How does patent prosecution work?

Most of us know that patent exist. But how do one get a patent? What does the patent process look like? How long does it take to get a patent?

I’ll try to go through some basic answers to these questions with the help of a quick visual.

Utility Patent Prosecution

The graphic above shows the United States utility patent prosecution process broken into three phases: filing, prosecution, and allowance and issuance.

Initial Filing Date

When it comes to prosecuting a US utility patent application, once the application is filed, it will be assigned to an examiner, beginning the prosecution phase. If international protection is important for you or your business, note that there is a one-year deadline from an application’s earliest priority date to file international (PCT) applications that claim priority to this utility application.

In some cases, a filing can benefit from an earlier filing, giving it an earlier priority date than its filing date. When filing within one year of certain filing types (e.g., a provisional patent application filing), your utility patent can claim priority to that earlier filing, thereby benefitting from its filing date. This is intended to prevent prior art that arises in between filing dates from being cited against your utility patent.

Prosecution

During the prosecution phase, the USPTO examines a patent and then, in some cases, sends office actions to the applicant or the applicant’s representatives (e.g., lawyers or patent agents) explaining why your patent is not yet in condition for allowance. One of the most common reasons is the existence of “prior art” (e.g., publicly available documents including patents and patent applications) that preclude allowance. This begins an iterative process of amending claims and presenting argument why the amendments are not taught in the prior art. Each time an office action response is submitted, there is a chance to receive another office action. There is no set amount of office actions that can the USPTO can send, and there is no guaranty a patent will ever leave this phase—but one way to improve the chances of getting to a notice of allowance is to use a good lawyer or patent agent to respond to those office actions.

Allowance and Issuance

Once an examiner is satisfied that a patent’s claims are not taught anywhere in the prior art (and that any other issues raised in the office actions have been addressed), you will receive a notice of allowance. Continuation applications can be filed up until the patent issues, so at this stage it would be time to make that decision.

A continuation can claim priority back to an earlier filing so long as it does not contain any new subject matter. Continuations can be useful from a patent portfolio strength perspective, as it can, for example, allow new claims to be submitted that are custom drafted to block would-be infringers from changing just one feature without really departing from the spirit of the invention. Such design-arounds may avoid infringement of the parent patent—which is why a continuation application that refines claim language to capture the spirit of the invention can be beneficial to avoid such obvious “design arounds” that infringers may use as a transparent means to avoid paying the inventor for technology they’ve appropriated to themselves. Ask your lawyer if filing a continuation makes sense for you.

This is not legal advice.