Patent Search

Patent Prosecution: An Overview

Patent Prosecution Firm

Patent prosecution relates to the interaction between Applicants (typically through a professional patent practitioner) and patent-office examiners with regard to a patent application meeting the criteria for obtaining a patent grant or allowance. The process involves legal negotiation within the context of the state of the art related to an applicant’s invention, as well as satisfying the thresholds for novelty and non-obviousness (or inventive step) requirements, while keeping sight of the goals of the IP strategy & management framework.


A patent-prosecution practitioner must have strong capabilities in assessing the relevance of prior art cited by an Examiner, determining the extent that the claims need to be amended while maintaining as broad a scope as possible, and constructing sound legal arguments supported by the patent specification that are based on the patent code of law for the relevant jurisdiction – the domain of an experienced patent prosecution firm.


In achieving the goals of a client, it is important for a patent prosecution firm to realize that prosecution of a patent is a time-bound process. The USPTO manages the efficiency and efficacy of its patent examiners through a policy known as “compact” prosecution. Compact prosecution is meant to optimize the cycle time of the patent examination process. In the words of the USPTO:


Compact prosecution is:

  • conducting an initial search which is as complete as possible;
  • citing pertinent art on the record in keeping with the scope of the claims as well as significant aspects of the disclosed invention;
  • issuing a complete first Office Action which clearly explains the examiner’s position on each essential issue; and
  • identifying allowable subject matter in an effort to expedite prosecution.


Whether the approach accomplishes its goals is an entirely different discussion. Other patent offices have alternate examination protocols such as the holistic “problem-solution” approach of the EPO. Every method has its own tradeoffs with regard to quality and throughput from the patent-office perspective. However, what compact prosecution means to the Applicant is that one has a limited opportunity to clarify and resolve the issues that need to be overcome in order to receive an allowance. Otherwise, a final Office Action can be issued before the Applicant has fully comprehended what concerns need to be completely addressed.


The internal processes of the patent offices available to the patent practitioner (such as declarations, interview, appeal, protest, continuation, reissue, and reexamination in the USPTO, as well as division and opposition in the EPO) are tools in the practitioner’s arsenal for achieving the desired objectives of the client given a desired IP strategy. The more familiarity the practitioner has with such legal instruments, the more capable the patent attorney is in formulating an effective IP strategy & management framework, and maneuvering a case into a position favorable to the client’s interests.


Beyond the aspects of structuring successful strategies for office-action response, patent-office formalities form their own unique procedural considerations that need to be weighed as well, such as patent-term extension, abandonment, revival, and terminal disclaimer.


FlashPoint IP, a leading patent prosecution firm, factors these wide-ranging aspects into the process of securing patent protection, whether in performing  a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file a patent application, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP.


FPIP specializes in obtaining a patent in Israel, US, and EU jurisdictions – filing patent applications on behalf of its clients directly before the USPTO, EPO, WIPO, and ILPO, and worldwide via our network of professional associates. Contact us to discuss your options regarding IP strategy & management, and how best to secure your rights.