Patent Prosecution
Intellectual Property and Technology | PatentWe prosecute patent applications before the USPTO and coordinate international filings, building strong patents through strategic claim drafting and examination.
Overview
Transforming Innovation into Enforceable Patent Rights
Patent prosecution transforms innovative ideas into enforceable legal rights through the complex process of obtaining patent grants from the USPTO and foreign patent offices. Successful prosecution requires technical understanding to accurately describe inventions, legal expertise to craft claims providing meaningful protection, and strategic judgment to navigate the examination process efficiently. This practice prosecutes patents across technology areas, achieving protection that serves clients' competitive needs.
Invention Disclosure and Evaluation
Effective prosecution begins with understanding what the invention is and what protection it needs. Invention disclosure processes capture technical details from inventors. Preliminary evaluation assesses patentability, considering prior art, subject matter eligibility, and potential claim scope. Strategic assessment examines business significance, competitive impact, and portfolio fit. Evaluation identifies the strongest protection opportunities and ensures prosecution resources are directed where they will provide the greatest value.
Application Drafting
Patent applications must satisfy legal requirements while providing commercially meaningful protection. Specifications must enable skilled practitioners to make and use the invention, describe the invention with clarity and completeness, and provide written description support for claimed subject matter. Claims define the legal scope of protection and require particular care—claims that are too narrow fail to capture meaningful commercial scope, while claims that are too broad may not be allowable or may be invalid. Drafting strategy considers how to position applications for examination while preserving flexibility for continuation practice.
Examination and Office Action Response
Most patent applications receive rejections requiring response to advance toward allowance. Office actions may raise prior art rejections asserting that claims are anticipated or obvious, enablement or written description rejections questioning specification adequacy, subject matter eligibility rejections under Alice and its progeny, or indefiniteness rejections challenging claim clarity. Effective responses address examiner concerns through claim amendments, arguments distinguishing prior art, declarations providing supporting evidence, and examiner interviews clarifying positions. Strategic prosecution balances obtaining meaningful claims against examination cost and delay.
Continuation and Portfolio Building
Patent prosecution is not a single application but an ongoing process of building portfolio protection. Continuation applications claim priority to earlier filings while presenting new or modified claims. Continuation-in-part applications add new matter to original disclosures. Divisional applications address restriction requirements. Strategic continuation practice extends protection to variations, improvements, and new applications of underlying technology. Portfolio building creates interlocking protection that strengthens competitive position beyond what individual patents provide.
Design Patent Prosecution
Design patents protect ornamental appearance rather than functional aspects of articles. Design prosecution involves different requirements than utility patents—design applications contain drawings showing the claimed design with minimal text. Examination focuses on novelty and non-obviousness of ornamental features. Design patents can provide valuable protection for product appearance, user interfaces, and other visible design elements. Counsel prosecutes design patents as part of comprehensive IP protection strategies.
Post-Grant Procedures
After patents issue, various procedures can modify or challenge them. Reissue allows correction of defective patents including broadening claims within two years of issue. Reexamination permits reconsideration of patentability in light of prior art. Supplemental examination can address inequitable conduct concerns. Ex parte and inter partes proceedings have different procedural frameworks. Counsel handles post-grant matters to strengthen client patents and address validity concerns.
International Prosecution
Global patent protection requires prosecution in multiple jurisdictions with different requirements. The Patent Cooperation Treaty streamlines international filing by providing a single application that preserves priority in PCT member countries. National phase entry in selected countries initiates examination under local law. European Patent Office prosecution yields patents validated in designated European countries. Direct national filing may be appropriate in countries outside PCT or EP systems. Counsel coordinates international prosecution to achieve global protection efficiently.
Patent Office Practice
Beyond individual application prosecution, counsel handles various USPTO proceedings. Appeals from examiner rejections present arguments to the Patent Trial and Appeal Board. Petitions address procedural matters requiring USPTO action. Interferences determine priority between competing applications. Derivation proceedings address inventorship disputes. Understanding USPTO procedures enables effective advocacy across the full range of patent prosecution matters.
Our Services
patent_counseling_transactions
Federal registration and validity opinions
intellectual_property_and_technology
Federal registration and validity opinions
patent_litigation
Federal registration and validity opinions
Licensing & Transactions
Negotiate and draft license agreements
DMCA Services
Takedown notices and counter-notices
Enforcement
Cease and desist through litigation
Fair Use Analysis
Evaluate fair use defenses and risks
Music & Entertainment
Industry-specific copyright matters
Frequently Asked Questions
USPTO prosecution typically takes 2-3 years from filing to issuance. Track One prioritized examination can reduce this to under 12 months for an additional fee.
Clear, detailed specifications fully describing the invention with claims that are broad enough to provide meaningful protection yet specific enough to overcome prior art.
Provisionals are useful to establish early priority dates, defer costs, or when applications aren't fully prepared. They provide 12 months to file the full application.
Responses address each rejection through claim amendments, arguments, or both. Strategy depends on rejection type and desired claim scope.
International protection depends on where you manufacture, sell, or face competition. PCT applications preserve options while deferring country decisions.
Continuations allow pursuing additional claims from parent applications. Strategic continuation practice builds portfolios covering different aspects of technology.
Fair use is a defense that permits limited use of copyrighted material without permission. Courts consider four factors: the purpose and character of use (commercial vs. educational, transformative vs. copying), the nature of the copyrighted work, the amount used, and the effect on the market. Fair use is highly fact-specific.
For works created today by individual authors, copyright lasts for the life of the author plus 70 years. Works made for hire and anonymous/pseudonymous works are protected for 95 years from publication or 120 years from creation, whichever is shorter. Older works may have different terms.
Yes, software code is protected by copyright as a literary work. Both source code and object code can be registered. However, copyright protects the expression of ideas, not the underlying functionality—patent protection may be more appropriate for novel methods and processes implemented in software.
Our virtual legal services offer streamlined, cost-effective solutions for common copyright needs. Services like copyright registration, assignment agreements, and DMCA takedowns are available online with fixed, transparent pricing. You get the quality of a top IP firm with the convenience of digital delivery.
Related Matters
Represented streaming platform in landmark DMCA safe harbor case. Successfully defended client's safe harbor status while obtaining injunctive relief against repeat infringers, resulting in dismissal of $500M damages claim.
Prosecuted copyright infringement claims on behalf of professional photographers whose work was used without authorization. Secured significant damages award and implementation of improved licensing procedures.
Enforced copyright and trade dress rights in mobile game against clone applications. Obtained preliminary injunction and permanent removal of infringing apps from major app stores worldwide.
Cutting-edge case addressing use of copyrighted music in AI training datasets. Negotiated comprehensive licensing framework that allows continued AI development while protecting rightsholders' interests.
Prosecuted claims against former executive who copied proprietary source code to competitor. Established ownership under work-for-hire doctrine and obtained injunction plus damages for willful infringement.
Represented academic publisher in enforcement action against site hosting pirated textbooks. Implemented systematic takedown program and pursued contributory infringement claims against operators.
Get in Touch
Connect with our copyright team to discuss your matter
Practice Contacts
Michael Roberts
Sarah Kim
