Prosecuting a Utility Patent Application

Snell & Wilmer

“Prosecution” of a utility patent application is the process by which anapplication advances 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.

During prosecution an application is reviewed by a USPTO Examiner. The Examiner 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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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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