There is a natural tension between patent applicants – who often want broad patent protection to keep competitors out of their patch – and Patent Offices, whose legitimate job, as guardians of the public interest, is to prevent excessively broad or unjustified patent monopolies from being granted. Patent prosecution often involves an argument, albeit a well-mannered legal argument, between these opposed interests.
Most Patent Offices subject patent applications to careful scrutiny before deciding to grant or refuse them. As well as various formal tick-box steps, this prosecution process normally includes a search, made by the Patent Office themselves, for technology similar to your invention already in the public domain (the “prior art”) and then an examination, intended among other things to establish whether your invention involves the more-than-obvious “inventive step” required of a patentable invention.
The question of whether your invention is sufficiently different from the prior art depends on what we actually say your invention is in the claims of the patent application. At the examination stage there is often a process of negotiation and argument where the Patent Examiner will try to insist on the claims being narrowed, reducing the scope of your monopoly, before the case can be granted. Various legal tests come into play at this stage but chief among them is the one just mentioned – whether the invention was more than an obvious development of the prior art.
Examiners raise objections and it is our job – in close consultation with you – to find ways around them, often by a combination of legal and technical arguments with – where necessary – some tweaks (“amendments”) to the patent claims to capture the point of distinction between your invention and the prior art.The argument can take several years, although there are steps we can take to hurry it along. It is normally conducted in written correspondence but in difficult cases it can sometimes be necessary to present your case in person.