“Prosecution” of a patent application is the process by which an application moves through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and costly endeavor than preparing and filing the application. It culminates when an application either matures into a patent or is abandoned.
II. What to Expect.
During prosecution, an application is reviewed by a USPTO Examiner, who is a government employee with a technical background pertinent to the invention. The Examiner issues written communications, called Office Actions, to the applicant or the applicant’s attorney. An Office Action usually includes, among other things, citations of prior art patents and patent applications, and arguments as to why the claimed invention is not patentable. Most patent applications are rejected in their entirety in the first Office Action, and often on multiple grounds.
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