Patent Prosecution

Patent prosecution is the process that takes place after your patent application has been drafted and filed.  Most patent applications will be rejected at least once prior to grant.  An effective advocate during patent prosecution will respond to in a way that gives you the best chance of getting a patent allowed with the least time and expense.  Let me be your advocate!

Applicants are often frustrated by the patent prosecution process.  Rejections can be difficult to make sense of.  Those new to the business often get the impression that certain examiners are unreasonable or even hostile to the granting of patents.  The truth is that the Patent Office is in the business of granting patents.   Examiners are willing to work with applicants.  If an application describes a patentable invention, the examiner’s objections can generally be met without having to go so far as filing an appeal.

The key to effective patent prosecution is engaging the examiner in discussion.  If an examiner seems to be unreasonable, that generally indicates the need to for a better understanding of the examiner’s position.  Sometimes, the examiner has interpreted the claims in an unexpected and unintended way.  Sometimes, the examiner has not carefully reviewed or fully understood the prior art on which the rejection is based.  In almost every situation, the examiner’s position can be elucidated with a telephone call.  A constructively engaged examiner will be forthcoming and may even suggest claim amendments that will address the rejection without narrowing the claims to an unacceptable degree.

Other experienced practitioners will take this same approach, but a strong science background gives me an edge.  While attorneys love to argue law, the best arguments in patent prosecution are generally grounded in technology.  If I can interpret and explain the prior art convincingly, that creates a kind of credibility and trust that can be of tremendous benefit to my clients.  The laws that determine patentability includes a large grey area.  Within that large grey area, effective advocacy leads to superior results.

It is easiest for me to prosecute patent applications that I have drafted, but I can also help you with applications drafted by other attorneys.  I’ll also give you an honest opinion as to the likelihood of your eventually getting your patent granted.