The word prosecution makes people think this is about litigation relating to patent infringements. It's actually a term that covers an umbrella of services distinct from litigation. A patent prosecution law firm handles everything from pre-grant preparatory work to the actual process of negotiating with the patent office to get a filing approved, and then the post-grant work such as opposition and amendments.
A practitioner in this field of the law has to sit down with inventors and understand all the aspects of the invention, in the process discovering all the prior art and separating it from new features. In this case, prior art refers to parts, designs and other things related to the invention that are already well known in the field. The inventor's notes and drawings must be collected and used to highlight the creative process and development work.
That's just one small part of the preparatory work required to be done before the application is submitted to an issuing body such as the USPTO. There are a host of critical matters that must be investigated and accurately stated, such as the number of inventors and which of them contributed to the development of which part. Patents have been invalidated simply because this listing turned out to be incorrect.
Similarly, due diligence has to be done to find out if there have been any public disclosures or sale offers discussed. If any of this turns out to be true, then the application could be rejected. Of course, this doesn't mean that law firms can take their own sweet time researching the background and history of the invention and its creators.
Time is important because it's common for an inventor to finish a close second to someone else who filed the same thing a day or a week or month before. Lacking other factors that might tilt the scales, the party that filed first gets the nod. All major jurisdictions including Japan, the U. S. And Europe have this first-to-file rule in place. The U. S. Does have interference hearings as an alternative mechanism in case of disputes.
The application must be written and put together in a specific format and has to be highly accurate. There are at least two things that must be included. The first is a general description, and the second is the set of claims which makes the invention different from prior art.
A set of drawings and eve a model may be included to provide specs and serve as a representation of the actual invention. It also goes to show how it is different from similar existing patents. The issuing authority's main task is to search and examine. Search is where they compare the prior art to the new claims and other data submitted. The search report and the office action to examine the application will together determine if there are sufficient grounds to grant the patent.
Post-grant patent prosecution services for which a law firm gets called in usually has to do with opposition or amendments. Inventors may ask for a reissue if they want to correct mistakes or widen the patent's scope. Anyone can ask for a reexamination if they feel the patent has been erroneously awarded and/or some of it needs to be looked at more deeply.
A practitioner in this field of the law has to sit down with inventors and understand all the aspects of the invention, in the process discovering all the prior art and separating it from new features. In this case, prior art refers to parts, designs and other things related to the invention that are already well known in the field. The inventor's notes and drawings must be collected and used to highlight the creative process and development work.
That's just one small part of the preparatory work required to be done before the application is submitted to an issuing body such as the USPTO. There are a host of critical matters that must be investigated and accurately stated, such as the number of inventors and which of them contributed to the development of which part. Patents have been invalidated simply because this listing turned out to be incorrect.
Similarly, due diligence has to be done to find out if there have been any public disclosures or sale offers discussed. If any of this turns out to be true, then the application could be rejected. Of course, this doesn't mean that law firms can take their own sweet time researching the background and history of the invention and its creators.
Time is important because it's common for an inventor to finish a close second to someone else who filed the same thing a day or a week or month before. Lacking other factors that might tilt the scales, the party that filed first gets the nod. All major jurisdictions including Japan, the U. S. And Europe have this first-to-file rule in place. The U. S. Does have interference hearings as an alternative mechanism in case of disputes.
The application must be written and put together in a specific format and has to be highly accurate. There are at least two things that must be included. The first is a general description, and the second is the set of claims which makes the invention different from prior art.
A set of drawings and eve a model may be included to provide specs and serve as a representation of the actual invention. It also goes to show how it is different from similar existing patents. The issuing authority's main task is to search and examine. Search is where they compare the prior art to the new claims and other data submitted. The search report and the office action to examine the application will together determine if there are sufficient grounds to grant the patent.
Post-grant patent prosecution services for which a law firm gets called in usually has to do with opposition or amendments. Inventors may ask for a reissue if they want to correct mistakes or widen the patent's scope. Anyone can ask for a reexamination if they feel the patent has been erroneously awarded and/or some of it needs to be looked at more deeply.
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