Patent Prosecution

What is Patent Prosecution?

Once the application has been filed with the U.S. Patent & Trademark Office (USPTO), the next stage (patent prosecution) includes interactions with the USPTO with regards to your application. Cybernetic Law PLLC will facilitate all communications with the patent examiner at the USPTO in order to keep the application moving along.

A patent provides a right to exclude others from making, using, selling, offering to sell, or importing of the claimed invention. That is, a patent, which has a fixed time limit, is a limited monopoly on your claimed invention. For these reasons, the USPTO has a duty to represent the public by only granting valid, high-quality patents. 

Prima Facie Case of Unpatentability

As discussed above, the USPTO has a duty with regards to patents that it issues. In practice, the USPTO issues Office Actions that may include a prima facie case of unpatentability (e.g., an opinion that the claimed invention is anticipated and/or obvious of the prior art). A properly filed U.S. patent application will generally receive a USPTO Office Action within 2-4 years (the USPTO, however, provides various programs to expedite this process). The Office Action may include any objections or rejections that the USPTO Patent Examiner may have with regards to the claimed invention. These objections may be to form, and the rejections may include the prima facie case of unpatentability (i.e., an anticipation or obviousness rejection). 

How to respond to a USPTO Office Action

For simple responses, such as claim objections only or to accept allowable subject matter, a response may be prepared quickly. For more substantive issues raised by the Office Action, we follow a client-driven approach. Specifically, we would forward the Office Action to you promptly and follow-up with a draft response, which may include suggested claim amendments. When appropriate, we may also include various alternative options for responding beyond our draft response. This process typically can be completed in about one month.

There is no limit on the number of Office Actions an Examiner may issue (and hence no limit on the number of responses required). We endeavor to obtain software patents expeditiously by precisely addressing all outstanding objections and rejections raised. Although we cannot make any guarantees on patentability, we can guarantee effort and care in the process. Our approach is to avoid unnecessary delays in the patent process by attempting to timely file a limited number of responses.

Final Disposition

The U.S. patent application may result in one of the following four dispositions: (1) allowance, (2) Request for Continued Examination (RCE), (3) appeal, or (4) abandonment. 

  1. We put most of our effort into allowance to obtain a quality U.S. patent that covers the intended claim scope. 
  2. The RCE is a procedural action that allows for further responses to a subsequent USPTO Office Action(s) when the application has not yet been allowed after the first response. 
  3. If a second Office Action is unreasonable and attempts to reach a compromise with the Examiner and/or the Examiner’s Supervisor are fruitless, an appeal to the Patent Trial and Appeal Board (PTAB) may be used. A PTAB appeal may take years for disposition. 
  4. Finally, an applicant may have a business reason for allowing an application to go abandoned (e.g., by not responding to the Office Action in a timely manner).

Patent Clearance Search Analysis