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Prosecution

Definition

The entire process of applying for a patent at the USPTO — from filing to grant or abandonmentabandonmentWhen an applicant fails to respond to an office action in time, the application is abandoned and the case closed.Read more →. ProsecutionprosecutionThe whole process of moving a patent application from filing through grant or abandonment at the USPTO.Read more → includes submitting the application, responding to office actions, amending claimsclaimsThe numbered statements at the end of a patent that legally define what the inventor owns.Read more →, conducting examinerexaminerThe USPTO official who reviews a patent application and decides whether to grant it.Read more → interviews, and ultimately receiving a notice of allowancenotice of allowanceUSPTO document signaling claims are allowable and a patent will issue once the applicant pays the issue fee.Read more → or deciding to appealappealAfter repeated rejections, an applicant can appeal to the PTAB — and from there to federal court. Slow and expensive.Read more → or abandon. The full record of prosecution is preserved in the file wrapperfile wrapperThe complete public record of communications between an applicant and the USPTO during prosecution. Used in litigation to interpret claim scope.Read more →.

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Office Action DeadlinesHow to File a Patent

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File wrapper

The complete record of all communications between an applicant and the USPTO during patent prosecution — including the original application, all office actions, all responses, and the notice of allowance. Also called the "prosecution history." The file wrapper is public and permanent; courts use it during litigation to interpret the scope of claims based on statements the applicant made to the examiner.

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Notice of allowance

A document the USPTO sends when an examiner has determined that the claims in a patent application are allowable and a patent will be issued — once the applicant pays the issue fee. Receiving a notice of allowance means prosecution is essentially over. The applicant typically has three months to pay the issue fee.

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Appeal

A request to have a patent examiner's rejection reviewed by a higher authority. After receiving multiple rejections, an applicant can appeal to the Patent Trial and Appeal Board (PTAB) within the USPTO, and from there to federal court. Appeals are expensive and slow, but sometimes necessary when an examiner applies the law incorrectly.

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Examiner

A USPTO employee trained in a specific technical field who reviews patent applications for compliance with patent law. Examiners search prior art, write office actions rejecting or allowing claims, and conduct interviews with applicants or their attorneys. The examiner assigned to your application has significant discretion in how they interpret your claims and apply prior art.

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Obviousness

A grounds for rejection under 35 USC § 103 when an invention, while not identical to any single prior art reference, would have been obvious to a person having ordinary skill in the art at the time of invention. Examiners frequently combine two or more prior art references to make an obviousness rejection. It is the single most common rejection in patent prosecution.

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Patent

A government-granted right that gives an inventor the exclusive right to prevent others from making, using, selling, or importing a patented invention within the country that granted the patent, for a limited time. A patent does not give the owner the right to practice the invention — only the right to exclude others. The US issues three types: utility, design, and plant patents.

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