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Protecting Your Creativity: Patent Prosecution

Posted by attorney Steven Rensch

Protecting Your Creativity: Patent Prosecution (

Our previous discussion centered on what types of works were patentable. Today, we discuss how an inventor obtains protection for her invention. An inventor has no exclusive rights in the work she creates until the United States Patent and Trademark Office (USPTO) issues a patent on the invention. Therefore, the question obviously becomes how a person obtains a patent.

The process of seeking a patent from the USPTO is known as “patent prosecution." The first step in patent prosecution is the filing of an application with the USPTO accompanied by an argument persuading the USPTO to issue a patent. The application must describe the invention and set forth its claims. The claims are what ultimately determine whether the invention is patentable. The claims must particularly point out and distinctly claim the subject matter which the inventor regards as her invention.

The application is scrutinized by an examiner at the USPTO. Generally speaking, the examiner checks to see if the invention, as delineated by the claims, is novel, useful, and nonobvious.

If the examiner rejects some or all of the claims, the examiner must provide the inventor with notice thereof, and the reasons for so deciding. The inventor then has the opportunity to amend the application and its claims before resubmitting it to the USPTO. The process of review and rejection followed by amendments from the inventor usually occurs several times throughout patent prosecution. In the end, the examiner will take final action by either rejecting the application or issuing a patent.

In the event of final rejection, an inventor can appeal to the Board of Patent Appeals and Interferences. If the board upholds the rejection, the inventor may appeal again to the federal district court in the District of Columbia, or may appeal to the U.S. Court of Appeals for the Federal Circuit.

Now that we understand the process of patent prosecution, the next issue is what rights a patentee has, and how long such rights will last.

Steve Rensch and Zach Price


3850 E. Baseline Road, Suite 105

Mesa, AZ 85206 ( (

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