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