Patent prosecution refers to all kind of task done by a Patent Attorney or a Patent Agent in connection to a patent application on behalf of the applicant starting from filing of an application till the end of the life of the Patent. It involves the interaction between the applicants, attorney and the Patent Office. Patent prosecution is distinct from patent litigation which describes legal action relating to the infringement of patents.
Patent prosecution in India
Patent prosecution in India can be divided into the pre-grant and post-grant opposition.
Pre-grant prosecution :
It includes the discussion of invention between inventor and an Attorney, prior art search, drafting an application, preparation for require forms and execution of documents ,filing an application under national law, as a PCT application under the Patent Co-operation Treaty, Conventional application under Paris Convention. Other tasks such as filing of a request for examination, amendment, negotiation with the patent office, preparation of office action and attending hearing in case of any objection by the Patent Office, filing and defending pre-grant opposition, abandonment.
Post-Grant Prosecution :
Post grant prosecution refers to the post-grant amendment of the application such as amendment in the name of the applicant, recent updates of the application status in the foreign countries, filing and defending the applicant for post-grant opposition, payment of renewal fees, restoration of patents, reissue of the patent, reexamination of the patent, reviewing file history or file checking, licensing etc.
Both the pre-grant and post-grant prosecution requires a Patent Attorney or Patent Agent who has a sound knowledge in the technical field and expertise in the prosecution. Patent system is complicated and time consuming. It requires close scrutiny at every development of the case, failure to do so, may lapse the patent automatically and the applicant and an inventor might loose his right over his patent. Therefore, it is always suggested to hire a well equipped attorney to track the development of the application or a patent. It is well aware that the value of a patent is largely dependent upon skilled preparation and prosecution