The specification is a written description of the invention and must clearly describe the manner and process of making and using the invention. It must be specific enough to enable a person of skill in the art to make and use the invention. The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention or discovery.
The claims legally define the features of the invention and therefore, are the most important part of the application.
Drawings must be included when necessary for understanding the nature of the invention.
An oath or declaration must be signed and filed with the application or soon thereafter, stating that the named inventor is believed to be the original inventor of the claimed invention. In the oath, the Applicant acknowledges that they have a duty to disclose any relevant information known to or later discovered by the inventor. This information is disclosed to the United States Patent and Trademark Office in an Information Disclosure Statement.
The Examination Process
The patent application is filed in the Patent and Trademark Office and is assigned to a Patent Examiner with expertise in the area of the invention. The Examiner will read the application and determine whether the application complies with United States Patent and Trademark Office formalities and statutory requirements. The Examiner will make a search of all of the available public information.
After the examination and search is complete, the Examiner will summarize their findings in a Non-Final Office Action. The Examiner may object to informalities in the claims (an objection), reject the claims, allow claims, or a combination thereof.
If the claims are allowed, the Examiner believes that the claims are patentable. On the other hand, if the examiner rejects the claims, the Examiner believes that the claims are not patentable and will supply reasons and cite documents to explain their rejection. The Examiner will object to the claims if they are in improper form or have another defect. Objections are typically overcome by following the Examiner’s instructions.
If the Examiner rejects the claims, the Applicant will typically file an Amendment and Response. In the Amendment and Response, the Applicant will respond to the Examiner’s comments by either (1) amending the claims, (2) arguing against the rejection, or (3) a combination thereof.
In the Amendment and Response, the Applicant must point out the errors in the Examiner's argument and respond to every objection and rejection. If needed, the Applicant may amend the claims and explain how the amended claims are distinguished from the art.
After the Applicant files an Amendment and Response, the Examiner will consider the amendments and the Applicant’s arguments. If the Examiner agrees with the Applicant, the Examiner may allow the claims and issue a Notice of Allowance. If the Examiner agrees with the Applicant, but then proceeds to find new reasons to reject the claims, the Examiner will issue another Non-Final Office Action.
If the Examiner disagrees, the Examiner will issue a Final Office Action. After a Final Office Action, the Applicant may amend the claims as the Examiner may suggest or pay a fee and file an Appeal to the Board of Appeals. During an Appeal, the Board will examine the merits of both sides and rule accordingly. Instead of filing an Appeal, Applicants typically file a Request for Continued Examination (RCE). In an RCE, the Applicant pays a fee and the examination process continues.
Potential Time Bars
An inventor has a grace period of one year in the United States in which to file a patent application. During that one year period, an inventor may place their invention in public use or on sale without losing their right to apply for U.S. patent protection. However, if the Applicant does not file an application within one year, the invention is deemed to be dedicated to the public and is not patentable.
There is an exception to the one year grace period and is known as "experimental use." The "experimental use" exception permits some public use of the product by an inventor in order to enable him or her to perfect the invention before applying for a patent. Market testing is not experimental use.
Patent Application Publications
Unless the Applicant specifically requests non-publication and decides not to file outside the United States, all U.S. patent applications are published at eighteen (18) months from the filing date or from an earlier priority date. As a result of the publication of the application, the Applicant has "provisional rights" to the published claims. That is, if the claims that eventually issue in the patent are substantially similar to the published claims, then additional damages may be available for the time period between publication and issuance.
Public Access
After publication of the application, the entire contents of the application, other papers, and responses are available to the public via the USPTO’s Public Pair (http://portal.uspto.gov/external/portal/pair).
However, if the Applicant requested that the patent application not be published, no information concerning the application is given to the public without the permission of the Applicant except in special limited circumstances. Then, the information contained in the application will be made public only if the patent is granted. Only after a patent is actually issued is the information made public.
Patent Pending
After the patent application is filed, the words "patent pending" may be placed on the invention to provide notice of potential patent rights to competitors. If the patent issues, the words “patent pending” should be changed to the specific patent number. This provides further notice to competitors.
Costs
The expenses associated with obtaining patent protection include patent attorney fees and United States Patent and Trademark Office fees, and if applicable outside the United States, translation fees.
Patent Attorney Fees
Patent attorney fees include the cost of (i) drafting the patent application, (ii) drafting the necessary formal documents, and (iii) preparing responses to the Examiner's Office Actions.
Patent attorney fees can be eliminated completely if the Applicant drafts and prosecutes the patent application themselves, as discussed above. However, due to the highly complex nature of the process, this is not recommended.
United States Patent and Trademark Office Fees
The United States Patent and Trademark Office fees are adjusted every year, usually upwards. A listing the various United States Patent and Trademark Office Fees is posted on this website. The fees are reduced by half for a small entity that include (i) an individual, (ii) a business with 500 or fewer full-time, part-time and temporary employees (weighted average), or (iii) a qualifying non-profit organization or institution. Failure to pay any of the government fees when due can result in abandonment of the application and/or patent.
Patent Rights Enforcement
With a patent, the owner may prevent others from making, using or selling the patented invention within the United States for the term of the patent. Although others may make the patented invention outside of the United States, they are not permitted to sell or use the patented invention within the United States. Likewise, others are not allowed to make the invention in the United States for use or sale outside of the United States.
Before bringing a court action against an infringer, the patentee typically offers the infringer a license to the patent. The license may include an initial payment and maybe a royalty for each unit sold. If the parties cannot agree to a license, a court action against the infringer may be brought in which the patent owner may seek both an injunction against the infringer and the recovery of monetary damages. Although the patent is presumed valid, a court may later find that the patent is not valid and therefore, unenforceable.
Freedom to Operate
A patent confers upon the owner the exclusive right to exclude others from "making, using, and selling" the patented invention. The issuance of the patent does not confer upon the owner the right to make, use, and sell the patented invention. One reason for this distinction is that the patented invention may be dominated by a prior patent. In that case, making, using, and selling the patented invention is subject to the prior patent. The prior patent may be broad enough to cover the second patent. Whether a license is required to practice the second patent is based on the claim language of the first patent.
Timing
An Applicant should expect the process to take between one to four years from the filing date of a patent application to obtain an issued patent.