GLOSSARY
What is Patent Prosecution?
Understanding patent prosecution—the process of obtaining a patent, key stages, and how data supports prosecution strategy.
Definition
Patent prosecution is the process of preparing, filing, and pursuing a patent application through a patent office until a patent is granted (or abandoned). It includes drafting claims, responding to examiner rejections, and negotiating patent scope.
Key Stages of Patent Prosecution
- Drafting: Writing the patent application including specification, claims, and drawings
- Filing: Submitting the application to a patent office (USPTO, EPO, etc.)
- Examination: Patent examiner reviews the application against prior art
- Office Action Response: Applicant responds to examiner rejections or objections
- Amendment: Modifying claims to overcome rejections while maintaining scope
- Grant: Patent is approved and published with final claims
Common Prosecution Challenges
- Prior art rejections: Examiner finds prior art that anticipated your claims
- Obviousness rejections: Examiner argues your invention is an obvious combination
- Indefiniteness: Claims are too vague or unclear
- Written description: Specification doesn't adequately support the claims
- Prosecution history estoppel: Amendments during prosecution can limit claim scope in litigation
How Analytics Supports Prosecution
Patent analytics helps prosecution strategy by:
- Identifying relevant prior art BEFORE filing to craft stronger initial claims
- Analyzing examiner behavior to predict likely rejections and prepare responses
- Benchmarking prosecution outcomes for similar technology areas
- Tracking prosecution timelines and costs across your portfolio