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Patent Litigation vs. Prosecution: What is the Difference?  

People often confuse patent litigation vs. patent prosecution. In litigation, prosecution is the process of pursuing a case against a person accused of a crime. For example, one might say, “the prosecution called their first witness” or “the defense told the jury that the prosecution had not provided enough evidence to support its case.” Prosecution, however, can also refer to a lawyer representing a client in a legal action, such as “prosecuting” an application for a patent or trademark on behalf of their client.   

In demystifying patent litigation vs. prosecution, it is critical to understand each’s distinct role and process related to patents. Essentially, one is about parties involved in an infringement dispute surrounding a patent in a lawsuit; the other involves the process of filing for an obtaining a patent.  

Who is involved in patent litigation vs. prosecution? 

In prosecution, the primary interaction is between the patent applicant and the patent examiner (along with their respective legal counsels). The patent applicant is the inventor. In the United States, the patent examiner is a federal employee of the U.S. Patent and Trademark Office (USPTO) who examines applications for design patents and utility patents to determine whether or not a patent can be granted for various new inventions.  

In patent litigation vs. prosecution, the parties are the patent holder (plaintiff) and the alleged infringer (defendant). Both typically engage patent attorneys specializing in intellectual property and patents; if the litigation involves hardware, software, and other technology produces or processes involving complex technical issues, third-party technical experts may be engaged for source code analysis, reverse engineering, and other technical evidence collection strategies to support the parties’ respective positions.  

Patent prosecution 

Patent prosecution is the rigorous process of securing a patent for an invention from the USPTO. This journey begins with the submission of a patent application and culminates in the issuance of a patent, if approved. During this period, the USPTO meticulously examines the application to assess the invention’s patentability. Applicants may engage in negotiations with examiners to address any concerns or objections raised. If the USPTO deems the invention unpatentable, a rejection is issued. The applicant then has the opportunity to respond, potentially leading to the ultimate issuance of a patent.  

The patent prosecution process is detailed below:   

  • Pre-grant process: This stage beings with the drafting and filing of patent applications, responding to office actions, and navigating the examination process to ensure the legal requirements are met for patentability.  

The USPTO provides patent applications guidance with a step-by-step process for this phase.   

  • Post-grant process: The post-grant prosecution process occurs after a patent has been granted, and involves resolving issues through post-grant amendment and opposition. During this stage, the USPTO provides a nine-month window during which time third parties may challenge a patent’s claim or claims based upon a specific ground in what is called a post-grant review process.  

A post-grant review does not always happen, and once the patent is published the patent holder is responsible for maintaining, updating, and renewing the patent. 

Patent litigation 

In patent litigation vs. prosecution, companies often become aware of potential patent infringement when a competitor releases a product or process strikingly similar to their own patented technology. Patent searches can provide an early signal that new companies are entering a technology area.  

Patent rights are not enforced by the USPTO, so if a patent holder believes that another party has infringed on their patent by allegedly making, using, selling, or importing a patented product or service without permission, they may decide to litigate as the path to seeing to enforce their rights and protect their patent. 

Litigation involves multiple phases, starting with pre-suit due diligence, counsel and expert selection, budgeting, risk assessment, and venue selection. Approximately 97 percent of patent actions are settled. But when cases are not settled, they go to trial where both parties present evidence and legal arguments. Over the last several years, according to patent litigation study, the trial success rates of patent holders is 52 percent with bench trials and 74 percent with juries; if the patent holder wins, they may receive monetary damages and a court order for the infringing party to stop the infringement.  

Regardless of outcome, the litigation process can be lengthy, expensive, and unpredictable, and often involves expert testimony and extensive discovery requiring specialized litigation and eDiscovery support.   

Patent litigation vs. prosecution  

Understanding the distinction between patent litigation vs. prosecution is crucial for anyone involved in intellectual property. Patent prosecution focuses on securing patent rights through the complex process of application and examination. Conversely, patent litigation involves the enforcement or defense of those rights in a legal battle. By recognizing the differences between these two areas, individuals can make informed decisions about protecting their intellectual property and navigating the potential challenges that may arise. 

UnitedLex delivers insight and capabilities that align IP strategy to business realities that result in ROI and competitive advantage. Let’s talk.    

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