What is Patent Prosecution?

Patent prosecution refers to the filing of the patent with the Patent Office. The term should not be confused with 'prosecution', which refers to litigation proceeding from the plaintiff side.

Once the patent application is ready, it can be filed with one or more Patent Offices around the world. When the application is submitted, the Patent Office begins the process for 'grant of patent', which is known as 'Patent Prosecution.'

Understanding the Patent Prosecution

Patent prosecution is when the applicant begins the process for the protection of his invention, technology, product or process through the mechanisms of the Indian Patent Law.

Patent prosecution involves interaction between the applicants and the Patent Office. Patent law, as a whole, usually requires patent filing and maintenance and not patent litigation. For instance, when a person is looking for filing a patent with the Patent Office, he is looking for a patent attorney whereas in case of patent infringement proceedings he requires a patent lawyer.

Difference Between Patent Litigation and Patent Prosecution

Although the word 'prosecution', in the legal sense, is used for litigation proceedings before the court. It is to be understood that patent prosecution refers to the patent filing process.

Patent Prosecution

Patent Litigation

Patent prosecution is the process involved in obtaining protection for a patent.

Patent litigation process starts when there is any Infringement of patent involved.

Patent prosecution helps you manage your deadlines of the filling and the cost involved

Patent litigation helps the applicant retain the protection obtained and in some instances also help in recovering damages for infringement.

Professional help of a patent attorney, who is well versed with the technological knowledge, is required.

 

Patent litigation proceeding requires a lawyer who is allowed to practice law before the Courts.

 

Directions Pertaining to Patent Prosecution

Laws relating to Patent Prosecution are laid down by the Patent Office, through manuals published by them on their official site. The applicants have to complete the application as per the laid rules and regulation as the patent law, the time taken and cost of the patent varies for every country or jurisdiction.

More on: Law on Software Patents Protection in India

Patent Prosecution Can be Divided into Two Parts

Pre-Grant Prosecution

Pre-grant proceeding usually involves drafting, filling and maintaining proper communication with the patent office whenever required.

Steps to pre-grant prosecution involve :

 

1. Preparing Application

Preparation of a patent application involves drafting a patent specification that is to be filed with the patent office. The applicant has the option to file provisional or complete specification with the patent office. The applicant is always recommended to enlist the help of a patent professional as the drafting of the application involves various confusing techno-legal concepts.

During the initial process of preparing a patent application, the patent attorney gathers the information about the patent.

 

2. Filling Application

Once the applicant is finished with the drafting of the patent application, it has to be filed with the patent office. The jurisdiction for the patent office is decided based on the residence of the inventor or the company for which the invention is used.

Also Read: Different Stages of Patent Registration

 

3. Search and Examination

Once the patent application is filed with the patent office an initial examination of the patent is conducted wherein the patent officials examine fundamental issues like the timeline of the application and essential documents attached. Search and examination of patent forms the most important part of patent prosecution as this what leads to grant or refusal for grant of a patent.

The patent application in India is examined after an examiner is allotted to a particular application considering the field of invention.

Also Read: Patent Search

 

4. Grant of the patent to Invention

The patent to an invention is granted after complete scrutiny of the claims and description filed. The patent certification provides authority to the inventor or the applicant to stop others from using the invention in any way. With the grant of a patent

The applicant can sue the user of the invention in case of unauthorized use and the proceedings conducted will be patent litigation and not patent prosecution.

 

5. Abandonment

Patent protection for an invention can only be maintained if the applicant or the inventor submits patent renewal fees with the patent office regularly. If the applicant is not able to complete the renewal process within the prescribed period, it is likely that the patent office may abandon the patent.

Abandonment of patent results invention to fall in public domain and hence anyone can view the specification as well as the working of the patent.

Post-Grant Prosecution

The opposition is the most common post grant prosecution process used today. Any third party involved can drop a notice with the government or the patent officials, and if the government thinks fit, they can proceed with the post-grant opposition against the grant of a patent.

Also Read: Difference Between Process and Product Patent Regime

Completion of Patent Prosecution

Patent prosecution comes to an end when the applicant has completed the process of pre-grant and Post-grant prosecution with the patent office and has the right to use the patent exclusively.

A patent is a negative right, so once the patent is granted the applicant can stop others from using his invention for manufacturing or any other services.

Why is Patent Prosecution Important?

For the applicant seeking protection for the invention or idea, it is essential that they understand the process involved for patent prosecution. As the cost and timeline of the patent application may vary for every country, hence the applicant should be prepared for it.

When the applicant has complete information about the patent, he can manage their patent portfolio accordingly and hence may be able to control the cost incurred upon the late fee of the patent process.


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