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SAM IP Patent Attorneys

Patent Prosecution

There are two general steps that are made when obtaining a utility patent: the preparation and filing of the nonprovisional patent application and the prosecution of the patent application. When a nonprovisional patent application is filed with the United States Patent and Trademark Office, it is put in line with all of the other patent applications waiting to be examined. Eventually, sometimes over a year later, the patent application will be assigned to a patent examiner. This is when patent prosecution between the patent attorney and the patent examiner begins. The patent examiner issues office actions, usually intended to narrow the scope of the patent claims. The patent attorney responds to these office actions on the inventors behalf arguing for broader claims. Patent prosecution will end once a notice of allowance is issued by the patent examiner and the patent issues. 

More often than not, all of the claims of the nonprovisional patent application will be rejected upon the issuance of the first office action. This is not uncommon as the nonprovisional application is written very broadly to allow the inventor the potential to gain as broad of protection as possible. Office Actions usually contain various rejections based on the requirements of patentability. The patent examiner will conduct an in-depth patent search upon examining the patent application and will try and find other patents and publications ("prior art") similar to your invention. The patent examiner may use these to reject the claims of the patent application on novelty or obviousness grounds. At the end of prosecution, amendments will have been made such that the patent claims meet the requirements of patentability based on the patent examiner's findings. 


There are many advantages of having a patent attorney prepare, file and prosecute your nonprovisional application. A patent attorney not only has the technical background to understand and properly describe your invention in the patent application, but a patent attorney also has the legal background to prepare your application in light of potential litigation. This legal knowledge and understanding in preparing your patent application will become a huge asset to you and your company when you will need to enforce your patent against infringers.   

At Sam IP Legal Solutions, we have the legal and technical knowledge to provide you with the greatest degree of protection for your invention at an affordable cost. Contact us today to get started in securing patent rights for your inventions.

Get Help Now


(650) 285-1799


Colorado & Eastern Utah........

(801) 753-9055

(435) 650-8019

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For answers to questions or for counseling, please contact our office. The information you obtain at this site is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation. We invite you to contact us and welcome your calls, letters and electronic mail. Contacting us does not create an attorney-client relationship. Please do not send any confidential information until such time as an attorney-client relationship has been established.

Contact Our Attorneys Today To Begin Your Patent Protection

Our patent attorneys are ready to listen to you and to tailor a unique plan that fits your needs and grants you the greatest degree of protection at an affordable price. We offer a flat-fee quotes for nonprovisional patent applications and hourly rates depending on our clients' unique situations and needs. If you are ready to begin your patent protection or have questions about the patent process, call us today or fill out our message form.   


(650) 285-1799


(801) 753-9055

Colorado & Eastern Utah

(435) 650-8019

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