6.4 PROSECUTION: CONVINCING THE PATENT EXAMINER

While it is theoretically possible and permitted by law to file a patent application without the help of a patent attorney or agent, we strongly recommend that you seek professional help with prosecution.

Prosecution starts with filing the patent application at the PTO and ends when the patent is either granted or ultimately denied. Prosecution is essentially a thorough examination of the specification and claims by a patent examiner to determine whether the invention is useful, novel, and unobvious (for the definition of these terms, see Section 5.4). The potential commercial success of the invention is of no interest to the examiner. Furthermore, the examiner is keenly interested in anticipation, but not in infringement of an in-force patent; that is, he cares if the patent is obvious in light of the prior art, but does not care if there would be infringement if the inventor tried to make, use, or sell his invention (see also Chapter 7).

6.4.1 Starting the Prosecution Process

Prosecution starts with the application being cataloged and checked to make sure it meets the numerous formal requirements of the PTO. Then it is forwarded to the appropriate examining group (there are 17 such groups), thence to a specific “art unit,” and finally to an examiner, who will have responsibility for the application. There are about 6000 examiners in the PTO. In view of the enormous backlog of applications in the PTO (at this writing, there are some ...

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