Patent prosecution refers to the examination process when filing a patent application and obtaining a patent. Prosecution history refers to the communication between the examiner and the patent applicant. Other related terms are prosecution history estoppel, file history estoppel, and disclaimer.
What does patent prosecution mean?
New inventors often are confused as to the meaning of patent prosecution. They think of a criminal court and wonder what a criminal court has to do with a patent application or a patent. Patents and criminal courts have nothing to do with each other. Rather, the term prosecution refers to the broadest sense of the word. Prosecution refers to a course of action (e.g., responding to an office action) to achieve an end goal (e.g., obtaining a patent). Patent prosecution refers to the inventor or a patent attorney responding to office actions and the like to obtain a patent. They are prosecuting a patent application to secure the patent.
What does prosecution history mean?
Prosecution history refers to any event related to the patent application with the US Patent office. For example, prosecution history includes all of the written communications between the inventor or applicant with the examiner. Additionally, prosecution history also refers to a verbal telephonic interview with the examiner.
Where can you find the prosecution history of a patent application?
You can find the prosecution history in the Patent Center.
After you enter the application, click on “Documents & Transactions” on the left-hand side. On the right side, click on all of the documents and you can download all of the communications between the inventor and the examiner.
What is the importance of the prosecution history?
The prosecution history is important because anything it says can and will be used against the patent owner. During the examination, the inventor or patent applicant may argue that the claimed invention isn’t X or doesn’t have a feature Y. When these things are said, an infringer can use X or Y without fear of patent infringement. The patent owner has made a disclaimer of the subject matter, namely, that the claimed invention doesn’t include X. It would be unfair to everyone if the patent owner was able to argue that the claimed invention is not X and get a patent but then sue someone for using the X feature. As such, inventors and patent applicants need to be careful what they say during prosecution to get a patent. The patent owner is subject to prosecution history estoppel or file history estoppel. They are prevented from arguing