Prosecution of the Patent Application

Patent Prosecution

Chadeayne LLC  represents inventors during all stages of patent prosecution.  Our firm specializes in arguing on behalf of inventors throughout their correspondence with the patent examiner.  We advocate for inventors by combining legal arguments with scientific reasoning.  This two-pronged attack to prosecution provides better arguments and results in better patents.

Patenting an invention requires four important steps: (1) drafting claims that define the invention; (2) drafting an application that describes the claims; (3) filing that application with the United States Patent and Trademark Office (“USPTO”); and (4) arguing that the claims are patentable.  Patent prosecution refers to the applicant’s interaction with the USPTO.

Patent prosecution begins with filing an application at the USPTO.  About two years after filing, that application is assigned to a patent examiner.  The patent examiner handles the case until the claims are allowed or the applicant resigns the case, letting it go abandoned.

Examination Stage of Prosecution

Examination is the most important stage of patent prosecution.  During this stage, the applicant and the examiner argue about how much property should be granted to the inventor.  While the scope of that property was originally defined by drafting the claims, the examination stage adjusts that scope.

To begin examination, the patent examiner studies the application and searches the relevant prior art.  Then, the patent examiner rejects the claims in an Office Action.  In the Office Action, the examiner provides reasons for rejecting the claims.  The applicant must respond to the Office Action by addressing each of the examiner’s rejections.  The applicant can traverse the rejections by amending the claims or presenting reasons for why the examiner’s rejection was improper.

Chadeayne LLC specializes in responding to Office Actions.  Our firm uses both legal reasoning and scientific expertise to overcoming the examiner’s reasons for rejecting the claims.

Preserving Priority by Filing a Provisional Patent Application

In many cases, a patent applicant benefits from filing a provisional patent application before filing a “regular” or non-provisional patent application.  Although the provisional application is not examined by the patent office, it preserves the inventor’s priority to the invention.  Filing a provisional application gives the inventor one year to develop the invention before filing a non-provisional application.  That year is not subtracted from the applicant’s patent term.  Accordingly, filing a provisional patent application is an attractive way to begin patenting an invention.