Prosecution of the Patent Application

Patent Prosecution

Chadeayne LLC specializes in creating and defining inventions that maximize patent protection.  We seek out and define inventions that are supported by both scientific reasoning and the patent laws.  This dual perspective provides inventors with better opportunities for attaining valuable IP.

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 for substantive examination.  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 an 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 in view of the “prior art” considered most relevant by the examiner.

To begin examination, the patent examiner studies the application and searches the relevant prior art.  Then, the patent examiner rejects the claims in a paper called 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 (1) defining patentable subject matter and (2) explaining why that subject matter deserves a patent.  Dr. Chadeayne leverages his combined legal and scientific expertise to capture innovative technology and emphasize why it deserves patent protection.

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 while also deferring the costs of preparing and prosecuting a non-provisional application.

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.