the Philippines were among the last countries to use a first to invent system and they changed to first-to-file in 1989, and 1998 respectively.
Filing an application
Most patent applications have at least two components, including a general, written description of the invention and at least one "embodiment" thereof, and a set of "claims," written in a special style that defines exactly what the applicant regards as the particular features of his or her invention. These claims are used to distinguish the invention from the existing prior art, and are compared by the patent office to the prior art before issuing a patent.Patent applications in most jurisdictions also usually include a drawing or set of drawings, to facilitate the understanding of the invention. In some jurisdictions, patent models may also be submitted to demonstrate the operation of the invention. In applications involving genetics, samples of genetic material or DNA sequences may be required.
Search and examination
The search and examination phases constitute the main part of the prosecution of a patent application leading to grant or refusal.A search is conducted by the patent office for any prior art that is relevant to the application in question and the results of that search are notified to the applicant in a search report. Generally the examiner conducting the search indicates in what aspect the documents cited are relevant and to what claims they are relevant. The materials searched vary depending on the patent office conducting the search, but principally cover all published patent applications and technical publications. The patent office can provide a preliminary, non-binding, opinion on patentability, to indicate to the applicant its views on the patentability and let the applicant decide how to proceed at an early stage.
The search report is typically published with the patent application, 18 months after the earliest priority date, or if it is not available at that time it is published once it is available.
The examination of patent applications may either be conducted at the same time as the search, or at a later date after the Applicant has requested examination.
Examination is the process by which a patent office determines whether a patent application meets the requirements for granting a patent. The process involves considering whether the invention is novel and inventive, whether the invention is in an excluded area and whether the application complies with the various formalities of the relevant patent law.
If the examiner finds that the application does not comply with requirements, an examination report is issued drawing the examiner's objections to the attention of the applicant and requesting that they be addressed. The applicant may respond to the objections by arguing in support of the application, or making amendments to the application to bring it in conformity. Alternatively, if the examiner's objections are valid and cannot be overcome, the application may be abandoned.
The process of objection and response is repeated until the patent is in a form suitable for grant, the Applicant abandons the applications, or a hearing is arranged to resolve the matter.
For 2021, the patent grant rate was 62.7% for the EPO, 74.8% for the JPO, 74.0% for the KIPO, 55.0% for the CNIPA, and 79.2% for the USPTO.
In some jurisdictions, substantive examination of patent applications is not routinely carried out. Instead, the validity of invention registrations is dealt with during any infringement action.
The search and examination process is principally conducted between the patent office and the applicant. However, in some jurisdictions, it is possible for interested third parties to file opinions on the patentability of an application. Such opinions may take the form of a formal pre-grant opposition inter partes procedure or it may simply be an opportunity of filing observations as a third party. Reform legislation is set to create an opposition system in the United States.
An applicant is free to abandon an application during the search and examination process. An application may be abandoned if, for example, prior art is revealed which will prevent the grant of a patent and the applicant decides to save cost by terminating the application. An application may be deemed abandoned by the patent office if the applicant fails to meet any of the requirements of the application process, for example replying to an examination report.