3.1 Overview

After a patent application is filed, it is normally not immediately examined. In US and Canada, only after a patent application is published 18 months after its filing date, it is started to be examined. During the patent examination, a patent examiner tries to find all defects of a patent application regarding all patentability aspects, including novelty, obviousness, subject matter, enablement, utility, indefiniteness, etc., which results in an office report (“action”). After receiving an office action, applicant may argue against the objections in the report, amend the claims and or the specification to make the objections moot, or abandon the application all together.

Eventually, the patent application is either allowed to become a patent, or abandoned without any patent rights.

The process of patent examination is often called patent prosecution.

Prior Art

All publicly-available information before the priority date, or filing date if priority is not claimed, of a patent application is called prior art. During patent prosecutions, documents in prior art are often cited against patent applications regarding novelty or obviousness purposes. Note that documents disclosed by the inventor(s) in the grace period is not citable and not considered to be part of the prior art.