Despite the name, patent prosecution is not a litigation process — it refers to the administrative interaction between a patent applicant (usually through a patent attorney) and a patent office. The process begins with filing the application and continues through examination, where a patent examiner reviews the application for compliance with legal requirements including novelty, non-obviousness, and adequate disclosure. During examination, the patent office typically issues one or more office actions — official communications identifying objections or rejections. The applicant must respond to each office action, often amending claims, providing arguments, or submitting additional evidence. This back-and-forth negotiation can involve multiple rounds and may take years to resolve. The prosecution process varies by jurisdiction. The USPTO, EPO, and UKIPO each have different procedures, timelines, and standards. Many applicants file in multiple jurisdictions using the Patent Cooperation Treaty (PCT) to coordinate international filings, though prosecution must ultimately proceed separately in each country or region.
Why It Matters
Patent prosecution determines the scope and strength of your patent protection. Skilled prosecution can result in broad, enforceable claims, while poor prosecution can lead to narrow claims that are easily designed around or patents that are vulnerable to invalidation. The choices made during prosecution have lasting consequences for IP value.
How This Connects to IP Protection
immut supports the patent prosecution process by providing timestamped documentation of your invention's development. This evidence can support declarations of inventorship, establish the timeline of innovation, and provide prior art references during prosecution. Having a clear, blockchain-verified record of your development process strengthens your position with patent examiners.
Common Mistakes to Avoid
Patent prosecution means suing someone: In IP terminology, 'prosecution' refers to obtaining a patent, not enforcing one. The process of suing for patent infringement is called 'patent litigation.' Patent prosecution is the administrative process of working with the patent office to get your patent granted.
A patent attorney writes the application and it gets approved: Patent prosecution is rarely straightforward. Most applications receive at least one rejection or objection from the examiner. The process involves skilled negotiation, strategic claim amendments, and persuasive legal arguments. The average US patent takes 23 months from filing to grant.
Once a patent is granted, prosecution is over: Post-grant proceedings can reopen prosecution. Third parties can challenge patents through inter partes review (US), opposition (EPO), or similar mechanisms. Patent holders may also file continuation applications or request reexamination to modify their claims.
Frequently Asked Questions
How long does patent prosecution take?
In the United States, the average patent prosecution takes about 23 months from filing to grant. However, this varies significantly by technology area — software and business method patents often take longer, while mechanical inventions may be faster. Expedited examination programs can reduce the timeline to under 12 months.
How much does patent prosecution cost?
Total costs typically range from $10,000 to $30,000 or more, depending on complexity and the number of office actions. This includes attorney fees for drafting ($5,000-$15,000), filing fees ($800-$1,600 at the USPTO), and costs for responding to office actions ($2,000-$5,000 each). International filings multiply these costs significantly.
Can I prosecute a patent without an attorney?
Technically yes — the USPTO allows inventors to file 'pro se' applications. However, patent prosecution requires specialised legal and technical knowledge. Statistics show that pro se applications have significantly lower grant rates and typically result in narrower claims. Professional representation is strongly recommended.
Protect Your Intellectual Property Today
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