Patent Prosecution


Patent Prosecution is not merely a process of interaction between an Applicant and/or his Legal Representative and a Patent Office with respect to patentability of a patent, but, for the Applicant, it is also a test of legal and technical competence that it believes the Legal Representative possesses. Patent prosecution is highly individualized and reflects the underlying skill set of each Attorney as the prosecution process itself involves high level of technical negotiation and interpretation of specific terminologies with the patent office, which in the end has high-impact value for the client.

Our Approach

IIPRD truly understands the inherent value of a patent application, its client’s business objectives and also the role of intellectual property in their organization. IIPRD therefore undertakes preparation and analysis of office action responses for patent applications and does so keeping in mind the best practices for each Patent Office it prepares responses for. The preparation of office action responses during the prosecution phase requires an in-depth analysis of the invention along with the prior arts taking into consideration the patentability criterions.

Prosecuting Indian patent applications

Our team, which includes Patent Agents and Patent Attorney in India , has extensive experience in prosecuting patent applications filed in the Indian Patent Office. As part of these prosecutions, we have responded to several examination reports issued by the Indian Patent Office. We have also attended several hearings in the Indian Patent Office as part of the patent prosecution process. Our experience has helped us in thoroughly understanding the Indian Patent Act and the nuances involved in prosecuting Indian patent applications.

Prosecution support for patent applications filed outside India

We have extensive experience prosecuting and successfully securing patents in foreign countries throughout the world. The Patent Agents and Patent Attorneys in our firm have substantial experience in prosecuting patent applications filed abroad in association with our foreign associates. We also provide patent prosecution support to other law firms and patent attorneys based outside India. Given the analysis required to respond to office actions and the time involved in performing the same, typically, most IP firms entrust us with preparing detailed responses to office actions.

Opposition / Re-examination Proceedings

IIPRD also provides complete support for the pre-grant as well as post-grant opposition procedures with respect to a patent. An interested party may oppose the grant of the patent based on grounds of opposition allowed under the respective laws by providing technical and legal arguments and associated references. IIPRD offers services to such clients in searching relevant prior art references and drafting Opposition Letters, which include all such references. IIPRD also offers it’s Services in drafting complete Response to Opposition which includes legal as well as technical arguments that can be used to enable the allowance of the claims in the application/affirm the validity of the opposed patent claims.

Some of the Salient Features of our Patent Prosecution Services include:

  • Preparing Responses to Office Actions
  • Strategizing Amendments and Arguments for a patent application for maximizing impact
  • Technical Analysis of Office Actions
  • Technical Analysis of Cited Prior Art references