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Patent Prosecution

The registered patent attorneys at The Plus IP Firm prosecute patent applications for their New York and Tri-State Area clients.  “Patent prosecution” is a term used to describe the interaction between an applicant and the United States Patent and Trademark Office (“USPTO”).   In general, patent prosecution begins with preparing and filing a patent application.  There are different types of patent applications including, a provisional patent application, a non-provisional utility patent application, a continuing patent application (i.e., a continuation, a continuation-in-part application, or a divisional patent application), a non-provisional design patent application, and a reissue patent application.  The type of patent application that an applicant should file depends on a variety of factors including the type of invention, the type of protection required, financial considerations, and a business’s or individual’s goals.

The most important part of a patent application is the “claims” section.  Each claim must be carefully drafted to ensure that the claim properly covers the inventive aspect of the invention and so that the invention receives the broadest protection possible.  It is critical that the claim drafter understands the different meanings that certain words have under the law.  For example, the word “comprises of” and “comprises” have very different meanings when used in a claim.  Using certain words in a patent claim may have a drastic effect on the scope of a claim of a patent or patent application when incorrectly used.  Claim drafting is a skill that takes years to develop.  Additionally, the patent laws related to claim drafting are complicated.  These are reasons why using a registered patent attorney is recommended for the patent drafting and claim drafting process.

A patent attorney licensed to practice with the USPTO is the only type of attorney that can represent inventors before the USPTO.   To be a patent attorney an individual must have specialized qualifications and a technical education background.  Not every attorney has the qualifications and technical background to be a patent attorney.  Additionally, to be a patent attorney an individual must take and pass an examination, known as the “patent bar examination”, and must be barred in at least one state before he or she can represent clients before the USPTO.

USPTO staff will carefully examine a patent application after a patent application is filed.  USPTO staff examines each patent application to determine if the correct USPTO forms have been properly completed and if the patent application meets all the formal filing requirements.  Additionally, a USPTO Examining Attorney also conducts a search, known as a “prior art search.”   A prior art search is a search to uncover what knowledge and other inventions were available before a patent application was filed.  In many cases, inventors and businesses conduct their own prior art search before prosecuting a patent application. Conducting a search before prosecuting a patent application is recommended to determine the probability that an invention will be granted a patent.  A prior art search and patentability opinion helps a business or inventor determine if a patent application should be filed.

If the USPTO staff determines that an invention is not patentable, or if the filing requirements have not been met, the USPTO staff will send correspondence, known as an “Office Action,” to the applicant or the patent attorney of record.  The Office Action will include the reasons and legal arguments supporting the USPTO staff’s position.  An applicant may respond to the Office Action and file correspondence, known as a “Response,” with the USPTO.  A Response typically includes arguments supporting the patentability of an invention and may also include amendments to the patent application.  If a Response to an Office Action is not timely filed, the patent application will go abandoned.  The registered patent attorneys at The Plus IP Firm have years of experience responding to and overcoming Office Actions and are available to answer any patent prosecution questions from New York and the Tri-State Area clients seeking to obtain patent protection.

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