Patent Prosecution Explained Full Process

Patent prosecution is the procedure of drafting, filing, and running with the respective patent office to institute security by patent protection over the rights to a distinctive innovation. Patent prosecution involves disagreeing on the patentability of your invented apparatus, devices, processes, or method. This begins with pertaining for and effectively getting a patent from the suitable government organizations. It also engrossed emphasizing the originality of the Intellectual Property through the assent of additional resources, including design outlines and complete commands.

Patent Prosecution Explained Full Process

Patent prosecution is the procedure of drafting, filing, and running with the respective patent office to institute security by patent protection over the rights to a distinctive innovation.

Patent prosecution involves disagreeing on the patentability of your invented apparatus, devices, processes, or method. This begins with pertaining for and effectively getting a patent from the suitable government organizations. It also engrossed emphasizing the originality of the Intellectual Property through the assent of additional resources, including design outlines and complete commands.

However, the phrase defining this process is one that can, at times, be misinterpreted or puzzled by those who are new to the world of IP law. The more information inventor has before getting began, the more likely submission for patent rights will be winning, no matter where inventors are.

Basics of patent prosecution:

Prosecution denotes expressly to filing a patent application with all of the suitable patent offices in the markets where the inventor wants to apply and hold the IP security till the grant of patent. The official procedure largely focuses on reviewing the patent application’s details, involving whether the claimant provides all the necessary details and paid proper tax payments.

States such as France, Germany, and the U.K. has given the higher essential to the procedure called substantial examination which follows bigger lengths, like that providing evidence of the subsistence of the inventive step, to identifying eligibility of patent.

Ultimately, once a patent has been approved in more than one state, inventors can continue the process of prosecution by filing a patent application at a global level with World Intellectual property Organization (WIPO). This permits the inventor to be preserved under the stipulations of the Patent Cooperation Treaty (PCT) and its 150+ assented states, making an inventor's IP rights almost sealed to an international extent.

Procedures included in patent prosecution:

Patent prosecution involves a series of actions as below,

1.The process begins with functioning with innovators to analyzes the inventions- whether or not you want to start with patent and searching for prior art and persisting with writing application of patent.

2. Patent attorney or patent agent submits the application of patent, after that, a patent attorney will supervise the application and converse with inventors the exact position of the application and any feedback from registrar office of the patent. Those feedbacks or responses might include the notices regarding the type of patent application (as like absent parts, or margins or description of a patent that doesn't conform with the rules, payments, and refusal.

3. This process involves the patent attorney working with inventors on a strategy of the patent that readies his/her business sense for them.

4. The procedure of patent prosecution also includes writing a credible patent application to induce an examiner at the patent office to issue that patent which applied.

5. When the inventor gets any feedback from the examiner then Inventors with the help of a patent attorney can consult with an examiner, in writing, in person, over what's the exact invention is and why it must get the patent.

6. At a similar time, the patent examiner should determine whether the application fulfills the prerequisites for patentability as eligibility for the subject matter, novelty, non-obviousness, usefulness, and disclosure.

7. Depending on how this prosecution procedure goes ahead, an investor might be issued a patent immediately after examination or, an inventor may be required to send many responses on the examiner's notice, and perchance appeal the examiner's decision to the concerned appellate board.

Procedures excluded in Patent Prosecution:

  1. Patent litigation is not the patent prosecution process.

  2. Patent litigation includes individuals and organizations asking for legal action means filing the lawsuit – against another person or entity for infringement of the patent.

  3. This process does not include USPTO, IPO, or EPO but the courts in the respective states where it takes place.

  4. Patent litigation does not include patent prosecution by government authority for challenged contravention of laws. No state attorney is involved in such conditions.

  5. Any individual may probably breach patent rights and also contravene to laws, such laws might be related to importing goods or making false claims, in such case, it's not included in patent litigation.

Extra top practices for the prosecution:

Other Innovators or organizations (inventor's competitors) can file third-party remarks disagreeing that inventor's patent application is not patentable before it is even attested. An inventor must have clear guards quickly if such circumstances arise – furthermore underlining the essential of having a powerful legal team to help.

Applicant/inventor also be careful about the timeline and its passage as he/she waiting for the regulatory verdict. When external patent attorneys or examiners from a specific patent office ask for any extra information on the applicant they have to provide it on an urgent basis. If overlooks such inquiry may result in rejecting the patent application almost in all the jurisdictions.

If a patent application is refused during the examination, an inventor must also do filing a notice of appeal or request to talk to the examiner allocated to the inventor's case during a trial as early as possible. Allowing any amount of time-wastage may results in an authoritative lapse if the cut-off time for the solution has terminated. If a patent application has lapsed, a patent attorney can assist to restore it by raising either unintended lapse or appropriate concern, depending on the state laws challenged. For example- At the European Patent Office, we may restore patent application under its stipulations of " restituo in integrum if we can attest that any missed timelines or other matters resulting in the lapse of the application were not our mistakes.

Conclusion:

Hence, in the lawful globe, prosecution typically denotes the plaintiff’s side of litigation. Patent prosecution is extremely diverse from litigation, so the reference to this phrase is frequently confounding to the individuals not well-known with patent jargon. If inventors are seeking a lawyer to litigate another party for breaching the patent rights then inventors are seeking a patent litigator. On the other hand, if inventors are seeking a patent attorney to assist them to develop an intellectual property strategy that involving making and filing applications for a patent at the patent office then they seeking a patent prosecutor. Patent litigators not needed to have the technical knowledge, nor are they needed to give a license to practice before the patent office. Patent prosecution lawyers should both be accredited to practice law also accredited to carry out before the respective patent office.

Know more about what is patent law, see the video below-

 

 

 

 


BY -

Sushama Mhasurle