The word prosecution makes people think this is about litigation relating to patent infringements. It's actually a term that covers an umbrella of services distinct from litigation. A patent prosecution law firm handles everything from pre-grant preparatory work to the actual process of negotiating with the patent office to get a filing approved, and then the post-grant work such as opposition and amendments.
A practitioner in this field of the law has to sit down with inventors and understand all the aspects of the invention, in the process discovering all the prior art and separating it from new features. In this case, prior art refers to parts, designs and other things related to the invention that are already well known in the field. The inventor's notes and drawings must be collected and used to highlight the creative process and development work.
There's a lot of groundwork involved before a filing gets submitted to the USPTO or other such issuing agencies. For instance, it's important to find out and precisely list who contributed to the creation of which part of the invention. Patents may be invalidated if this list of inventors involved turns out to be incorrect.
Another area that calls for a lot of due diligence are the public disclosures and sale offers (if any) made before the application is filed. If any of it turns out to be true, the issuing body may reject the filing. All this needs a lot of hard work, manpower and time, but practitioners cannot afford to stretch the preparatory work for too long because it has to be completed within a narrow window.
Time is a key factor here, because it's not uncommon for multiple parties to be filing patents for the same invention at approximately the same time. All other things being equal, it then comes down to who filed first. This first-to-file rule is in force in all major jurisdictions including Europe, Japan and the U. S. Note that U. S. Law still allows for interference hearings to determine which of two simultaneous filings was invented first.
Applications are put together in a specific manner with an extreme focus on accuracy and facts. It must have at least two main parts. One part provides the invention's general description, and the second one is a listed set of claims detailing what separates it from the prior art.
A set of drawings and eve a model may be included to provide specs and serve as a representation of the actual invention. It also goes to show how it is different from similar existing patents. The issuing authority's main task is to search and examine. Search is where they compare the prior art to the new claims and other data submitted. The search report and the office action to examine the application will together determine if there are sufficient grounds to grant the patent.
Post-grant patent prosecution services for which a law firm gets called in usually has to do with opposition or amendments. Inventors may ask for a reissue if they want to correct mistakes or widen the patent's scope. Anyone can ask for a reexamination if they feel the patent has been erroneously awarded and/or some of it needs to be looked at more deeply.
A practitioner in this field of the law has to sit down with inventors and understand all the aspects of the invention, in the process discovering all the prior art and separating it from new features. In this case, prior art refers to parts, designs and other things related to the invention that are already well known in the field. The inventor's notes and drawings must be collected and used to highlight the creative process and development work.
There's a lot of groundwork involved before a filing gets submitted to the USPTO or other such issuing agencies. For instance, it's important to find out and precisely list who contributed to the creation of which part of the invention. Patents may be invalidated if this list of inventors involved turns out to be incorrect.
Another area that calls for a lot of due diligence are the public disclosures and sale offers (if any) made before the application is filed. If any of it turns out to be true, the issuing body may reject the filing. All this needs a lot of hard work, manpower and time, but practitioners cannot afford to stretch the preparatory work for too long because it has to be completed within a narrow window.
Time is a key factor here, because it's not uncommon for multiple parties to be filing patents for the same invention at approximately the same time. All other things being equal, it then comes down to who filed first. This first-to-file rule is in force in all major jurisdictions including Europe, Japan and the U. S. Note that U. S. Law still allows for interference hearings to determine which of two simultaneous filings was invented first.
Applications are put together in a specific manner with an extreme focus on accuracy and facts. It must have at least two main parts. One part provides the invention's general description, and the second one is a listed set of claims detailing what separates it from the prior art.
A set of drawings and eve a model may be included to provide specs and serve as a representation of the actual invention. It also goes to show how it is different from similar existing patents. The issuing authority's main task is to search and examine. Search is where they compare the prior art to the new claims and other data submitted. The search report and the office action to examine the application will together determine if there are sufficient grounds to grant the patent.
Post-grant patent prosecution services for which a law firm gets called in usually has to do with opposition or amendments. Inventors may ask for a reissue if they want to correct mistakes or widen the patent's scope. Anyone can ask for a reexamination if they feel the patent has been erroneously awarded and/or some of it needs to be looked at more deeply.
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