• Jeff Streets

What is "Patent Preparation and Prosecution"?

Updated: Jul 31

If you have an invention and want a patent attorney to assist you to obtain a patent on your invention, then you need a patent attorney that focuses on "Patent Preparation and Prosecution." Some patent attorneys spend some or all of their time on patent litigation, which is the practice of enforcing an issued patent against an alleged infringer or defending someone that has been sued for patent infringement. Other patent attorneys may devote a considerable amount of their time dealing with trademarks, trade secrets, licensing, and/or copyrights, which are other forms of intellectual property.



Patent Preparation

The term "patent preparation" covers the process of preparing a patent application directed to a particular invention. Accordingly, it would be less confusing and more accurate if the term was "patent application preparation."


The patent attorney who prepares your patent application must thoroughly understand your invention and be able to write a clear, accurate and comprehensive description of the invention. These are skills honed through years of experience and training. The patent application will typically include a title, a statement of the field of the invention, some background information about the relevant technology or art, a summary of the invention, a detailed description, an abstract, and claims. The detailed description must provide an "enabling" disclosure, which means that the description must provide sufficient detail that "a person having an ordinary level of skill in the art would understand how to make and use the invention without undue experimentation." The claims detail the scope of legal protection that you are asking the United States Patent and Trademark Office to grant to you. The strategy behind drafting claims to various statutory classes (i.e., a process, a machine, an article of manufacture, a composition of matter, and an improvement of an invention in one of the other four classes) and the scope of those claims is beyond the scope of this article.


Patent Prosecution

The term "patent prosecution" sounds a bit like it would be an action taken by a lawyer who conducts a case against a defendant in a criminal court. This is not the case. "Patent prosecution" involves the interaction between the patent attorney (on behalf of the applicant for patent) and the patent examiners at the United States Patent and Trademark Office. In particular, patent prosecution includes filing of the patent application, responding to any deficiencies identified by the Office of Patent Application Processing, responding to objections and rejections asserted against the patent application by a patent examiner, holding any necessary interview with the patent examiner to discuss the merits of the objections and rejections, handling appeals to the Patent Trial and Appeal Board (PTAB), and submitting the issue fee for an allowed patent application. Patent prosecution comes to an end once a patent application is either issued as a US Patent or abandoned.


Patent Preparation and Prosecution

The term "patent preparation and prosecution" is sometimes abbreviated as "patent prep and pros" (where "pros" is pronounced like "pross" so it rhymes with "loss"). A patent attorney that focuses their practice on patent preparation and prosecution will perform both of the foregoing tasks of preparing the patent application and then interacting with the patent examiner until the patent application is either issued or abandoned. In fact, a patent attorney that does patent preparation and prosecution may also assist you with the payment of maintenance fees that are due during the 4th, 8th and 12th years after issuance of the patent.


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