Getting a Patent – Overview

Getting a patent can be divided into two fundamental parts: the inventor's work BEFORE filing the application; and the inventor's interaction with the patent office during patent prosecution

Getting a patent can be divided into two fundamental parts: the inventor’s work BEFORE filing the application; and the inventor’s interaction with the patent office during patent prosecution

Getting a Patent

A simplified version of getting a patent looks like this:

  1. The inventor creates something new; 
  2. The inventor works with a patent professional to draft claims defining the invention;
  3. Those claims are filed in a patent application;
  4. Years later, an Examiner at the patent office examines those claims;
  5. The inventor’s representative argues that the claims should be allowed to issue into a patent;
  6. The Examiner takes a more skeptical approach, usually rejecting the claims;
  7. (Optional) Sometimes the applicant amends the claims to appease the Examiner;
  8. Eventually the claims are allowed to issue into a patent (or the inventor gives up).

The Two Phases of Getting a Patent: Pre- and Post-filing

Getting a patent can be dived into two phases: Pre-filing; and post-filing.  The pre-filing stage involves preparing the patent application.  The post-filing stage (patent prosecution) is very different.  Rather than defining the invention in a patent application, the inventor receives a patent examiner’s criticisms.  Comparing the patent process to getting a PhD: The patent drafting stage is akin to writing a dissertation; the patent examination phase is akin to defending that dissertation.

The second phase of the getting a patent consists of an Examiner at the patent office examining the patent application.

The second phase of getting a patent consists of an Examiner at the patent office examining the patent application.

Getting a Patent – Patent Prosecution

The inventor’s interaction with the patent office is called “patent prosecution.”  Patent prosecution involves correspondence between the Examiner and the inventor’s representative.  (See Patent Process steps 4-8, above). Patent prosecution can include written, verbal, and in-person exchanges between the Examiner and the inventor.  All of this correspondence focusses on whether the claims are patentable.

Getting a Patent Involves  Creating an Official Record

Notably, all of the correspondence between the inventor and the examiner becomes part of the official record in the application.  This record is often referred to as the “prosecution history” or the “file wrapper.”  That record becomes extremely important during patent enforcement and patent litigation because it memorializes the inventor’s representations about the invention.

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