Patent prosecution: Overview, definition and example
What is patent prosecution?
Patent prosecution refers to the process of obtaining a patent for an invention, which involves interacting with the relevant governmental patent office. This process includes filing a patent application, responding to office actions (such as rejections or requests for clarification), negotiating the scope of the patent claims, and ultimately obtaining the grant of the patent. Patent prosecution involves various legal and technical aspects and is typically handled by patent attorneys or agents who specialize in intellectual property law.
Patent prosecution differs from patent litigation, which involves defending or enforcing a patent after it has been granted. It is the initial phase of securing patent protection for an invention or innovation.
Why is patent prosecution important?
Patent prosecution is important because it is the formal process through which inventors and companies protect their intellectual property. By securing a patent, the patent holder gains exclusive rights to use, make, sell, or license the invention for a certain period, typically 20 years. Effective prosecution ensures that a patent is granted with the appropriate scope of protection, and it helps to avoid unnecessary delays, rejections, or issues with patent claims.
For businesses and inventors, patent prosecution is crucial to securing legal protection for innovative ideas, preventing competitors from using the same technology, and potentially creating a valuable asset that can be monetized through licensing or sales.
Understanding patent prosecution through an example
Imagine a technology startup that develops a new type of battery with improved energy efficiency. The company hires a patent attorney to file a patent application with the relevant national or international patent office. During the prosecution process, the patent office examines the application to determine if the invention meets the necessary criteria for patentability, such as novelty, non-obviousness, and utility. The patent office may issue an office action, requiring the company to clarify or amend the claims in the application.
The startup's patent attorney responds to the office action, providing further evidence or adjusting the claims as necessary. After several rounds of negotiation and amendments, the patent office grants the patent, protecting the company’s invention for 20 years. This process, from filing to grant, is the patent prosecution process.
In another example, a pharmaceutical company may be involved in patent prosecution for a new drug. The company files a patent application, and the patent office examines the application to ensure the drug meets the criteria for patentability. If the patent office initially rejects some claims due to prior art, the company’s patent attorney works to amend the claims or provide arguments to overcome the rejection, eventually securing a patent that protects the drug formulation and its uses.
An example of a patent prosecution clause
Here’s how a patent prosecution clause might appear in a contract or agreement:
“The Company agrees to diligently pursue patent prosecution for the invention described in the attached patent application. The Company shall promptly respond to all office actions and take appropriate steps to protect the scope and validity of the patent claims, including any necessary amendments or arguments to overcome rejections from the patent office.”
Conclusion
Patent prosecution is the legal process of obtaining patent protection for an invention by interacting with a patent office. It involves filing a patent application, responding to requests or rejections from the patent office, and negotiating the terms of the patent until it is granted. Successful patent prosecution ensures that inventors and companies can protect their intellectual property, gain exclusive rights to their innovations, and potentially enhance the value of their inventions.
This article contains general legal information and does not contain legal advice. Cobrief is not a law firm or a substitute for an attorney or law firm. The law is complex and changes often. For legal advice, please ask a lawyer.