What Is Patent Prosecution?

Patent prosecution is the legal process of securing patent rights for an invention. It begins with preparing and filing a patent application and continues through examination before the U.S. Patent and Trademark Office (USPTO). If successful, it ends with the grant of a patent.

Any individual, business, or startup can apply for patent protection if their invention—whether a product, process, method, design, or plant variety—is novel, non-obvious, and patentable under the law.

How the Process Works in the United States

Patent prosecution in the U.S. typically involves:

1. Filing a Non-Provisional Application – The formal application is submitted to the USPTO. (A provisional application may also be filed first to secure a priority date and defer costs for up to one year.)
2. Examination by the USPTO – About 12–24 months later, an examiner reviews the application. Applications are published 18 months after filing.
3. Office Actions and Responses – Examiners frequently issue Office Actions citing reasons for refusal. Preparing a strong response—often including arguments, evidence, or examiner interviews—is key to moving the application forward.
4. Allowance or Rejection – If approved, the patent issues. If rejected, applicants may pursue continued examination or appeal to the Patent Trial and Appeal Board (PTAB) and, if necessary, the U.S. Court of Appeals for the Federal Circuit.

Types of Patents

• Utility Patents (20 years from filing): Protect functional inventions such as processes, software, manufactured items, pharmaceuticals, and chemical compounds. They provide the broadest protection.
• Design Patents (15 years from grant): Protect purely ornamental designs. Enforcement typically requires near-identical copying from the perspective of an ordinary consumer.
• Plant Patents (20 years from filing): Protect newly developed plant varieties and seeds.

Utility patents require special attention to claim drafting, which defines the legal “metes and bounds” of protection—similar to a property deed.

Timing and Prioritized Examination

On average, it takes 24–36 months to obtain a U.S. patent. The first Office Action generally arrives within 16–18 months of filing.

For those needing faster results, the USPTO offers Track One prioritized examination, which (for an additional fee) typically results in a first response within 2 months and final resolution in just over 5 months.

Key Stages of Patent Prosecution

1. Novelty Search and Patentability Opinion
   While not required, a prior art search helps assess whether existing patents or publications could block protection. We provide clear opinions on the likelihood of success before significant costs are incurred.
2. Application Drafting and Filing
   Preparing a patent application is a complex legal and technical exercise—not a form exercise. Our attorneys draft detailed descriptions and carefully structured claims to maximize enforceable protection.
3. Examination and Advocacy
   We manage all USPTO correspondence, prepare responses to Office Actions, and advocate before examiners through written arguments and interviews.
4. Issuance, Maintenance, or Appeal
   If granted, utility patents require maintenance fees at 3.5, 7.5, and 11.5 years. If refused, we advise whether to continue prosecution or appeal.

Patentability Requirements

To qualify for patent protection, an invention must be:

• Patentable Subject Matter – A new and useful process, machine, manufacture, or composition of matter (excluding natural phenomena and abstract ideas).
• Novel – Not previously patented, published, or publicly disclosed for more than one year prior to filing.
• Non-Obvious – Not an obvious modification or combination of existing inventions to someone skilled in the relevant field.

International Patent Protection

A U.S. patent only protects your invention domestically. To secure rights abroad, additional filings are required—either through the Patent Cooperation Treaty (PCT) or directly in foreign jurisdictions. Loza & Loza LLP works with a trusted network of foreign associates to coordinate international strategies.

Why Work with Loza & Loza LLP

Patent prosecution is adversarial and outcome-driven. Deadlines, claim drafting, and strategy decisions carry long-term consequences. Filing incorrectly or missing an opportunity can mean losing patent rights permanently.

At Loza & Loza LLP, we:

• Conduct tailored patentability searches and opinions.
• Draft and prosecute applications designed for broad, enforceable protection.
• Manage Office Action responses and examiner advocacy.
• Oversee international filings with experienced foreign counsel.
• Docket and manage maintenance fees for issued patents.

Your innovations are among your most valuable assets. We provide the legal precision, technical knowledge, and strategic judgment necessary to secure and protect those assets—both in the U.S. and worldwide.