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Patent Prosecution

What is the difference between formal and substantive examination?

Formal examination checks if the documents meet legal requirements (format, fees). Substantive examination checks the actual content: whether the invention is new, inventive, and industrially applicable.

How do I respond to a rejection from the patent office?

You must file a written response arguing against the examiner's findings or amending your claims to overcome the objections. This must be done within strict deadlines to keep the application alive.

Can I speed up the patent prosecution process?

Yes, Sakpatenti offers an accelerated examination procedure for an additional fee. This significantly reduces the waiting time for the first office action and the final decision.

What happens if I miss a deadline for an Office Action response?

Missing a deadline usually results in the application being deemed withdrawn. However, in some cases, rights can be reinstated if you pay a surcharge and file the response within a grace period.

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Patent Prosecution is a complex process that begins after filing a patent application and continues until the patent is granted (or refused). It involves communication, argumentation, and negotiation between the applicant and the patent office (Sakpatenti). It is rare for a patent to be granted on the first try without any objections. Typically, the examiner finds similar patents, questions the novelty of the invention, or requests clarification of the claims. The patent prosecution service involves qualified responses to these "Office Actions." A patent attorney analyzes the examiner's comments, amends the patent claims without losing the essence of protection, and proves the uniqueness of the invention. This service is crucial for obtaining a patent, as an incorrect response can lead to the rejection of the application.

What Does Patent Prosecution Service Cover?

Patent attorneys manage communication with Sakpatenti:

  • Formal Examination Responses: Correcting technical deficiencies in the documentation.
  • Substantive Examination Responses: The most difficult stage, where the examiner claims the invention is not new. The lawyer prepares technical arguments regarding the differences.
  • Claim Amendments: Narrowing or altering claims to satisfy the examiner's requirements.
  • Oral Hearings: Meeting with the examiner to reconcile positions.
  • Appeals: Appealing the examiner's negative decision to the Chamber of Appeals of Sakpatenti.
  • PCT National Phase Entry: Managing the prosecution stage of an international application in Georgia.

Real-World Scenarios Where You Need This Service

Prosecution is necessary when:

  • Examiner Rejection: You received a letter from Sakpatenti stating your invention already exists (another patent is cited). You need a professional to justify the difference.
  • Claim Clarification: Sakpatenti believes your claim is too broad and needs specific details.
  • Deadline Compliance: You have limited time to respond. Missing the deadline results in the application being withdrawn.
  • International Application: You filed a PCT application and need a local representative to navigate the procedures in Georgia.

Georgian Legal Framework and Regulations

Patent prosecution is regulated by the Patent Law of Georgia and bylaws regarding examination procedures. Examination is divided into two stages: formal and substantive. Substantive examination checks for novelty, inventive step, and industrial applicability. The applicant has the right to request a suspension of examination, extension of deadlines, or a meeting with the examiner. The Statute of the Chamber of Appeals is also important in case of disputes.

Service Process Step-by-Step

The process starts after filing:

  1. Receiving Notification: Sakpatenti sends a "Notice of Deficiency" or a "Preliminary Decision."
  2. Analysis: The attorney studies the examiner's arguments and cited literature.
  3. Strategy: Decision—agree with the examiner and amend claims, or argue against them.
  4. Response Submission: Preparing and sending a reasoned letter.
  5. Final Decision: Grant of patent or refusal (which can be appealed).

Why Choose Legal.ge?

Patent prosecution is like a game of chess—one wrong move and the patent is lost or becomes very weak. On Legal.ge, you will find experienced patent attorneys who know the nuances of examination and can secure the broadest possible rights for your invention.

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