Chapter 7

Patent Engineering and Patent Prosecution

The decision to pursue patent protection for your company’s intellectual property has been made and a solid patent strategy has been implemented. The patentability search has been conducted, claims describing the invention drafted, 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 briefly discuss the filing of international patent applications in this chapter. We will delve into the costs of filing patent applications domestically and maintaining the issued patents in Chapter 8. In Chapter 9 we will discuss international filings and whether or not they are necessary, selecting countries in which to file, international prosecution, and the costs associated with foreign filings in more depth.

The process for obtaining a patent is summarized in a figure [1] presented at United States Patent and Trademark Office website [2]. This figure shows the path of prosecution of a typical patent application. The reader is referred to that figure for a basic overview of the patent process. We will discuss in some depth many of the steps outlined by the USPTO, as they apply to both prosecuting ...

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