U.S. Patent Application Prosecution

Jun 9, 2026 | Patent, Utility

Patent application prosecution, also called examination, is when the U.S. Patent Office assigns the patent application to an Examiner. The Examiner is an expert in the field of the invention and will make a full review of the present invention and compare it to prior art, which most often results in an office action.

Office actions are a very normal part of the patent process. Typically, a patent application receives about 3-4 office actions. When the Examiner “rejects” the invention based on prior art, the attorney will argue that the invention is, in fact, patentable based on provided evidence:

 “The attorney’s job is to strategically respond to the Examiner’s rejections to minimize the amount of issued Office Actions that go back and forth, while trying to obtain the broadest scope of claims possible. A patent may be of little value if it isn’t of broad enough scope to keep folks from easily avoiding the scope of the patent. A skilled attorney will also greatly increase your chances of getting allowable matter of reasonable and useful scope of your invention, resulting in an issued patent.” –Attorney Jim Passé, The Inventor’s Guide E-Book

National Inventors’ Day

Feb 10, 2021 | Design, Inventor, Patent, Utility

National Inventors’ Day is Thursday, February 11, 2021. President Ronald Reagan first signed National Inventors’ Day into declaration on February 11, 1983, which coincides with Thomas Edison’s birthday, as a day to recognize and honor past, present, and inspire future inventors.

Do I Have to Have a Patent Search Done Before Filing a Patent Application?

Oct 23, 2020 | Inventor, Patent, Utility

A search and opinion is not required by law or by our firm, but it is strongly suggested. Without the search and opinion, the patentability and scope of an invention cannot be determined and what the applicant would be entitled to receive, in terms of patent scope, would be a wild guess. A mistake in the scope of a patent application (what is claimed in the application to be essential to the invention) can easily lead to a complete loss of any patent rights. No prior searching is a prescription for an expensive failure.

Do I Really Need a Patent Attorney?

Oct 21, 2020 | Design, Inventor, Patent, Utility

Do I really need a Patent Attorney?

The success rate of inventors attempting to file their own patent applications is very low compared to the success in obtaining meaningful patent protection using an experienced patent lawyer. The reason being is that there are hundreds of pages of laws, rules, and interpretations, as well as a specific vocabulary covering the writing of a patent application that must be learned before writing a patent application. A rule or law can change overnight by the Supreme Court or by the U.S. Patent Office (USPTO). Patent attorneys are the only attorneys who must have a technical degree and then pass both a state and a federal patent bar exam before being allowed to practice patent law before the USPTO, before writing/prosecuting patent applications, before giving patentability opinions, and the like.  Therefore, unless you plan on studying patent law for a couple of years and before attempting to execute a process fraught with traps, complexities, and difficulties, it would be best to consult an expert, i.e., an experienced patent attorney (someone with at least 10 years of experience).