Understanding Patents

Patent Prosecution

Once a patent is filed, prosecution of the patent begins. Patent prosecution is essentially a negotiation and debate between the inventors and TTO on one side and the Patent Office examiner on the other.

During the prosecution, the patent examiner looks for reasons not to allow the claims of your patent, which may include a lack of novelty or usefulness, or the obviousness of your invention in addition to inadequacies of the application itself, and we argue against the validity of those reasons or amend our claims to address them.


patent prosecution diagram

Office Actions

Communications from a patent office examiner to TTO's patent attorney are called Office Actions. Office actions come in a variety of flavors. Some office actions address the patentability of the application. They may reject all of the claims in the application, reject some and allow some, or allow all claims in the application. Sometimes claims are allowed with conditions, such as that the limitations of all the claims from which it depends be incorporated into it. Other office actions address other issues. For example, if the patent office deems that the application contains more than one distinct invention, it will issue a Restriction Requirement, requiring that the applicant choose one invention and drop any claims related to the other inventions. These "restricted out" claims can be pursued at any time during the pendency of the original application or of any of its descendents simply by filing a new patent application which includes some or all of these claims. These applications are called Divisional patent applications, and are identical to the original application except in the claims section.

Other applications based on the original or parent application can be filed. A Continuation patent application is a patent application that is identical to the original patent application but contains new claims that were not in it. A Continuation-in-Part patent application is a patent application that is based on the original patent application but contains new matter and claims based on that new matter. While the priority date for divisional and continuation patent applications is the same as for the original application, the priority date for a continuation-in-part or CIP is the date on which the CIP is filed. The priority date defines what is prior art and what is not; prior art is everything publicly known before the priority date.

Applications are entitled to two office actions for each application fee paid. The first is referred to as a Non-final Office Action. If the examiner has rejected any of the claims, TTO and the inventor, often with the aid of our attorney, will consider the reasons for the rejection stated in Non-final Office Action and any prior art cited by the examiner in support of his rejection. If we feel that the examiner is mistaken in his understanding of either the present application (i.e., yours) or the prior art, we will submit an Office Action Response containing our counterarguments or different interpretation. If we feel that the examiner's rejection was valid, we will either abandon the application or file an Office Action Response containing amendments to the current rejected claims along with arguments as to why these amendments make the claims allowable. Office Action Responses are written by the attorney representing us on this patent, but the arguments used by the attorney are more often that not supplied by the inventor and TTO working together. The examiner usually provides a set deadline by which a response can be made without additional fees, but extensions of the deadline to up to six months after the date of the Office Action can be obtained by payment of a fee which escalates sharply with the number of months of the extension.

Final Office Action

The second response is a Final Office Action. The options for responding to a final office action rejection are the same as those described above, with one important exception. If an Office Action Response is submitted within two months of the issuance of the Final Office Action, the patent examiner is required to issue an Advisory Action in which the examiner informs the applicant as to whether the Response places the application in condition for allowance (all claims allowable either as is or with certain procedural changes), or whether at least one of the claims remains rejected. In the former case, the applicant simply has to make any required changes for the patent to be granted and issue with the current claims.

If a patent's claims are still rejected after the Advisory Action, TTO can choose one of two courses. The first, and most common, is to file a Request for Continued Examination (RCE) with an amended set of claims, or with the same claims. An RCE, for which the fee is the same as for a new patent application, simply restarts the prosecution, buying the applicant another two office actions. If after the next two office actions the application is still rejected, another RCE can be filed. A record of all communications with the Patent Office is contained in the File Wrapper for the case which can be accessed at the USPTO Public Pair portal. This process can continue until claims are allowed and the patent issues, or TTO abandons the patent's prosecution.

Appealing a Rejection

The alternative is that the application can appeal the rejection. The first step is to file a Notice of Appeal followed within two months by an Appeal Brief. The Appeal Brief contains the applicants arguments as to why the examiner is in error, and is most appropriately used in cases where the examiner is unresponsive to reasonable arguments or unable to fairly consider the claims. However, appeals can be made only on certain grounds too complicated to get into here, so there need to be valid reasons why the examiner is wrong. Often the filing of an Appeal Brief will cause the examiner to re-examine his decision and agree to allow the claims, as otherwise the examiner needs to prepare a response. The appeal is decided by the Board of Patent Appeals, although it can be appealed through the Federal Circuit up to the Supreme Court. Appeals are costly and will only be pursued in extraordinary circumstances.