Patent Prosecution

Patent prosecution generally refers to the process of responding to the requirements set in written communications from the patent office. The patent prosecution begins after a patent application has been filed and concludes with a grant or a rejection of a patent. We provide end-to-end services that include filing patent applications, responding to the communications from the examining patent office, and close monitoring of pending patent applications. Patent prosecution may involve additional acts such as handling pre-grant oppositions from competitors, filing appeals with the Controller/Commissioner of the patent office and/or appellate boards, preparing exhibits, and attending hearings.

The non-final Office Action, also known as the First Examination Report (FER) in India and Extended European Search Report (EESR) in Europe, includes a first evaluation of the patent claims after the filing of a patent application. In the non-final office action, the patent examiner states his opinion on the patentability and patent-eligibility of the claims. After a review of the non-final office action, the applicant has the option of amending the claims, the specification, and the drawings to overcome the examiner’s rejections/objections.

The final office action, as the name suggests, is the last set of rejections/objections that is issued by the examiner after reviewing the applicant’s response to the non-final office action(s). The final office action may include the same rejections as the non-final office action(s) or may include new rejections.

An International Search Report (ISR) is issued under the provisions of the Patent Cooperation Treaty (PCT) by an International Search Authority (ISA) chosen at the time of filing of the PCT application. The ISR includes a list of identified documents, in the form of a Search Report, which may be relevant to the patentability of the claims in the PCT application. Along with the Search Report, the ISA also issues a Written Opinion underlying the basis of the evaluation of the patentability of claims by the ISA. Responding to the ISR issued by the ISA may help in expediting the prosecution of the PCT application when it enters the National/Regional Phase in several jurisdictions.

The process of the design office action response includes the response to the objections raised by the design patent examiner during the examination process of design patent. The design patent applications are also evaluated for their novelty and inventiveness in light of the designs already publicly available in the state of the art.