Patent Prosecution

After a patent application is filed, the process of patent prosecution begins. Patent prosecution involves responding to Office Actions issued by the United State Patent and Trademark Office to carve out the monopoly rights you deserve. From the start, we apprise the Examiner about your patent application and negotiate amendments to claims with little prosecution history. When we have to, we appeal your matter before the PTAB to defend the scope of the claims in view of the cited art or Examiner's legal position.

Data-Driven Prosecution

We don't just rely on legal arguments; we use data. Our approach involves analyzing examiner statistics, art unit trends, and appeal outcomes to tailor our strategy. This "moneyball" approach to prosecution helps us:

• Predict Examiner behavior and tailor arguments to what actually works
• Identify when to interview vs. appeal based on statistical win rates
• Optimize claim amendments to navigate specific art unit tendencies
• Reduce unnecessary rounds of prosecution by making evidence-based decisions

What We Focus On

Prosecution is not just about getting to allowance. It is about building a claim set you can actually use. We focus on:

• Claim scope that tracks product value, not just what is easiest to allow
• A clean prosecution record that supports later enforcement and licensing
• Examiner engagement through well-prepared interviews and clear amendments
• Strategic use of continuations when they support a long-term portfolio plan

Common Prosecution Steps

Depending on the case and art, prosecution often includes:

• Responding to Office Actions with targeted arguments and amendments
• Examiner interviews to clarify claim interpretation and speed resolution
• Considering RCE, continuation, or divisional filings where appropriate
• Appeals to the PTAB when necessary to defend scope and correct legal errors

What You Receive

We aim to keep decision points clear. Deliverables commonly include:

• A summary of each Office Action with plain-language options
• Recommended response strategy with pros, cons, and expected outcomes
• Draft responses and proposed claim amendments for review

How The Process Works

1. We review the Office Action and align on desired claim scope
2. We propose a response strategy and, when useful, request an interview
3. We draft the response with a focus on clarity, support, and record quality
4. We track next steps, including allowance, continuation planning, or appeal