Global patenting activity has soared to new records in recent years, driven by technological advancements, digitalization, and globalization, according to WIPO’s annual World Intellectual Property Indicators report. Patents help businesses gain competitive advantage, defend market share, and realize revenue opportunities.
Patent prosecution, the process of obtaining a patent, and intellectual property strategy work hand-in-hand. An effective IP strategy guides the prosecution process by identifying which inventions are most critical to protect and aligning patent filings with the company’s overall business objectives. Effective patent prosecution—such as determining which patents to pursue, where to file them geographically, and how to leverage those rights—maximizes value to the company.
In itself, patent prosecution is a tactical component of intellectual property strategy, focusing on legal details and processes, from the initial filing until the patent is allowed and issued (or finally rejected), including all the back-and-forth responses with the U.S. Patent and Trademark Office (USPTO).
In this blog, we discuss the patent prosecution process, common bottlenecks, and strategies to improve efficiency and effectiveness.
Key steps in patent prosecution
Obtaining a patent is divided between pre-grant and post-grant processes.
Pre-grant process
This stage of patent prosecution includes 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 a brief step-by-step process for this phase:
- Determine if your invention is patentable.
- Conduct a thorough search to ensure the invention is new and not an extension of an existing technology or process.
- Determine the type of patent needed (utility patent, design patent, or plant patent).
- Decide if international protection is needed.
- Prepare the patent application, a detailed description of the invention and claims for its unique and novel features.
- Submit the application to the appropriate patent office (e.g., USPTO) for review and examination by patent examiners.
- Respond to pre-prosecution notices from the examiner if there are missing parts or incomplete parts of the application.
- Address any objections or requirements raised by the patent examiner in the patent office response.
- Respond to office actions.
- If the application is found to be patentable, it will be allowed and eventually issued a patent.
Post-grant process
The post-grant phase may involve resolving issues through post-grant amendment and opposition. Third parties have nine months in which they may challenge a patent’s claim or claims based upon a specific ground in what is called a post-grant review process. The trial proceeding, overseen by the Patent Trial and Appeal Board (PTAB), allows third parties to challenge the validity of a patent in a streamlined, cost-effective way.
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 prosecution bottlenecks
Due to the highly administrative pieces of the process, complexities, deadlines, and number of touch points involved, patent prosecution can be a burdensome process.
According to a UnitedLex 2024 IP Impact Study, 57% of law firm and 45% of in-house respondents cited drafting office action responses, docketing, invention disclosure statements, international filings, and patent drafting as major sources of operational drag and bottlenecks.
Many of these tasks are administrative in nature, and, with the rise in patent filings globally, corporate and law firm IP teams are increasingly conscious about how they allocate their limited resources and budget to achieve an optimal balance in patent prosecution work.
Managing patent prosecution workflows more efficiently and profitably
Given the high cost of patent prosecution work, both corporate IP teams and their law firms are refining operational models for patent prosecution workflows to keep teams within budgets, without sacrificing coverage or quality.
This translates into more reliance on external support to manage trademark prosecution workloads and ensure IP teams are not overstretched. To that end, 55% of in-house survey respondents and 61% of law firms invest in specialty IP service providers for support in areas that do not necessarily require the expertise (or the expense) of an experienced attorney.
Hybrid models are also a win-win for IP teams. The hybrid patent prosecution model distributes work based on the complexity of work to law firms and technical experts, often provided through service providers.
For example, during the patent preparation stage, patent engineers work on the technical specifications and drawings while the law firm focuses on drafting claims. During patent prosecution, patent engineers work on the technical analysis, including Review Office Action (OA), cited references, and claimed invention, allowing the law firm to focus on finalizing the OA response. And the administrative docketing tasks can be handled by specialized IP professionals that scale based on need, without incurring the expense of using lawyers for the same work.
Patent prosecution is a complex process that takes time and resources. By aligning patent filings to company goals, and navigating those processes effectively and efficiently leveraging hybrid models, businesses can maximize value by fostering and protecting innovation and driving economic growth.
UnitedLex IP managed services provide organizations and law firms with expertise and scale for all aspects of patent prosecution. Let’s talk.
