What is Patent Prosecution?

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  • Written By: Mary McMahon
  • Edited By: Kristen Osborne
  • Last Modified Date: 25 May 2020
  • Copyright Protected:
    Conjecture Corporation
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Patent prosecution is the procedure behind filing for and receiving patent protection for intellectual property. From the time of filing, it can take up to three years to receive patent protection, if the government's representatives determine an application meets their standards. This term is somewhat confusing, as people may take “prosecution” to be a reference to pursuing legal matters in court. When people have to take patent-related issues to court, it is referred to as patent litigation.

The first step in patent prosecution is preparation of an application. People who want patent protection usually work with an attorney who specializes in handling applications, because the process is very complicated, and there are a number of requirements to meet. Attorneys review the information, confirm it is reasonable to apply for a patent, and start the process of filling out documents and pulling together supporting information for the application. When they are ready, they can file with the patent office.

The government assigns an examiner to the case. This person usually has experience in the area covered by the patent, such as pharmaceutical patents or new biotechnology, and will review the application and file a response. The back and forth correspondence between patent office and applicants or their attorneys is the lengthiest part of the patent prosecution process. Often, the government will issue denials of all or part of an application, forcing people to appeal and file new documents to support their claims.

Some governments have a fast track patent prosecution system, where applications with solid cases for granting a patent can be moved through the system more quickly. They also provide assistance with filing for patents in other nations, in some cases; the United States and Australia, for example, have reciprocal agreements allowing people to file for intellectual property protection in both countries more easily.

During the patent prosecution process, people need to be prepared to correspond regularly with the government, present information on request, and come up with responses to denials. People can decide to abandon the process if they feel they are unlikely to get a patent. Patent attorneys will still expect payment for their work, and will bill on the basis of the number of hours of work they completed as part of the patent prosecution process. This usually includes fees for document reproduction, research, staff assistance, and other matters; clients are entitled to a detailed bill breakdown to learn more about the charges.


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