Patent Engineering and Patent Prosecution

• Author: Donald S. Rimai
• Profession: Recently retired from Eastman Kodak, where he worked as a researcher and intellectual property manager in digital printing and adhesion science
• Pages: 127-141

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 e decision to pursue patent protection for your company’s intellectual

property has been made and a solid patent strategy has been implemented.

 e patentability search has been conducted, claims describing the inven-

tion dra ed, a disclosure describing the problem , how others tried to solve

the problem , and your company’s novel solutions to the problem have been

written. You are now at the point that you want to know how to proceed,

what to anticipate, and how much all this will cost . In this chapter we will

describe the process from submitting a patent application to the issuance of

a patent in the United States . We will also brie y discuss the  ling of inter-

national patent applications in this chapter. We will delve into the costs of

 ling patent applications domestically and maintaining the issued patents

in Chapter 8. In Chapter 9 we will discuss internat ional  ling s and whether

or not they are necessary, selecting countries in which to  le, international

prosecution , and the costs associated with foreign  ling s in more depth.

 e process for obtaining a patent is summarized in a  gure [1] pre-

sented at United States Patent and Trademark O ce website [2].  is  gure

shows the path of prosecution of a typical patent application .  e reader is

7

Patent Engineering and Patent

Prosecution