1. 1
Patent Prosecution
Training
Basics
of
Patent Prosecution Process

2. 2
?
Patent Practitioner:
A person who stands between an
engineer or scientist with the appropriate
technical background.

3. 3
Module C
1. Basics of Patent Prosecution Process
2. Patent Glossary
3. Operational Knowledge for Practicing Patent Law
4. Prior Art
5. Patent Specification Drafting
6. Claim Drafting
7. Advanced Claim Drafting
8. Prosecution of Patent Application
9. Patent Prosecution vs. Patent Litigation Issues
10. Concluding Session

4. 4
Patent prosecution …
• Patent prosecution describes the interaction between
an applicant, or their representative, and a patent office
with regard to a patent, or an application for a patent.
Broadly, patent prosecution can be split into pre-grant
prosecution, which involves negotiation with a patent
office for the grant of a patent, and post-grant
prosecution, which involves issues such as post-grant
amendment and opposition.
• Patent prosecution is distinct from patent litigation,
which describes legal action relating to the infringement
of patents. http://en.wikipedia.org/wiki/Patent_prosecution

5. 5
Patent prosecution
• 1 Pre-grant prosecution
– 1.1 Preparation of an application
– 1.2 Filing an application
– 1.3 Search and examination
– 1.4 Deferred examination
– 1.5 Invention registration
– 1.6 Appeals
– 1.7 Abandonment
• 2 Post grant prosecution
– 2.1 Opposition
– 2.2 Reissue, Reexamination and Interference

6. 6
Inventor
Idea Working Model
Idea Reduced to Practice

7. 7
Patent Application
Inventor Describe the invention in words Patent Application Patent OfficeMail to

8. 8
Inspection
Specifications
Drawings
Claims
Name &Address of Inventor
Inventor’s Declaration
Filling Fee
Application Inspection

9. 9
Serial Number
Application Folder

10. 10
Classification
Electrical
Mechanical
Chemical
Biotechnical

11. 11
Search of Prior Art
Patent Examiner

12. 12
Claims and Specifications
Claims Described and Supported Details in
Specifications

13. 13
Claims of Patent Application
Patentable Subject Matter

14. 14
Claims
Process
Machine
An Article of Manufacture
Composition of
Material

15. 15
Invention
Is it NEW?
Has this been done before the
APPLICATION?
Are CLAIMS NOVEL in it?

16. 16
Invention
Is it OBVIOUS?

17. 17
Finer Points
Is the INVENTION as
CLAIMED described in the
SPECIFICATIONS?
Examiner must satisfy himself and
determine whether the claims are
supported by the specifications?
Is the Specifications
adequate to support
the claimed invention?

18. 18
Claims
Are they CLEAR and
DEFINITE?
Are they
UNDERSTANDABLE?

19. 19
FIRST OFFICIAL ACTION
Patent
Examiner
Inventor
Written Opinion under USC
section 102, 102, 103, 112
FIRST
OFFICIAL
ACTION

20. 20
Review
First Official
Action
AmendmentInventor

21. 21
After Amendment
Amendment
Overcomes
All Objections
& Rejections
Does Not Overcome
Objections & Rejections
NOTICE
OF
ALLOWANCE
FINAL
REJECTION
Allowed
Rejected
Examine

22. 22
ACCEPTED
Amendment
Overcomes
All Objections
& Rejections
NOTICE
OF
ALLOWANCE
Allowed
Examine

23. 23
REJECTED
Amendment
Does Not Overcome
Objections & Rejections
FINAL
REJECTION
Rejected
Examine

24. 24
After Final Rejection
Review Final
Rejection
AMENDMENT
AFTER FINAL
REJECTION
Final arguments and
minor Amendments

25. 25
Action: Amendment after Rejection
AMENDMENT
AFTER FINAL
REJECTION
Examiner considers
the AMENDMENT
Satisfied
NOTICE
OF
ALLOWANCE
FINAL
REJECTION
Not
satisfied
Allow
Advisory Action

26. 26
APPEAL!
Appeal is Filed Arguments
Examiner was
mistaken
Allowed
NOTICE
OF
ALLOWANCE
Examiner was
RIGHT
Rejected
REJECTION
STAYS

27. 27
FLOW CHART
http://www.techtransfer.iastate.edu/en/for_iowa_state/educational_resources/patents_and_the_patenting_process.cfm

28. 28
MPEP
From this presentation, one may be tempted to conclude
that patent prosecution is a fairly straight forward affair.
In most of the cases, the answer is yes. However, it is
worth remembering that the Manual of Patent
Examining Procedure (MPEP) is a 3000+ document;
and the worst part is that it is not a static document.
The laws, rules and forms keep on changing. Even the
basic fundamentals change over time to include newer
areas like biotechnology.

29. 29
Thank You
Good Luck
for
your journey
to
Patent Law Practitioner