Patent Prosecution


The patent prosecution services offered by P. F. O’Reilly Law Office include, but are not limited to, the following:

 Drafting of Provisional Patent Applications
 – A provisional patent application is filed prior to a regular patent application.  Unlike a regular, non-provisional application, a provisional patent application is not examined by the USPTO, and is not required to contain any claims.  The primary purpose of filing a provisional patent application is so that a later-filed regular application is able to claim the benefit of the provisional application (i.e., for the purpose of establishing an earlier filing date).  However, in order to take advantage of the earlier filing date, the non-provisional patent application must be filed within one year of the provisional application filing date.

 Drafting of Regular, Non-Provisional Applications – A regular or non-provisional patent application is filed by an inventor(s) in order to pursue patent protection for his or her claimed invention.  A non-provisional patent application is examined by an examiner so as to assess whether or not the claimed invention is patentable (i.e., whether it satisfies the legal requirements for obtaining a patent).  Typically, non-provisional patent applications are examined by the USPTO in the order in which they are received.  However, there are several exceptions to this general rule.  First, the USPTO offers an accelerated examination program that produces a disposition in one year or less.  Secondly, there are several petitions that can be filed by an applicant in order to expedite the examination process.  One such petition is that for inventions pertaining to “Green” Technology.

 Drafting of International (PCT) Applications – Unlike a regular, non-provisional application filed in the United States, a patent cannot be granted on an international (Patent Cooperation Treaty) application itself.  However, if the inventor(s) wishes to file in multiple countries, filing a PCT application can streamline the process by enabling the inventor(s) to obtain a preliminary report on the patentability of the claimed invention, as well as providing an easier means of filing in a plethora of countries through the use of National Stage applications, which are otherwise known as 371 applications.

 Responses to Office Actions – During the course of patent prosecution, the USPTO sends one or more Office Actions to the applicant that delineate specific reasons for rejecting or allowing the applicant’s claims in view of the prior art.  In order to obtain a patent for a particular invention, all of the Examiner’s grounds of rejection must be skillfully overcome by the applicant or the applicant’s representative.  Typically, these rejections contain detailed legal rationale, and thus, are often most effectively rebutted by a skilled patent attorney or agent.

 Representation During Applicant-Initiated Interviews – In order to expedite the prosecution of a patent application, it is a good practice to request an interview with the Examiner to whom the case has been docketed.  However, because an interview often involves a detailed discussion of the relevant prior art and the legal principles pertaining to the case, it is normally in the applicant’s best interest to be represented at the interview by a registered attorney or agent.  After all, an effective interview can result in a valuable discourse between the attorney/agent and the Examiner which can, in turn, produce agreed upon claim language and the subsequent allowance of the case by the USPTO.

 Representation During Appeals – If the Examiner either finally rejects, or twice rejects, an applicant’s claim, the applicant has the right to file a Notice of Appeal with the Board of Patent and Appeals and Interferences (BPAI) at the USPTO, or alternatively, with a court of law having the authority to hear such an appeal.  If the Examiner decides to maintain the rejection after considering the applicant’s Notice of Appeal, then the applicant normally files an Appeal Brief in an effort to persuade the BPAI or court of law that the patent claim(s) was improperly rejected by the Examiner.

 Representation During Interference Proceedings – An interference proceeding, which is also known as a priority contest, is an inter partes proceeding between two or more parties that have claimed interfering subject matter.  The interference proceeding can be between two co-pending applications, or alternatively, between a pending application and a patent filed within one year of the pending application’s filing date.  The interference proceeding is conducted as an administrative proceeding before a panel of judges from the BPAI of the USPTO.

 Representation During Reissue Proceedings – A patent holder initiates a reissue proceeding in order to correct mistakes in his or her issued patent.  In certain instances, the mistake(s) for which correction is sought made be related to the scope of the claims in the issued patent.  For example, the patent holder may choose to file a “broadening reissue” in order to enlarge the scope of the patent claims.  However, a “broadening reissue” must be filed within two years from date on which the patent was granted.

 Representation During Ex Parte and Inter Partes Reexamination Proceedings – In general, a reexamination proceeding enables a third party or the inventor to request that the claimed subject matter of an issued patent be reexamined for patentability.  An ex parte reexamination proceeding is initiated by a third party, but once the request is made by the third party, the third party is no longer permitted to actively participate in the proceeding (e.g., a third party commences an ex parte reexamination proceeding against its competitor’s patent in order to challenge the validity thereof).  The subsequent correspondence in an ex parte reexamination proceeding is only between the patent owner and the examiner at the USPTO.  Inter partes reexamination proceedings are also initiated by third parties.  However, unlike an ex parte reexamination proceeding, the third party is permitted to participate in the inter partes proceeding following the commencement thereof.

** The list of services provided above is not meant to be an exhaustive list of all patent prosecution services provided by the P. F. O’Reilly Law Office.  Rather, it is merely intended to give the reader a general idea of the type of services offered.  Consequently, the reader is strongly encouraged to contact P. F. O’Reilly Law Office in order to inquire about the particular services that are desired.  All initial consultations are provided absolutely free of charge.


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