Patent prosecution is the legal process of pursuing patent protection through the United States Patent and Trademark Office (USPTO) or other national patent offices. It involves preparing and filing a patent application, engaging with patent examiners, responding to rejections, and sometimes appealing decisions. The term may sound like litigation, but it actually refers to the back-and-forth negotiation with the patent office to secure enforceable rights. This process includes deadlines, rejections, claim amendments, and examiner interviews, all of which require both strategy and foresight.

What Exactly Is a Patent?

Patents are exclusionary rights. In other words, a patent doesn’t give you the right to create; rather, it gives you the right to stop others from making, using, or selling anything that includes the technology you’ve patented.

There are three categories of US patents: utility, design, and plant patents.

• Utility patents protect inventions like drugs, software, or mechanical devices.
• Design patents protect ornamental features like the shape of a product.
• Plant patents cover asexually reproduced plant varieties.

Why Filing Dates Matter

The filing date sets the benchmark against which a patent is judged. Anything publicly disclosed before that date can count as ‘prior art’ against the application. Missing filing deadlines or failing to fully describe the invention can doom an application before it even begins.

As Brian Landry of Saul Ewing LLP notes, “We always encourage our clients to think about each application almost like you’re making a time capsule. It’s your best chance to get everything in there, and if you don’t, there may be limited opportunities to include that material later on.”

The Office Action

After a patent application is filed, examiners review applications in ‘art units’ (groups of examiners with technical expertise in narrow fields). These examiners get roughly 10 hours to conduct a prior art search and write up an office action.

It will generally take 18 months to 2 years before an application receives a first office action. An office action will outline the examiner’s objections, which may include:

• Novelty Rejections (35 U.S. Code § 102): Someone already disclosed the invention.
• Obviousness Rejections (35 U.S. Code § 103): It would have been obvious to combine known ideas.
• Subject Matter Eligibility (35 U.S. Code § 101): The invention is an abstract idea or law of nature.
• Clarity or Written Description Issues (35 U.S. Code § 112): The claims are too vague or unsupported.

Strategies for Responding

In responding to the office action, the goal is to provide the minimal number of statements and changes that are necessary to overcome the response. Extraneous, unnecessary statements should be avoided.

Typical responses may include submitting declarations from inventors or experts; amending claims to add new details that distinguish the application from prior art; and/or interviewing the examiner to get insight into what changes might work.

As Robert Rosenthal of the Howard IP Law Group notes, “Examiners will often treat a declaration with the same relatively low weight as the argument, so sometimes we have to bring in a supervisor to make sure it’s given proper weight.”

If done right, amending claims can distinguish an invention from prior art while still capturing competitor products. Done poorly, it can leave wide open loopholes. The ultimate goal is to keep the claim focused enough to overcome the prior art objection, but still broad enough to prevent competitors from being able to design around your patent.

An interview with the examiner can be incredibly efficient and can sometimes achieve much more than lengthy written arguments. It also gives applicants the opportunity to humanize the process. As Ellyar Barazesh of Baker Botts observes: “You’re talking to a person. Keeping that relationship positive can go a long way.”

Notices of Allowance and Continuations

Eventually, if the examiner is convinced, applicants will receive ‘a notice of allowance,’ however Landry advises caution here: “Sometimes we will get notices of allowance where the claims are not of great value. Although it’s nice, I don’t recommend automatically taking every claim that is indicated as allowable.”

At this stage, applicants often consider a continuation application, which is a way to keep the same filing date but pursue additional claims. Here, Rosenthal suggests that
applicants may want to file a continuation with the claims narrowly tailored to competitor products, or with broader claims to capture subject matter not covered by the allowed claims.

A Note About Special Rejections

35 U.S. Code § 101 rejections often target software or biotech inventions as ‘abstract ideas.’ Landry notes that this is still an area where the courts and the USPTO are catching up, but that applicants may find an examiner who is practical and able to provide good suggestions during an interview.

35 U.S. Code § 112 rejections hit when claims are unclear or too broad. In responding to this type of rejection, Rosenthal advises that “One approach is to argue that the level of ordinary skill in the art is higher than the examiner thought, making a general description sufficient. But you have to be careful; that same argument could make it easier for them to say your invention is obvious.”

Final Rejections and Appeals

If prosecution hits a wall, the examiner may issue a final office action. While there are appeal options, the path to take will ultimately depend on your budget, business goals, and the strength of your position.

Appeal options include:

• Filing a ‘Request for Continued Examination’ (RCE): This restarts prosecution by paying a fee and gives the applicant the chance to continue amending claims and engaging with the examiner as though the case were not yet final.
• Submitting an ‘After Final Response’ (AFR): A written response addressing the examiner’s rejections, though examiners are not obligated to enter amendments at this stage unless they place the application in condition for allowance. AFRs can be useful for resolving small issues.
• Appealing to the Patent Trial and Appeal Board (PTAB): If the applicant believes the examiner is mistaken on law or fact, they can file a notice of appeal. The appeal process involves an appeal brief, optional reply brief, and sometimes an oral hearing before a panel of administrative patent judges. The PTAB can affirm or reverse the examiner’s rejections, or remand the case for further review.

Final Thoughts

While patent prosecution is undoubtedly complex and time-consuming, a few guiding principles can make the path clearer:

• Treat filing dates like time capsules; get everything in early.
• Expect rejections; they’re part of the process.
• Be strategic with claim amendments, i.e., “don’t win the battle but lose the war.”
• Use examiner interviews to your advantage.
• Think long-term: continuations can protect future business moves.