Patent Prosecution Analytics

The term 'patent prosecution' refers to the process of obtaining a patent right, from the initial patent application to the final patent grant.  

To prosecute a patent to grant, IP owners must follow the predefined steps and adhere to the specific practices and deadlines mandated by national patent offices. Typically, these steps and deadlines are split into pre-grant patent prosecution and post-grant prosecution stages. The former refers to the process of managing and responding to pre-grant patent office correspondence (such as Office Actions), while the latter relates to the process of managing post-grant activities (such as third-party oppositions). 

When asking 'What is patent prosecution?', non-IP specialists may expect the answer to be related to the enforcement of granted patent rights; for example, via litigation. However, this is incorrect. Instead, patent prosecution comprises a specific set of administrative processes, which are established by the patent-examining rules and procedures of each national or regional patent office, such as the 'Guidelines for Examination in the European Patent Office (EPO)'. 

Take, for example, the process of prosecuting a Patent Cooperation Treaty (PCT) National Phase Filing. 

• Once the PCT International application is filed:  

          -The application subject matter becomes set in stone;  

          -Key dates for protection are fixed; and 

          -Obtaining national phase filings becomes an entirely administrative process.

• To obtain National Phase Entry, applicants must follow distinct administrative steps, including:  

          -Filling out forms, paying fees, and submitting signed documents; 

          -Translation management; 

          -Amendments can be made and filed, but these are constrained by the original text. 

• Post-filing steps include: 

          -Management of amendments and substantive prosecution responses; 

          -Other post-filing administrative tasks, such as annuities, form generation, etc. 

While companies can manage this entire patent prosecution in-house with the support of various overseas law firms (or outsource the work completely to an external law firm), it is important to note that much of the patent prosecution process is highly administrative.   

As such, many of the patent prosecution tasks can be managed efficiently and cost-effectively by partnering with an IP administration specialist, such as Questel.  

• Browse our international patent filing and prosecution support services. 
• Explore our AI-elevated patent preparation and prosecution workflow technologies.