Chapter §11.01 Introduction

• Jurisdiction: United States

§11.01 Introduction

The process of patent "prosecution" has nothing to do with criminal law. Rather it refers to the steps of preparing and filing a patent application in the U.S. Patent and Trademark Office (USPTO) and thereafter interacting with the agency to obtain a U.S. patent. This interaction typically involves a multi-year negotiation between the patent applicant (and/or his representative¹) and a USPTO examiner concerning the allowable scope of the patent claims in view of the relevant prior art. Patent prosecution is sometimes referred to as "patent solicitation."²

The statutory provisions pertaining to patent prosecution are scattered throughout Title 35 of the U.S. Code (U.S.C.); the most critical provisions are individually analyzed below.³ The statutory provisions are further implemented through USPTO regulations found in Chapter 37 of the Code of Federal Regulations (C.F.R.). Patent practitioners typically refer to the USPTO regulations as "rules."⁴ Lastly, the USPTO publishes the voluminous Manual of Patent Examining Procedure (MPEP), a detailed internal operating manual for its patent examiners.⁵ Although the MPEP is a very useful resource for patent practitioners and courts, it does not have the force and effect of law.⁶

This chapter focuses on the prosecution of original applications. Such applications are those filed in the USPTO for the first time.⁷ In contrast, Chapter 21 in Volume II of this treatise separately covers the pre-AIA USPTO procedures of reexamination⁸ and reissue,⁹ as well as the post-AIA procedures of inter partes review and post-grant review.¹⁰ The reexamination procedure allows the owner of an already-issued patent, or a third party, to request under certain circumstances that the patent be returned to the USPTO for a second examination. The reissue procedure is available to the owner of an issued patent for the correction of certain types of errors. Because requests for reexamination and applications for reissue, as well as petitions for inter partes review and post-grant review, are filed and examined under their own statutory provisions and rules, this treatise treats them separately from the prosecution of original applications.

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Notes:

^[1] Patent applicants may prosecute their applications pro se, or they may be represented before the USPTO by registered U.S. patent agents or registered U.S. patent attorneys. See 37 C.F.R. §1.31 (stating that "[a]n applicant for patent may file and prosecute his or her own...