After completion of the patent application drafting process, Patent Prosecution begins. Patent Prosecution is a process by which the National Patent Office Examiner will review the application for procedural compliance, merits, discrepancies and a search for relevant Prior Art. They compare those findings to the claims of the application and grant a patent – or, in most cases – return it for amendments issuing an “Office Action.”
Each Office Action requires a timely and adequate response by you or your agent. In a case of the Examiner arguing for obviousness or anticipation, appropriate argument must be provided to reverse the Examiner’s opinion. You may choose to agree with it and instead amend the scope of the claim in question. The amount of Office Action you might expect is not known, but predictable to a certain extent. Seeking broader protection by using “broad” claims will result in more Office Actions, as the Examiner in his search will be able to find more relevant Prior Art. When claims are “narrowed”, less prior art will be found and less Office Actions issued. However, the scope of protection of your patent will be narrowed as well.
When a patent is filed in multiple jurisdictions, like a medical device patent, an examiner from each will respond with an Office Action. It’s important to keep in mind that each examiner will not necessarily cite the same prior art in response to your claims on file.