Patent prosecution and patent litigation are two distinct processes, involving different rules and objectives.

What is Patent Prosecution? 

Patent prosecution is the process through which a patent is examined and granted. During patent prosecution, an examiner at the patent office reviews a patent application and may issue office actions detailing certain objections and rejections. These objections and rejections may be based on minor issues in the application or based on prior-filed patent applications and patents that disclose similar inventions (referred to as prior art). In response to these objections and rejections, the applicant can amend the application and/or submit arguments in an attempt to resolve the issues with the application and obtain a granted patent. It is common for at least one office action to be issued in relation to utility patent applications. 

What is Patent Litigation? 

Patent litigation generally refers to legal proceedings initiated in court by the patent holder (plaintiff) against an alleged infringer (defendant) to enforce the rights granted by the patent. Patent litigation may also arise before the Patent Trial and Appeal Board where the validity of a patent is being challenged by a third party. 

Key Differences Between Patent Prosecution and Litigation 

• Focus: Patent prosecution focuses on obtaining patent rights from the patent office, while patent litigation is adversarial involving the enforcement, validity, or defense of rights in court or before an administrative board.
• Participants: In patent prosecution, the primary interaction is between the applicant (inventor or assignee) and a patent examiner at the patent office. In patent litigation, the parties are generally the patent holder and a third-party challenger or alleged infringer.
• Outcome: The outcome of patent prosecution is the issuance (or rejection) of a patent by the patent office. In patent litigation, the outcome is a judgment, which may be a determination that infringement occurred and the resulting consequences.
• Process: Patent prosecution involves administrative procedures and interactions with patent examiners. Patent litigation involves formal legal proceedings with adherence to federal statutes, court rules, and procedures.

Regardless of Your Situation, an IP Lawyer Can Help 

Working with an experienced team of patent attorneys who can guide you through the process and advocate for your rights during a patent prosecution or patent litigation matter is the first step toward success.