The Criticality of Patent Prosecution

The only thing standing in the way of a patent application morphing into an issued patent is the patent prosecution process.

The prosecution process is almost always adversarial. Examiners unearth prior art. Examiners attempt to narrow claim scope during prosecution by finding that the invention is anticipated by — or obvious with respect to — prior art.

While responses to examiners' Office Actions are necessary, such applicant responses must be made with great care. This is because every argument made by the applicant has the potential to eviscerate or elevate patent value during post-grant procedures such as post-grant review, re-examination and infringement litigation.

Jousting with examiners can easily last four or five years. And patent value hinges on even the most seemingly innocuous words used (or not used) in the voluminous correspondence found in file wrappers.

Due to the finesse with which patent prosecution must be managed, discerning patent applicants do not want their patents merely filed. They want to optimize their patent prosecution strategy with an eye towards future events.

In response to heightened expectations on the part of demanding patent applicants, the Certified Patent Strategist designation is designed to enable patent applicants and their representatives to strategically navigate the patent prosecution process. Further, the Institute for Patent Prosecution is dedicated to imparting the subtle nuances of successful patent prosecution.