Patent Prosecution and Patent Appeals

IP Attorneys Representing Clients Worldwide from Boston Offices

Patent prosecution involves writing and filing a patent application with the United States Patent and Trademark Office (“USPTO”). Patent prosecution is entirely distinct from patent litigation, which involves suing another person or business for a violation of patent rights. To work in patent prosecution, a lawyer must have a technical background and be licensed to practice in front of the USPTO. At Chavous IP Law, our Boston patent prosecution lawyers have the skill and experience to represent you in patent prosecution and patent appeals.

Patent Prosecution and Patent Appeals

Patent prosecution is known as an ex parte procedure, meaning that only the applicant and the USPTO are involved in the process. The USPTO uses patent examiners to determine whether a patent application meets all of the requirements of the patent law – namely, a claim must be novel, nonobvious, and described in the specification such that a skilled artisan could make and use the invention. A patent examiner will examine whether your patent application complies with these legal requirements.

The examiner will communicate what he or she finds to your lawyer and you. A huge percentage of patent applications have one or more of their patent claims rejected. Sometimes the examiner will look at the claims of the patent application and determine that you are trying to claim more than one invention in a single application. In that case, a restriction requirement will be issued, such that you must choose one of the inventions to continue to be evaluated by the USPTO. You can file other applications for the other inventions, but if they are filed while you still have the first application pending, they can have the same filing date.

When a patent prosecution attorney at our Boston firm responds to this first office action, we draft a response. The response identifies errors in the examiner’s reasoning. We may also argue about patentability, despite whichever prior art is referenced in the first office action. Our firm manages the deadlines during the prosecution process, such as the three-month deadline to file a response, the two-month deadline for filing responses after-final, and the three-month deadline for paying the issue fee for an allowed application. Our firm manages the entire process.

Patent prosecution can require multiple exchanges with the patent examiner. If a response is successful, the examiner will allow your application and it will become a patent with the payment of an issue fee. However, the examiner may not be persuaded by your response. The examiner may continue to reject the application on the grounds detailed in the first office action, or the examiner may have other reasons to reject the claims. Usually, the second office action is the final office action, but this does not mean that the claims can never be allowed. Instead, you can file a request for continued examination and pay a fee, appeal the examiner’s decision to the Patent Trial and Appeal Board, file a continuation application with different claims, or abandon the application.

If you decide to appeal a second rejection of your claims, our Boston patent prosecution attorneys can help you appeal a rejection to the Patent Trial and Appeal Board. If we represent you, we would prepare and file a brief to support your position and, in some cases, attend an oral hearing on the appeal. Often, the time between when you file the Notice of Appeal and when you get the decision is around two to three years. If the Board decides against you, you can appeal to the Court of Appeals for the Federal Circuit. The Federal Circuit must then review the Patent Trial and Appeal Board on the same record, and you cannot give new evidence. Alternatively, you could file a civil action against the Commissioner in the United States District Court for the District of Columbia.

On the other hand, you can keep prosecuting the patent application before the patent examiner, as noted above. In many cases, an application will eventually be issued as a patent because there will typically be ways that our attorneys can overcome rejections of the claims. Even after a patent is issued, however, there may be challenges, such as a patent infringement lawsuit or an inter partes review.

Seek Guidance from an Experienced Patent Prosecution Lawyer in Boston

If you are looking for an attorney to handle complex issues related to patent prosecution or patent appeals, Chavous IP Law may be able to help you. Our principal has a decade of patent experience in the fields of pharmaceuticals, biochemistry, biotechnology, immunology, and medical devices. We represent clients throughout the United States and the world. Call us at 351-207-5972 or complete our online form.