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IP skills · Patent prosecution

Patent Prosecution Course: What to Learn and Where to Learn It

Patent prosecution is the back-and-forth with the USPTO that turns an application into a patent. This page sets out what a solid course on it covers, the realistic ways to learn it, and exactly which parts of Wysebridge's courses teach it.

What patent prosecution is

Prosecution starts when an application is filed and ends when it issues as a patent or is abandoned. In between, an examiner searches the claimed invention, issues office actions that reject or object to claims, and the applicant replies with amendments, arguments and evidence. The rules for every step are in the Patent Act (title 35 of the U.S. Code), the USPTO's rules (title 37 of the Code of Federal Regulations) and the Manual of Patent Examining Procedure, the MPEP.

It is a procedural skill with legal judgment on top. The procedure is fixed and testable: what a reply must contain (37 CFR 1.111), how long you have to file it (35 U.S.C. 133 and 37 CFR 1.136), what happens after a final rejection (37 CFR 1.113 and 1.116). The judgment is in choosing between amending, arguing, filing evidence, interviewing the examiner or appealing, and in knowing what each choice costs the claim scope later.

Only registered patent practitioners (patent agents and patent attorneys) may represent others before the USPTO in patent matters. Registration requires passing the USPTO registration examination, the patent bar, which tests this procedure directly from the MPEP.

Who needs to learn it

Patent bar candidates

The registration exam is largely prosecution procedure: filing, examination, replies, appeals and post-issuance practice under the MPEP.

New patent agents and associates

Passing the exam teaches the rules; writing a persuasive response to a real office action is a separate, practiced skill.

Patent paralegals and docketing staff

Deadlines, extensions, fees and the form of each paper are where prosecution most often goes wrong.

In-house engineers and inventors

Reading an office action and talking with outside counsel about claim scope saves time and money.

What a good patent prosecution course covers

A course worth taking should walk through the life of an application in this order, with the governing rule cited for each step. Check any course's outline against this list.

  1. 01

    The application as filed

    Parts of a nonprovisional application, provisional applications and priority, filing receipts and formal requirements.

    MPEP 600; 35 U.S.C. 111, 119

  2. 02

    Restriction and election

    When an examiner can require you to pick one invention, how to elect with or without traverse, and divisional practice.

    MPEP 800; 35 U.S.C. 121

  3. 03

    Reading an office action

    Rejections under 35 U.S.C. 101, 102, 103 and 112, objections, and what the examiner must show for each.

    MPEP 706, 2100

  4. 04

    Replying and amending

    What a complete reply must address, how claim amendments are marked, the shortened statutory period, extensions of time and the six-month statutory limit.

    37 CFR 1.111, 1.121, 1.136; MPEP 710, 714

  5. 05

    Evidence, not just argument

    Declarations under Rule 132 (unexpected results, commercial success, eligibility evidence) and Rule 130 declarations under the AIA exceptions.

    37 CFR 1.130, 1.132; MPEP 716, 717

  6. 06

    Examiner interviews

    When to ask for one, how to prepare an agenda and proposed amendment, and recording what was agreed.

    MPEP 713

  7. 07

    Final rejection and after-final practice

    Limits on after-final amendments, requests for continued examination (RCE) and continuation applications.

    37 CFR 1.113, 1.114, 1.116; MPEP 706.07, 211

  8. 08

    Appeal to the PTAB

    Notice of appeal, appeal brief, the examiner's answer and when appeal beats another round of amendments.

    35 U.S.C. 134; MPEP 1200

  9. 09

    Duty of disclosure and IDS

    The duty of candor, information disclosure statement timing and fees, and the consequences of getting it wrong.

    37 CFR 1.56, 1.97, 1.98; MPEP 609, 2000

  10. 10

    Allowance through maintenance

    Notice of allowance, issue fee, patent term adjustment, and maintenance fee windows after grant.

    MPEP 1300, 2500, 2700

  11. 11

    Abandonment and revival

    How applications go abandoned and the petition to revive an unintentionally abandoned application.

    37 CFR 1.137; MPEP 711

  12. 12

    Representation and ethics

    Who may practice before the USPTO, powers of attorney, and the USPTO Rules of Professional Conduct.

    37 CFR part 11; MPEP 400

Ways to learn patent prosecution, compared

No single program does everything. Rules are best learned from the MPEP with a structured course; response-writing is learned by doing it under review. Here is how the realistic options compare.

Ways to learn patent prosecution, compared
OptionFormatCostCredentialBest for
Law school course or clinicSemester course, seminar or clinic on patent prosecution or patent practiceTuition; set by each schoolAcademic credit toward a JD or LLMLaw students building toward practice
CLE and professional programsLive or recorded programs on prosecution strategy and recent USPTO practice, often by practitionersPer program; check the providerCLE credit where the program is approved in your statePracticing attorneys and agents keeping current
USPTO free resourcesThe MPEP, the consolidated laws and rules, and USPTO webinarsFreeNoneAnyone checking a rule at its source
Patent bar prep (Wysebridge)Lessons, question bank and timed exams built on the MPEP$189/month or $594 one paymentPrepares you for USPTO registration; the exam itself is the credentialEngineers and scientists becoming patent agents
Wysebridge IP coursesSelf-paced online chapters with quizzes$297 per course, or $397 with the certificate trackOptional Wysebridge certificate; not CLE or a licenseEngineers, founders, paralegals and in-house teams
On-the-job trainingDrafting responses under a registered practitioner's reviewPaid as part of a jobExperience; registration still required to signTechnical specialists and new agents at firms

Third-party costs vary by school, program and state, so they are described rather than priced. Wysebridge prices are from the live catalog.

How Wysebridge covers patent prosecution

Wysebridge does not sell a stand-alone patent prosecution course. Prosecution is taught across the products below; this is exactly where.

Both courses are also included in Wysebridge ONE.

Patent Bar prep · MPEP chapters

Patent Bar exam program

Patent Bar Monthly or Patent Bar One-Pay: $189/month or $594 one payment

The registration exam tests prosecution procedure from the MPEP. The program teaches these chapters with practice questions and timed exams. It prepares you to answer procedure questions correctly; it does not grade written office action responses.

  • MPEP 600 Parts, Form, and Content of Application
  • MPEP 700 Examination of Applications
  • MPEP 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
  • MPEP 1200 Appeal
  • MPEP 1300 Allowance and Issue
  • MPEP 2000 Duty of Disclosure
  • MPEP 2100 Patentability
  • MPEP 2500 Maintenance Fees
  • MPEP 2700 Patent Terms and Extensions

Course · 20 chapters

U.S. IP Law

$297 per course, or $397 with the certificate track

A narrative walk from filing to allowance, the patentability requirements examiners apply, and post-grant challenges at the PTAB.

  • Ch. 8 The Inventor's Bargain: Anatomy of the U.S. Patent System
  • Ch. 9 The Four Gates: Novelty, Non-Obviousness, Utility, and Eligibility
  • Ch. 11 The Dance of Prosecution: From Filing to Allowance
  • Ch. 12 Crossing the Finish Line: Allowance, Issuance, and Maintenance
  • Ch. 13 Challenging the Grant: PTAB, Inter Partes Review, and Post-Grant Proceedings

Course · 16 modules with the Practice Lab

Patent Drafting & Prosecution Practicum

$297

Answer a simulated office action, docket its deadlines, interview the simulated examiner and decide what to disclose in an IDS.

  • M11 Examiner perspective and amendment tradeoffs
  • M13 Professional practice: docketing, client reporting and workflow
  • M14 Examiner interviews
  • M16 Information disclosure statements

Free

The MPEP reader

Free

Read and search the full MPEP free, with highlights and notes. Every rule cited on this page is there.

What we do not offer: CLE credit, or one-on-one review of real office action responses for clients.

Frequently asked questions

A course on the procedure for getting a patent through the USPTO: reading office actions, amending claims, arguing and filing evidence, interviews, final rejections, RCEs, appeals and IDS practice. A good one cites the MPEP and 37 CFR for each step.

Learn the procedure the USPTO tests.

Patent bar prep teaches prosecution from the MPEP, chapter by chapter, with practice questions and timed exams.