What is Patent Prosecution?
Patent prosecution is the process of obtaining a patent from the patent office. It involves filing an application, responding to examiner objections, and refining claims to ensure the patent is granted. Unlike patent litigation, which deals with enforcement, prosecution focuses on getting the patent approved. A strong prosecution strategy ensures enforceable rights, helping businesses protect intellectual property, secure funding, and maintain a competitive edge.
Why Patent Prosecution matters for Business Leaders?
A well-executed patent prosecution process:
- Determines whether a patent is granted, rejected, or requires modifications.
- Strengthens patent claims to prevent future legal challenges.
- Protects the commercial value of inventions by securing exclusive rights.
- Impacts licensing potential, investment value, and competitive positioning.
Patent prosecution is not just about filing paperwork. It is a strategic process that determines the strength, enforceability, and commercial impact of an invention.
Real-World Example: CRISPR Patent Battle
The CRISPR gene-editing technology became the subject of an intense patent prosecution battle between the Broad Institute and the University of California. Both institutions sought patent rights, but variations in prosecution strategy determined who received key protections. The case highlights how prosecution can influence who holds the most valuable intellectual property in emerging industries.
Stages of Patent Prosecution
Patent prosecution typically involves:
- Filing the application – Submitting a detailed patent application with technical claims.
- Patent examination – The patent office reviews the application to assess novelty and non-obviousness.
- Office actions and responses – Examiners issue objections, requiring applicants to modify claims.
- Allowance or final rejection – If objections are resolved, the patent is granted; otherwise, applicants can appeal or amend claims.
- Post-grant proceedings – Patents may be challenged, requiring additional defense or adjustments.
Challenges in Patent Prosecution
The process is legally complex and requires strategic navigation. Common challenges include:
- Rejections based on prior art – Examiners may reject applications if similar inventions already exist.
- Claim narrowing – Required modifications may weaken the scope of patent protection.
- Time and cost constraints – Prosecution can take years and involve significant legal fees.
- International filing differences – Each jurisdiction has distinct rules, making global patenting complex.
Strategic Business use of Patent Prosecution
Businesses can optimize their patent prosecution strategy by:
- Strengthening intellectual property portfolios with well-defined claims.
- Using patents to secure investment and licensing opportunities.
- Filing in multiple jurisdictions to ensure global protection.
- Anticipating examiner objections and refining applications to improve approval rates.
Key takeaways
- Patent prosecution is the process of securing a patent through examination and negotiation.
- A strong prosecution strategy determines the enforceability and commercial strength of a patent.
- Companies must refine claims strategically to maximize protection and licensing potential.
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