Applicant’s Reply

March 19, 2010 | FAQs
The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner’s Office action. The applicant must reply to every ground of objection and rejection in the prior Office action. The applicant’s reply must appear throughout to be a bona fide attempt to advance the case to final action or allowance. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration. In amending an application in reply to a rejection, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. He/she must also show how the claims as amended avoid such references or objections. After reply by the applicant, the application will be reconsidered, and the applicant will be notified as to the status of the claims, that is, whether the claims are rejected, or objected to, or whether the claims are allowed, in the same manner as after the first examination. The second Office action usually will be made final. Interviews with examiners may be arranged, but an interview does not remove the necessity of replying to Office actions within the required time.

Office Action

March 19, 2010 | FAQs
The applicant is notified in writing of the examiner_s decision by an Office “action” which is normally mailed to the attorney or agent of record. The reasons for any adverse action or any objection or requirement are stated in the Office action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application. If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first Office action by the examiner, relatively few applications are allowed as filed.

Examination of Applications and Proceedings in the United States Patent and Trademark Office

March 19, 2010 | FAQs
Applications, other than provisional applications, filed in the United States Patent and Trademark Office (USPTO or Office) and accepted as complete applications are assigned for examination to the respective examining technology centers (TC) having charge of the areas of technology related to the invention. In the examining TC, applications are taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed or in accordance with examining procedures established by the Director. Applications will not be advanced out of turn for examination or for further action except as provided by the rules, or upon order of the Director to expedite the business of the Office, or upon a showing which, in the opinion of the Director, will justify advancing them. The examination of the application consists of a study of the application for compliance with the legal requirements and a search through U.S. patents, publications of patent applications, foreign patent documents, and available literature, to see if the claimed invention is new, useful and nonobvious and if the application meets the requirements of the patent statute and rules of practice. A decision is reached by the examiner in the light of the study and the result of the search. As a result of the examination by the Office, patents are granted in the case of about two out of every three applications for patents which are filed.

Restrictions

March 19, 2010 | FAQs
If two or more inventions are claimed in a single application, and are regarded by the Office to be of such a nature (e.g. independent and distinct) that a single patent should not be issued for both of them, the applicant will be required to limit the application to one of the inventions. The other invention may be made the subject of a separate application which, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. A requirement to restrict the application to one invention may be made before further action by the examiner.

Models, Exhibits, And Specimens

March 19, 2010 | FAQs
Models or exhibits are not required in most patent applications since the description of the invention in the specification and the drawings must be sufficiently full, clear, and complete and capable of being understood to disclose the invention without the aid of a model. A working model, or other physical exhibit, may be required by the Office if deemed necessary. This is not done very often. A working model may be requested in the case of applications for patent for alleged perpetual motion devices. When the invention relates to a composition of matter, the applicant may be required to furnish specimens of the composition, or of its ingredients or intermediates, for inspection or experiment. If the invention is a microbiological invention, a deposit of the micro-organism involved is required.

Drawing

March 19, 2010 | FAQs
The applicant for a patent will be required by law to furnish a drawing of the invention whenever the nature of the case requires a drawing to understand the invention. However, the Director may require a drawing where the nature of the subject matter admits of it; this drawing must be filed with the application. This includes practically all inventions except compositions of matter or processes, but a drawing may also be useful in the case of many processes. The drawing must show every feature of the invention specified in the claims, and is required by the Office rules to be in a particular form. The Office specifies the size of the sheet on which the drawing is made, the type of paper, the margins, and other details relating to the making of the drawing. The reason for specifying the standards in detail is that the drawings are printed and published in a uniform style when the patent issues, and the drawings must also be such that they can be readily understood by persons using the patent descriptions.

Specification (Description and Claims)

March 19, 2010 | FAQs
The specification must include a written description of the invention and of the manner and process of making and using it, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the technological area to which the invention pertains, or with which it is most nearly connected, to make and use the same. The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter, or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor for carrying out the invention must be set forth. In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it. The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter that the applicant regards as the invention. The portion of the application in which the applicant sets forth the claim or claims is an important part of the application, as it is the claims that define the scope of the protection afforded by the patent and which questions of infringement are judged by the courts.

Publication of Patent Applications

March 19, 2010 | FAQs
Publication of patent applications is required by the American Inventors Protection Act of 1999 for most plant and utility patent applications filed on or after November 29, 2000. On filing of a plant or utility application on or after November 29, 2000, an applicant may request that the application not be published, but only if the invention has not been and will not be the subject of an application filed in a foreign country that requires publication 18 months after filing (or earlier claimed priority date) or under the Patent Cooperation Treaty. Publication occurs after expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application. Following publication, the application for patent is no longer held in confidence by the Office and any member of the public may request access to the entire file history of the application. As a result of publication, an applicant may assert provisional rights. These rights provide a patentee with the opportunity to obtain a reasonable royalty from a third party that infringes a published application claim provided actual notice is given to the third party by applicant, and a patent issues from the application with a substantially identical claim. Thus, damages for pre-patent grant infringement by another are now available.

Provisional Application for a Patent

March 19, 2010 | FAQs
Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. Provisional applications may not be filed for design inventions. The filing date of a provisional application is the date on which a written description of the invention, drawings if necessary, and the name of the inventor(s) are received in the USPTO. To be complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. The applicant would then have up to 12 months to file a non-provisional application for patent as described above. The claimed subject matter in the later filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application. If a provisional application is not filed in English, then any non-provisional application claiming priority to the provisional application must have a translation of the provisional application filed therein. See title 37, Code of Federal Regulations, Section 1.78(a)(5). Provisional applications are NOT examined on their merits. A provisional application will become abandoned by the operation of law 12 months from its filing date. The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.

Filing Fees

March 19, 2010 | FAQs
The filing fee of a non-provisional utility application (not design and plant applications) consists of a basic fee and additional fees. The basic fee entitles the applicant to present 20 claims, including not more than three in independent form. An additional fee is required for each claim in independent form which is in excess of three and an additional fee is required for each claim (whether independent or dependent) which is in excess of a total of 20 claims. If the application contains multiple dependent claims, additional fees are required. If the owner of the invention is a small entity, (an independent inventor, a small business concern or a non-profit organization), the filing fees are reduced by half if small entity status is claimed. If small entity status is desired and appropriate, applicants should file a written assertion of small entity status in addition to paying the small entity filing fee. The written assertion may be a simple statement on a transmittal letter such as “Applicant claims small entity status.” Applicants claiming small entity status should make an investigation as to whether small entity status is appropriate before claiming such status. To avoid errors in the payment of fees, it is suggested that the table in the enclosed patent application transmittal letter be used to calculate the fee payment.