Legal Question in Intellectual Property in California

Re: What is Patent Prosecution

Briefly, patent prosecution is the process for obtaining issuance of a patent. When a patent application is filed, it is assigned a filing date and placed in line for examination by a patent examiner. The patent examiner will search for prior art related to the subject matter of the invention described in the patent application. The examiner will evaluate the prior art to determine if the invention claimed in the application is novel and not obvious in light of the prior art. Typically, the examiner will reject the claims of the patent in a first Office Action on grounds that the claimed invention is not novel and/or is obvious in light of the prior art. Your patent lawyer will analyze the examiner's claim rejections and respond by amending the claims and/or arguing why the claimed invention is novel and not obvious. The examiner will evaluate your patent lawyer's response and will issue a second (and usually final) Office Action. In this action the examiner may allow some claims and reject others. Again, your patent lawyer responds and the examiner may accept or reject the newly amended claims and/or arguments. Claims that have been allowed will result in issuance of the patent with the allowed claims. Rejected claims may be prosecuted further in a continuation application, or alternatively the rejection may be appealed.