Patent prosecution


Beginning from the moment of filing, the patent application passes certain stages of the registration procedure. As a result, the patent is granted or the application is withdrawn. Patent procedure has its own features in each country which are regulated by national legislation. For successful registration in addition to correctly drafting the application, it is necessary to pass successfully all stages of registration. The organization of the patent process includes preparation and filing  all necessary documents within the time frame established by Patent Office, use of certain regulated forms in correspondence, timely payment of prescribed patent fees, etc.

Our qualified specialists track all  deadlines and provide client relevant information: official notifications (translation and comments if necessary), notifications on status of application, information on necessary further actions, information on expenses, etc.

Office Action

An important situation in the application prosecution which requires special attention is the receipt of the Office Action. Depending on specifics of subject matter of invention and approved protection strategy, as we wrote earlier in the article “Patent drafting strategy & Office Actions”, we can foresee the probability of receiving an Office Action in the country of your interest and minimize corresponding risks. And, even in worst case, when Office Action was issued, many years of experience and skills of our specialists will allow getting out of the situation with most positive decision.

An Office Action means that examiner analysed your application and believes it does not meet conditions of patentability and cannot be granted a patent. In this situation,  the country’s Patent Office assumes that applicant (his representative), within the prescribed time limits, will submit to Office his response in defence of the application, which must contain arguments confirming invention patentability.

Specifics of preparing responses to such requests vary from country to country. It is necessary to consider features of application, aspects of Office Action, individual expert’s approach of considering the application. To some extent, the expert’s actions can and should be expected in advance, so that, even if Office Action is issued, a proper response can be prepared that will lead to a positive decision on this application.

Our specialists, having experience in granting patents all over world, also after negotiations with experts and Office Actions, are ready to help the client in submitting successful response to Office Action considering all factors listed above, while keeping maximum scope of rights for the client, without limitation of claims.