Patent Prosecution

Service description

Patent prosecution takes an invention from idea to issued patent: preparing the application, filing it with the USPTO, and answering the examiner's objections until the claims are allowed or abandoned. Only attorneys and agents registered with the USPTO may do this work for others, and the best fit is a practitioner trained in the invention's technical field.

Common industries

Applies to inventors and companies in technology, life sciences, engineering and manufacturing.

ROI

A granted patent protects a core asset and can drive valuation and licensing; the routing to the right technical specialty matters.

Benefit

Prepare and prosecute patent applications before the USPTO to protect an invention — by a registered practitioner in the right technical field.

Why get it

Public disclosure or sale of an invention before filing can limit the right to a patent, and how the application is drafted sets what the patent can cover. Getting it right at the start is cheaper than repairing weak claims later.

When you benefit

A one-time filing followed by rounds of correspondence with the examiner, which continue until the application is allowed or abandoned.

What it costs

Flat or hourly fees.

When you pay

Drafting and filing is often quoted as a flat fee, while responses to the examiner are billed per response or hourly. Payment is commonly staged, with a deposit before drafting and a payment at each filing.

Other costs

USPTO filing and other government fees, plus drawings or a prior-art search if the application needs them.

Risks to know

Disclosing or selling the invention before filing can limit the right to a patent under 35 U.S.C. §102. A vague or narrow application can produce a patent that doesn't cover what the business needs to protect, and applicants have a duty to disclose known material information to the USPTO (37 CFR §1.56).

When risks arise

The biggest risk comes before filing, when disclosure decisions are made. Weak drafting usually surfaces later, when the examiner rejects the claims, or when the patent is licensed or challenged.

The process

The provider interviews the inventor, searches for prior work, and drafts the application with claims and drawings. The business reviews the draft before it is filed. After filing, the provider answers the examiner's office actions, with the business approving each strategic step, until the application is allowed or abandoned.

Your commitment

The inventor shares a complete description of the invention, with drawings, test results, and any prior public disclosures or sales. The business should identify every inventor, confirm who owns the invention, and say which markets matter, since those shape the claims.

Documents to gather

• A written description of the invention and how it works
• Sketches, drawings or prototype photos
• A record of any public disclosures, sales or offers to sell
• A list of all inventors and any ownership assignments

Helpful reading

• Patent Basics — U.S. Patent and Trademark Office
• Patents — World Intellectual Property Organization
• patent — Legal Information Institute, Cornell Law School (Wex)

Further research

• 35 U.S. Code § 101 — Inventions patentable
• 35 U.S. Code § 102 — Conditions for patentability; novelty
• 35 U.S. Code § 103 — Conditions for patentability; non-obvious subject matter
• 35 U.S. Code § 112 — Specification
• 37 CFR § 1.56 — Duty to disclose information material to patentability
• 37 CFR § 11.6 — Registration of attorneys and agents
• USPTO — Manual of Patent Examining Procedure (MPEP)