For prosecuting the Patent Prosecution in United States the applicant must be the inventor or he / she must be the registered patent agent or an attorney to prosecute the case. A patent attorney is personnel with basic law degree and has a wide knowledge about patents and related technologies. Patent prosecution can be split into pre-grant prosecution and post grant prosecution, pre-grant prosecution involves in negotiation with a patent office for the grant of a patent, and post-grant prosecution involves in the issues such as post-grant amendment and opposition.
Patent prosecution can be distinguished from litigation, which describes legal action related to the infringement. Pre-grant prosecution ; to obtain patent rights for an inventor, the practitioner first drafts an application typically by questioning the inventor to understand the nature of the invention and helping them clarify novel features , and to obtain drawings and written notes regarding the features of the invention and its background.
During patent drafting, the practitioner may also seek to find out whether any publications, offers for sale, or other such public disclosures of the invention were made. These issues are important because under certain circumstances, public disclosures or offers to sell an invention prior to filing an application for a it may prevent the issuance of a it for the invention, under the laws or regulations of some jurisdictions .After drafting an application for patent, complying with any further rules (such as having the inventor or inventors review the application prior to filing), and obtaining the applicant's permission, the practitioner then files the patent application with the PTO. Usually, the practitioner seeks to file the application as soon as possible, because in a majority of jurisdictions (such as Europe and Japan) if two or more applications for the same subject matter are filed, then only the party who filed first will be entitled to seek a patent (this is known as the "first-to-file rule"). Even in other jurisdictions, early filing may prevent the use of certain materials from being applied against the application as prior art while the application is pending before the PTO.
Search and examination is the principle part of the prosecution of a patent application leading to grant. A search is conducted by the PTO for any prior art that is relevant to the application in question and the results of that search are notified to the Applicant in a search report. The examiner who is conducting the search indicates what aspect the documents cited is relevant (novelty, inventive step, background) and to what claims they are relevant. The materials searched vary depending on the PTO conducting the search, but principally cover all published applications and technical publications. The search report is typically published with the application, 18 months after the earliest priority date.
If the Examiner finds that the application does not comply with any requirements an examination report is issued drawing the Examiner's objections to the attention of the Applicant and requesting that they be addressed. The Applicant may respond to the objections arguing in support of the application, and/or making amendments to the application to bring it in to conformity. Alternatively, if the Examiner's objections are valid and cannot be overcome, the application may be abandoned.
We are open to suggestions from clients for a regular monthly retainer fee arrangement where the client agrees to retain us for a minimum period of one year to provide our services. We provide a search report which is customized to meet the requirements of each client and our standard report meets most of the normal requirements. Our motto in preparing the report is to meet the specific requirements of each client as per their specifications which we have found in practice to vary from industry to industry and from project to project.
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