Patent Prosecution

What It Means

Patent prosecution refers to the back-and-forth interaction between a patent applicant (or their attorney) and a patent examiner at the USPTO. Despite the name, it has nothing to do with criminal law — "prosecution" in patent law means pursuing or advancing a patent application toward grant. The process typically begins when the examiner issues an "office action," a written communication that may reject some or all of the patent claims based on prior art or other legal grounds. The applicant then responds by arguing against the rejections, amending the claims to narrow their scope, or presenting additional evidence. This exchange can go through multiple rounds over months or years. Skilled patent prosecution is an art: the applicant must balance getting the broadest possible claims (maximum protection) against the risk of having claims rejected entirely. Too broad and the examiner will find prior art that overlaps; too narrow and the patent may not cover competitors' products. The prosecution history — the complete record of all communications between the applicant and the examiner — becomes a public document and can later be used in court to interpret the meaning of patent claims. Companies with large patent portfolios may have dozens of applications in prosecution simultaneously, each managed by specialized patent attorneys or agents.

Frequently Asked Questions