A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.
Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.
Utility patents are by far the most common type of patent issued in the United States. They can typically be identified by their seven digit patent number (e.g. 1,234,567).
A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.
In general terms, a "utility patent" protects the way an article is used and works (35 U.S.C. § 101), while a "design patent" protects the way an article looks (35 U.S.C. § 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics.
A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter under 35 U.S.C. § 171. Specifically, if at the time the design was created, there was no unique or distinctive shape or appearance to the article not dictated by the function that it performs, the design lacks ornamentality and is not proper subject matter. In addition, 35 U.S.C. § 171 requires that a design to be patentable must be "original." Clearly a design that simulates a well-known or naturally occurring object or person is not original as required by the statute. Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a design patent application (35 U.S.C. § 171 and 37 CFR § 1.3).
A plant patent is granted by the Government to an inventor (or the inventor's hiers or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the inventor's right to exclude others from asexually reproducing, selling, or using the plant so reproduced. This protection is limited to a plant in its ordinary meaning:
The information presented in this publication is tailored to apply to and is limited to patents on asexually reproduced plants. While the United States Patent and Trademark Office (USPTO) does accept utility applications having claims to plants, seed, genes, etc., such practice is beyond the scope of this publication. General information regarding utility practice can be obtained by calling PTO Information Services Division at 1-800-786-9199, or from a registered patent attorney. Intellectual property protection for true breeding seed reproduced plant varieties is offered through the Plant Variety Protection Office, Beltsville, Md., which should be contacted for information regarding intellectual property protection for such crops.
The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.
In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.
The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.
The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.
Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.
A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.
In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if: “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . .”
If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost. The inventor must file on the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries. See 35 U.S.C. § 102.
Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be "Obvious". The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be "Nonobvious" to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable. See 35 U.S.C. § 103.
Prior Art is any printed publication that discloses one or more elements in a claim. A claim lacks Novelty if every element in the claim is disclosed in a single printed publication and the date of the printed publication was before the date of invention, or if a patent application disclosing the invention is filed before invention by the applicant. A claim can also be Statutorily Barred if a printed publication disclosed the invention more than a year before the Priority Date of the application. See 35 U.S.C. § 102. A similar definition of prior art is also used for determining Obviousness under 35 U.S.C. § 103.
Most prior art cited by the USPTO are patents, typically, but not necessarily, U.S. patents. However, almost any type of printed publication counts as prior art. Also note that published patent applications by others than the inventor now also can constitute prior art under 35 U.S.C. § 102(e).
The Priority Date of a patent application is the date utilized for determination of Statutory Bars under 35 U.S.C. § 102 and presumptively utilized as the invention date for determination of Novelty and Nonobviousness. It is typically the filing date of a patent application. However, it is possible to refer back to previous patent applications in order to claim their priority date. The previous patent application may be a Provisional patent application, a Nonprovisional patent application, or a foreign patent application. One requirement is that no New Matter can be claimed with that earlier priority date. Also, the child application must be filed while the parent application is still pending. Once issued or abandoned, it is too late.
Patent applications claiming priority of a previous patent application typically fall into one of three categories. Continuation patent applications are the simplest. They introduce no new matter. Divisional patent applications are a result of a Restriction Requirement where examination found multiple inventions. In response to a restriction requirement, one invention is typically chosen for prosecution, while claims to the remainder are cancelled. One divisional application can be filed for each of the other restricted inventions. Thus, if an examiner gives a four way restriction, the applicant can prosecute all of them as one regular application and three divisional applications. Finally, a Continuation-In-Part (CIP) patent application is a continuation that adds new matter. The priority date of the parent application is utilized for the old material, and the filing date of the CIP is utilized as the priority date for the new material added in the CIP.
Finally note that the maximum term of a patent is now twenty years from its Priority Date.
The United States Patent and Trademark Office (USPTO or Office) is the government agency responsible for examining patent applications and issuing patents. A patent is a type of property right. It gives the patent holder the right, for a limited time, to exclude others from making, using, offering to sell, selling, or importing into the United States the subject matter that is within the scope of protection granted by the patent. The USPTO determines whether a patent should be granted in a particular case. However, it is up to the patent holder to enforce his or her own rights if the USPTO does grant a patent.
The USPTO is an agency within the United States Department of Commerce. The USPTO is headed by the Commerce Department Undersecretary for Intellectual Property and Director of the USPTO. Reporting to him are the Commissioner for Patents and the Commissioner for Trademarks.
Article I, Section 8, Clause 8, of the United States Constitution provides that Congress shall have the power "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries". This clause grants Congress the power to enact the Patent (35 U.S.C.) and Copyright (17 USC) statutes.
Under the power granted by the United States Constitution, Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The patent laws underwent a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code (35 U.S.C.). Additionally, on November 29, 1999, Congress enacted the American Inventors Protection Act of 1999 (AIPA), which further revised the patent laws. See Public Law 106-113, 113 Stat. 1501 (1999).
The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and Trademark Office (USPTO) to administer the law relating to the granting of patents and contains various other provisions relating to patents.
"Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
"
This is a very broad definition. At one time, the USPTO excluded software from patentability under this statute. However, about a decade ago, the courts overruled the USPTO by pointing out that almost anything under the sun, as long as it falls under the wording of this statute is patentable. It has also been interpreted to include methods of doing business (as new and useful processes).
35 U.S.C. § 102 provides that an invention is not patentable if it lacks novelty or is precluded by a statutory bar. An invention lacks "Novelty" if it "was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent". Some of the "Statutory Bars" to patenting an invention include when "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States" and when the inventor has "abandoned the invention". A claim in a patent application is "Anticipated" if it is not patentable if it lacks Novelty due to, or is Staturorily Barred by a prior art reference.
35 U.S.C. § 103 provides that an invention is not patentable if it is "Obvious". "A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains...."
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Paragraph 1 lays out the basic requirements of a patent specification:
Written Description - the written description must fully, clearly, concisely, and in exact terms describe the invention.
Enablement - the written description must enable a person reasonably skilled in the relevant art to make and use the invention without undue experimentation.
Best Mode - the written description must also disclose what the inventor believes to be the best mode for carrying out the invention. This is also sometimes termed the "preferred embodiment".
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
See Claims below.
A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
See Independent Claims below
Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
See Dependent Claims below
A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
See Multiple Dependent Claims below
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Paragraph 6 provides for a special type of claims, termed "means for" claims. Thus, instead of claiming, for example, "a nail for attaching the first board to the second board", for attaching two boards together, one can claim "a means for attaching the first board to the second board". This may, for example, also cover screws, glue, etc.
Until recently, this type of claim was disfavored by many large companies in their patent applications, as the Doctrine of Equivalents (DOE) was felt to provide broader coverage. However, the DOE has recently been limited by the Courts, and thus, "means for" claims are becoming more popular again.
The Priority Date of a patent application is critical in determining whether or not prior art references "Anticipates", provides a statutory bar to, or makes Obvious the claims in a patent application. Typically, the Priority Date of an application is the date the application was filed. However, 35 U.S.C. §§ 119, 120, and 121 provides that in certain cases, an applicant can utilize the Priority Date of a previous patent application. This is most often done through referencing a previous Provisional, Nonprovisional, or Foreign patent application as a Continuation, Continuation-in-Part, or Divisional patent application.
The priority date of a patent application is primarily used in two ways. First, it is the date utilized for overcoming 35 U.S.C. §§ 102 and 103 references. Secondly, the maximum term of a utility patent can typically be no longer than twenty years from an application's Priority Date.
35 U.S.C. § 119(a-d) provide for priority based on a foreign patent application. 35 U.S.C. § 119 (e) provides for priority based on a provisional patent application. 35 U.S.C. § 120 provides for priority based on a non-provisional U.S. patent application.
"An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director..."
35 U.S.C. § 120 provides for a Priority Date based on the filing of a previous non-provisional United States patent application. This is typically in the form of a Continuation, Continuation-in-Part, or Divisional patent application.
The Code of Federal Regulations (CFR) is a codification of rules promulgated by the various agencies of the U.S. government by incorporation in the Congressional Record. 37 CFR is dedicated to patent and trademark rules. Thus, it contains the official rules of the United States Patent and Trademark Office (USPTO). The patent rules in 37 CFR implement the patent statutes 35 U.S.C.
The Manual of Patent Examining Procedures (MPEP) contains procedures utilized by the USPTO in its function of granting patents. It is based upon, and closely follows the patent rules in 37 CFR.
The United States judicial system is based on English Common Law. As such, it is up to the federal courts to interpret patent law. Courts are bound by Precedent or Stare Decisis to follow the decisions of that court and of higher courts.
The lowest courts in the United States federal court system are the United States District Courts. Every state, plus the District of Columbia, has at least one District Court. Larger states often divided into multiple districts.
Patent infringement suits are tried in District Courts, and appeals from the USPTO may be heard in the District Court for the District of Columbia, or taken directly to the Federal Circuit.
Appeals from the District Courts are heard in Circuit Courts of Appeal. The various District Courts are arranged in Circuits, with all of the Districts in one state being in the same Circuit.
Up until a little over twenty years ago, patent cases were heard in the Circuit Court in which the District Court originally hearing the case belonged. However, this resulted in significant differences in patent law between and among the Circuits. In 1982, the Court of Appeals for the Federal Circuit was granted exclusive jurisdiction to hear patent law appeals.
Given the case load of the United States Supreme Court, the result has been that the Federal Circuit today provides the vast majority of binding patent law case precedent. Because of the exclusive patent jurisdiction of this court, it has developed expertise in this arcane area of the law. Also, several of the judges on this court are former patent attorneys.
The highest court in the United States is the Supreme Court. It hears appeals from all of the Circuit Courts in the country. However, for the most part, their review of cases is discretionary, by Petition for Writ of Certiorari, due to their workload. The result is that this court rarely hears patent cases.
The specification is a written description of the invention and of the manner and process of making and using the same. The specification must be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention pertains to make and use the same.
It is preferable to use all of the section headings described below to represent the parts of the specification. Section headings should be in upper case without underlining or bold type. If the section contains no text, the phrase "Not Applicable" should follow the section heading.
The title of the invention should be placed at the top of the first page of the specification unless the title is provided in an application data sheet. The title of the invention should be brief but technically accurate and descriptive, preferably from two to seven words. It may not contain more than 500 characters. See 37 CFR § 1.72(a) and MPEP § 606.
Any nonprovisional utility patent application claiming the benefit of one or more prior filed copending nonprovisional applications (or international applications designating the United States of America) under 35 U.S.C. § 120, § 121 or § 365(c) must contain in the first sentence of the specification following the title, a reference to each such prior application, identifying it by the application number or international application number and international filing date, and indicating the relationship of the applications, or include the reference to the earlier application in an application data sheet. (See 37 CFR § 1.76.) Cross-references to other related patent applications may be made when appropriate. See 37 CFR § 1.78 and MPEP § 201.11.
Primarily, this section has been historically utilized to claim priority from other applications (or issued patents), provisional, nonprovisional, or foreign. Typically, the entire chain of priority is included. I also tend to include references to closely related applications and issued patents.
Pending applications are typically identified by title, serial number, application date, and, usually, inventors. Also, the current status of an application is also typically included. Issued patents are typically identified by title, patent number, issue date, and, usually, inventors. The relationship between other applications and patents is also typically included. Thus, you may have "This application is a continuation of patent X, which was a continuation-in-part of provisional application Y".
It should be noted that the status of referenced applications is typically amended during prosecution, as necessary.
The application should contain a statement as to rights to inventions made under federally sponsored research and development (if any). This section is not required in most patent applications.
Any material submitted separately on a compact disc must be referenced in the specification. The only disclosure material accepted on compact disc are computer program listings, gene sequence listings and tables of information. All such information submitted on compact disc must be in compliance with 37 CFR § 1.52(e), and the specification must contain a reference to the compact disc and its contents. The contents of compact disc files must be in standard ASCII character and file formats. The total number of compact discs including duplicates and the files on each compact disc must be specified.
If a computer program listing is to be submitted and is over 300 lines long (each line of up to 72 characters), the computer program listing must be submitted on a compact disc in compliance with 37 CFR § 1.96, and the specification must contain a reference to the computer program listing appendix. A computer program listing of 300 or less lines may similarly be submitted on compact disc. The computer program listing on compact disc will not be printed with any patent or patent application publication.
If a gene sequence listing is to be submitted, the sequence may be submitted on a compact disc in compliance with 37 CFR § 1.821, § 1.822, § 1.823, § 1.824, and § 1.825, in lieu of submission on paper, and the specification must contain a reference to the gene sequence listing on compact disc.
This section is not required in most patent applications.
See MPEP § 608.01(c). The specification should set forth the Background of the Invention in two parts. While the USPTO considers both of these as subsections to the Background Section, they are treated as separate sections in many patents.
A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions of the subject matter of the claimed invention. This item may also be titled "Technical Field." This section is utilized by the USPTO to determine to which art group to assign the application.
A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant's invention. This item may also be titled "Background Art."
Many patent practitioners utilize this section to describe the prior art and to distinguish the current invention from that prior art. I prefer leaving the distinguishing to the examiner. In any case, this section is best utilized to describe the problem being solved by the invention.
See MPEP § 608.01(d). A brief summary or general statement of the invention as set forth in 37 CFR § 1.73. The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). In chemical cases it should point out in general terms the utility of the invention. If possible, the nature and gist of the invention or the inventive concept should be set forth. Objects of the invention should be treated briefly and only to the extent that they contribute to an understanding of the invention.
In the past, many patent practitioners included Objects of the Invention in this section. They often paralleled the claims. However, more recently, many large companies have forbidden Objects in their patent applications on the grounds that they are an admission of limitations to the breadth of claims. I prefer going one step further, and moving what would typically be the summary to the first couple of paragraphs of the Detailed Description on similar grounds.
Where there are drawings, you must include a listing of all figures by number (e.g., Figure 1A) and with corresponding statements explaining what each figure depicts. See MPEP § 608.01(f). A reference to and brief description of the drawing(s) as set forth in 37 CFR § 1.74. In this section, each figure in the drawings is identified. Typically, a single sentence in a single paragraph is utilized to identify each figure. However, closely related figures are sometimes combined. The identification of each figure will typically describe what that figure describes, including, what type of figure it is.
The detailed description is the meat of a patent application. It lays out in detail the specifics of the invention being patented. It defines terms, and provides support for the claims. See 35 U.S.C. § 112(1).
A detailed description of the invention and drawings follows the general statement of invention and brief description of the drawings. This detailed description, required by 37 CFR § 1.71, MPEP § 608.01, must be in such particularity as to enable any person skilled in the pertinent art or science to make and use the invention without involving extensive experimentation. An applicant is ordinarily permitted to use his or her own terminology, as long as it can be understood. Necessary grammatical corrections, however, should be required by the examiner, but it must be remembered that an examination is not made for the purpose of securing grammatical perfection.
An invention is typically described in the detailed description in relation to figures and the reference numbers therein. By convention, the figure to which a reference number applies is typically specified. Also, by convention, the figures are most often described in the order that they are numbered.
Each reference number in the drawings must be associated with one, and only one, element or part in the detailed description. Reference numbers (from the drawings) must be properly applied, no single reference number being used for two different parts or for a given part and a modification of such part. In the latter case, the reference number, applied to the given part, with a prime affixed may advantageously be applied to the modification. Every feature specified in the claims must be illustrated, but there should be no superfluous illustrations.
The description is a dictionary for the claims and should provide clear support or antecedent basis for all terms used in the claims. See 37 CFR § 1.75, MPEP § 608.01(i), § 608.01(o), and § 1302.01. Typically, each claim element of the major claims will correspond to at least one reference number in at least one figure.
The claim or claims must particularly point out and distinctly claim the subject matter which you regard as the invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is determined, in large measure, by the choice of wording of the claims.
A nonprovisional application for a utility patent must contain at least one claim. The claim or claims section must begin on a separate sheet. If there are several claims, they shall be numbered consecutively in Arabic numerals, with the least restrictive claim presented as claim number 1.
The claims section must begin with a statement such as "What I claim as my invention is: . . ." or "I (We) claim: . . ." followed by the recitation of the particular matter which you regard as your invention.
One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Any dependent claim that refers to more than one other claim ("a multiple dependent claim") shall refer to such other claims in the alternative only. Each claim should be a single sentence, and where a claim sets forth a number of elements or steps, each element or step of the claim should be separated by a line indentation.
The fee required to be submitted with a nonprovisional utility patent application is, in part, determined by the number of claims, independent claims, and dependent claims. The fee structure currently provides that the first 3 independent claims and 20 total claims are included in the base filing fee. Thus, the majority of patent applications filed have approximately this number of claims - 3 independent claims and 17 dependent claims.
Claims typically have three parts, and are always terminated by a period. The parts are the preamble, the transition, and the body, consisting of the elements of the claim. The major element in the preamble is the subject. In the examples given below, the subject is a "widget". The transition is typically either a form of the verb "comprising", which is open-ended, or of the verb "consisting", which is closed-ended. An open-ended claim requires at least the elements in the body, whereas a close-ended claim requires just those elements. Needless to say, most claims today are open-ended.
One other requrement in claims is that of antecedent basis. Each element in a claim is introduced with an "a" or "an". Every subsequent reference to that element, in either that claim, or in a claim dependent upon it, references that element with "the" or "said". The two are essentially equivalent, and the later, "said" is seen less and less frequently. When a claim references an element with "the" or "said" before it has been introduced, it is said to lack proper antecedent basis, and will, typically, be rejected by the examiner under 35 U.S.C. § 112(2).
An independent claim is one that is not dependent upon another claim . (see 35 U.S.C. § 112(3)). An example may be:
In order to infringe this claim, the widget would have to contain at least one X, one Y, and one Z.
A dependent claim is one that depends upon another claim (see 35 U.S.C. § 112(4)). They include all the restrictions and limitations of the underlying claim, and then add one or more further restrictions or limitations. An example may be:
In order to infringe this claim, the widget would have to contain the X, Y, and Z of claim 1, plus at least one W. By convention and USPTO rule, dependent claims are grouped after the claims they depend upon, with all of the dependent claims dependent upon a given independent claim being grouped after that independent claim and before the next one.
A multiple dependent claim is a claim that depends on two or more claims (see 35 U.S.C. § 112(5)). Thus, building on the two previous examples:
In order to infringe this claim, the widget would have to either infringe X, Y, Z, and U, or X, Y, Z, W, and U. The fee structure for claims severely disfavors this sort of claim, and thus, in U.S. patent practice, they are very, very, rare. However, other patent offices favor this form, and thus, most of the time when you see this sort of claim, it is in a patent that was originally filed internationally or in another country.
A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading "Abstract" or "Abstract of the Disclosure." The abstract in an application filed under 35 U.S.C. § 111 may not exceed 150 words in length. The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
A patent application is required to contain drawings if drawings are necessary for the understanding of the subject matter sought to be patented. The drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete. Please see the detailed discussion below of drawing requirements.
Drawing Requirements
Information on drawing requirements is based substantially on 37 CFR § 1.84. There are two acceptable categories for presenting drawings in utility patent applications: black ink (black and white) and color.
Black and white drawings are normally required. India ink, or its equivalent that secures black solid lines, must be used for drawings. Drawings made by computer printer should be originals, not photocopies.
On rare occasions, color drawings may be necessary as the only practical medium by which the subject matter sought to be patented in a utility patent application is disclosed. The USPTO will accept color drawings in utility patent applications and statutory invention registrations only after granting a petition explaining why the color drawings are necessary. Any such petition must include the following:
"The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee."
Photographs are not ordinarily permitted in utility patent applications. The USPTO will accept black and white photographs in utility patent applications only in applications in which the invention is not capable of being illustrated in an ink drawing or where the invention is shown more clearly in a photograph. For example, photographs or photomicrographs of electrophoresis gels, blots (e.g., immunological, western, southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and ornamental effects continue to be acceptable. Only one set of black and white photographs is required. Furthermore, no additional processing fee is required.
Photographs have the same sheet size requirements as other drawings. The photographs must be of sufficient quality so that all details in the drawing are reproducible in the printed patent or any patent application publication.
Color photographs will be accepted in utility patent applications if the conditions for accepting color drawings have been satisfied.
Identification of Drawings
Identifying indicia, if provided, should include the title of the invention, the inventor's name, the application number (if known), the confirmation number (if known), and docket number (if any). This information should be placed on the top margin of each sheet of drawings, centered on the page. The name and telephone number of a person to call if the USPTO is unable to match the drawings to the proper application may also be provided.
Graphic Forms in Drawings
Chemical or mathematical formulas, tables, computer program listings, and waveforms may be submitted as drawings and are subject to the same requirements as drawings. Each chemical or mathematical formula must be labeled as a separate figure, using brackets when necessary, to show that information is properly integrated. Each group of waveforms must be presented as a single figure, using a common vertical axis with time extending along the horizontal axis. Each individual waveform discussed in the specification must be identified with a separate letter designation adjacent to the vertical axis. These may be placed in a landscape orientation if they cannot be presented satisfactorily in a portrait orientation. Typewritten characters used in such formulas and tables must be chosen from a block (nonscript) type font or lettering style having capital letters which are at least 0.21 cm. (0.08 inch) high (elite type). A space at least 0.64 cm. (1/4 inch) high should be provided between complex formulas or tables and the text.
Paper
Drawings submitted to the USPTO must be made on paper which is flexible, strong, white, smooth, nonshiny, and durable. All sheets must be free from cracks, creases, and folds. Only one side of the sheet shall be used for the drawing. Each sheet must be reasonably free from erasures and must be free from alterations, overwritings, and interlineations.
All drawings sheets, including sheets containing photographs, in an application must be the same size. One of the shorter sides of the sheet is regarded as its top. The size of the sheets on which drawings are made must be:
The sheets must not contain frames around the sight (the usable surface), but should have scan target points (cross hairs) printed on two catercorner margin corners. The following margins are required:
Views
The drawing must contain as many views as necessary to show the invention. The views may be plan, elevation, section, or perspective views. Detailed views of portions of elements, on a larger scale if necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract. Views must not be connected by projection lines and must not contain center lines. Waveforms of electrical signals may be connected by dashed lines to show the relative timing of the waveforms.
Exploded Views
Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.
Partial Views
When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains parts of another partial view. A smaller scale view should be included showing the whole formed by the partial views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.
Where views on two or more sheets form, in effect, a single complete view, the views on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the views appearing on the various sheets.
A very long view may be divided into several parts placed one above the other on a single sheet. However, the relationship between the different parts must be clear and unambiguous.
Sectional Views
The plane upon which a sectional view is taken should be indicated on the view from which the section is cut by a broken line. The ends of the broken line should be designated by Arabic or Roman numerals corresponding to the view number of the sectional view, and should have arrows to indicate the direction of sight. Hatching must be used to indicate section portions of an object, and must be made by regularly spaced oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. Hatching should not impede the clear reading of the reference characters and lead lines. If it is not possible to place reference characters outside the hatched area, the hatching may be broken off wherever reference characters are inserted. Hatching must be at a substantial angle to the surrounding axes or principal lines, preferably 45°.
A cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross section must show proper material(s) by hatching with regularly spaced parallel oblique strokes; the space between strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) illustrated in cross section.
The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched. Different types of hatching should have different conventional meanings as regards the nature of a material seen in cross section.
Alternate Position
A moved position may be shown by a broken line superimposed upon a suitable view if this can be done without crowding; otherwise, a separate view must be used for this purpose.
Modified Forms
Modified forms of construction must be shown in separate views.
Arrangement of Views
One view must not be placed upon another or within the outline of another. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views wider than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet is on the right-hand side, with the appropriate top margin used as the heading space. Words must appear in a horizontal, left-to-right fashion when the page is either upright or turned so that the top becomes the right side, except for graphs utilizing standard scientific convention to denote the axis of abscissas (of X) and the axis of ordinates (of Y).
Front Page View
One of the views should be suitable for inclusion on the front page of the patent application publication and patent as the illustration of the invention.
Scale
The scale to which a drawing is made must be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction. Indications such as "actual size" or "scale 1/2" are not permitted on the drawings since these lose their meaning with reproduction in a different format.
Character of Lines, Numbers, and Letters
All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
Shading
The use of shading in views is encouraged if it aids in understanding the invention and if it does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in perspective, but not for cross sections. See discussion of sectional views above. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
Symbols
Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. Known devices should be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art. Other symbols which are not universally recognized may be used, subject to approval by the USPTO, if they are not likely to be confused with existing conventional symbols, and if they are readily identifiable.
Legends
Suitable descriptive legends may be used, or may be required by the examiner, where necessary for understanding of the drawing, subject to approval by the USPTO. They should contain as few words as possible.
Numbers, Letters, and Reference Characters
The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.
Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines (encircled). They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.
Numbers, letters, and reference characters must measure at least 0.32 cm. (1/8 inch) in height. They should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.
The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.
Reference characters not mentioned in the description shall not
appear in the drawings. Reference characters mentioned in the
description must appear in the drawings. In other words, every
reference found in one of the figures must be mentioned in the
specification, and every reference mentioned in the specification must
be found in at least one of the figures.
Lead Lines and Arrows
Lead lines are those lines between the reference characters and the details to which they refer. Such lines may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing.
Arrows may be used at the ends of lines, provided that their meaning is clear, as follows:
The United States Patent and Trademark Office (USPTO) provides a method of recording an invention with the office. A document disclosing an invention is filed with the USPTO and is kept by the office for two years as evidence of the date of conception of the invention. See Disclosure Document Program.
As is noted in the above cited USPTO web page on the Disclosure Document Program, a disclosure document is not a patent application. It merely provides some proof of the date of conception. This may be of use in interferences during patent prosecution. Most patent practioners consider Disclosure Documents of minimal benefit.
Several years ago, the patent laws were amended to provide for a provisional patent applications, in an attempt to harmonize U.S. patent laws with those of other countries. A provisional patent application provides application priority equivalent to that of other patent applications. Thus, for most applications, it is preferable to a Disclosure Document, which does not provide application priority.
A provisional patent application can be used for one year for priority. During that time, in order to be used, it must be the basis for a nonprovisional patent application, typically in the form of a continuation or a continuation-in-part.
A provisional patent application may be more informal than a nonprovisional patent application. In particular, neither claims nor a declaration are required. Some applicants include substantial raw information in their provisional patent applications, not knowing at that time exactly what they will want to claim.
A patent application for a utility patent that is not a provisional patent application is a nonprovisional patent application. They can be divided into Regular, Divisional, Continuation, and Continuation-In-Part.
A regular patent application is a nonprovisional patent application that does not claim priority from any other patent application.
A divisional patent application is a nonprovisional patent application filed in order to prosecute a second or subsequent invention in cases where a restriction requirement was imposed during examination of the parent application. See 35 U.S.C. § 121.
A continuation patent application is a nonprovisional patent application that claims priority from a parent application, but adds no new matter. The Priority Date for the continuation patent application is that of its parent applications. See 35 U.S.C. § 120.
At one time, a special form of Continuations, termed a "File Wrapper" Continuation was utilized for continuing prosecution of a patent application. This has been replaced by Continuing Prosecution practice. Today, probably a majority of Continuations claim their priority from provisional patent applications – in other words, this is the way that a Provisional patent application is turned into a nonprovisional application for examination.
A Continuation-In-Part (CIP) patent application is a nonprovisional patent application that claims priority from a parent application for old matter, but adds new matter. The Priority Date for the old matter is that of its parent application, and the priority date for the new matter added in the CIP is the filing date of the CIP.
A CIP may claim priority from any other type of patent application, including provisional, regular, continuation, divisional, other CIP, and foreign patent applications.
Preparing a patent application typically begins with the inventor disclosing his invention to a patent practitioner, a patent attorney or patent agent. This can be in a face to face meeting, or, remotely, via, for example, the Internet and by telephone. Typically, the inventor will have some documentation, including, drawings or a model. The patent practitioner should come away from this a good idea of what the inventor thinks is his invention, and, in particular, what he thinks is novel and nonobvious about it.
At this point, a prior art search is often undertaken. The inventor can often help here. Many practitioners hire out this task to people who become expert in searching. Often, the practitioner will then provide the inventor with a patentability study or opinion, based on the prior art search, indicating what, under ideal circumstances, he believes could be obtained in patent protection.
Assuming that the inventor wishes to proceed, the practitioner then drafts an initial patent specification, and, in most cases, either prepares, or has prepared, initial drawings. This later task is often given to patent draftsmen, who specialize in drafting patent drawings. Sometimes the patent draftsman will work directly with the inventor, and sometimes just with the patent practitioner. In any case, the preliminary drawings are integral to drafting the initial draft of the patent specification, as much of the detailed description in the application is typically spent describing the drawings. Additionally, the major elements in the claims should be disclosed in the drawings, preferably as separate references with unique reference characters/numbers.
The practitioner will then convey the initial drafts of the specification and drawings to the inventor for his review. The inventor will then make suggestions and corrections. Upon incorporation of these changes, the specification and drawings are then relayed back to the inventor for further review. They may go back and forth a couple of times before all are satisfied. At that point, the patent practitioner will draw up the requisite paperwork. The inventor will sign, and the patent application, complete with specification, drawings, formal papers, and fees, will be filed with the USPTO.
The Filing Date for a patent application is the date that the application is constructively received by the USPTO. It may be the date that it is actually received, or, in the case of Express Mail, the date sent. The Filing Date is the Priority Date for the application, unless the application claims an earlier Filing Date by claiming priority from another pending application. See also: 35 U.S.C. § 21.
The simplest way to file a patent application is through regular United States Postal Service mail. The filing date of the application is the day when the application is received in the mail room at the USPTO. An application may also be filed through a private delivery service, such as FEDEX or UPS, or may be hand delivered. In all such cases, the filing date is that received in the mail room at the USPTO. While the USPTO mail room is somehat prompt, I had one instance where I filed ten applications in one box and received six different filing dates. In retrospect, I should have filed by Express Mail (see below).
A patent application may also be filed utilizing the United States Postal Service Express Mail service. This has the advantage that the filing date of the application is the date accepted by the USPS. Thus, you get an earlier filing date, and it is a date certain. See: 37 CFR § 1.10 (Filing of correspondence by "Express Mail)". This is especially useful if you are filing multiple interrelated applications at the same time. Until very recently, with the implementation of the new Electronic Filing System (see below), Express Mail was the preferred way for most patent practioners to file patent applications.
Recently, the USPTO started implementation of an Electronic Filing System (EFS). Utilizing this sytem, patent applications are filed over the Internet electronically. The USPTO is moving to a paperless system, and this fits in well - in most cases in the future when EFS is used to file an application, there will never be a paper copy of the application. Rather, it moves through the USPTO examination process totally electronically.
In a previous edition of this Outline, I suggested that the EFS system was fairly cumbersome. That has been fixed, to a great extent. Currently, you submit a patent application via EFS by first providing biographical information about the patent application and its inventors. Then, you upload one or more Acrobat (.pdf) files containing the specification, drawings, etc., designating what is what. You can, and are supposed to, distinguish between the specification, the claims, the abstract, and the drawings. They can be in the same Acrobat file, or in different files. You can also submit multiple files of the same type, such as specification or drawings. This later is useful for submitting provisional applications. When all the files have been uploaded, you then submit the application, compute fees, pay the fees, and get a filing receipt (containing the newly assigned serial number). Shortly thereafter, patent attorneys can download what has just been submitted via the Private PAIR system. Many of us use this feature now to acquire our formal copy of our patent application and prosecution submissions - since what is downloaded is what the U.S.P.T.O. officially has.
The U.S.P.T.O. Patent Electronic Business Center (EBC) provides two different systems, the Electronic Filing System (EFS) and the Patent Application Information Retrieval (PAIR) system, with both a public and a private access portal for both. Thus, the U.S.P.T.O. Patent Electronic Business Center (EBC) currently provides: Public EFS; Private EFS; Public PAIR; Private PAIR; plus a portal for paying patent maintainence fees. The private EFS and PAIR systems require user authentication, in the form of a signed digital certificate, issued by the U.S.P.T.O. EBC, for access, and are both primarily utilized by patent attorneys and agents. The signed digital certificat operates just like our signatures on documents filed with the U.S.P.T.O. The EFS system can also be utilized to submit other documents and forms to the U.S.P.T.O. during prosecution of a patent application, such as Amendments and Appeal Briefs. The PAIR system is utilized to retrieve patent prosecution information for pending patent applications and the most recently issued patents. Note that patent applications are not available via Public PAIR until publication, but are available in many cases via Private PAIR.
Most patent practioners include a stamped self-addressed postcard with the applications that they file through the mail or utilizing Express Mail in order to get confirmation of exactly what was received by the USPTO.
A receipt for documents mailed to the USPTO can be obtained by attaching a stamped, self-addressed postcard to the first page of the documents. The postcard should contain a detailed list that identifies each type of document and the number of pages of each document. Upon receipt at the USPTO, the detailed list on the postcard will be compared to the actual contents of the delivery. Any discrepancies between the detailed list and the actual contents will be noted on the postcard. The postcard will be initialed and date stamped by the person at the USPTO who received the delivery. The postcard will be returned by mail to the addressee whose name appears on the postcard.
The returned postcard serves as evidence of receipt in the USPTO of all items listed on the postcard, unless otherwise noted by the USPTO on the postcard. That is, if the postcard receipt has been annotated to indicate that a particular paper was not received, the postcard receipt will not serve as evidence of receipt of that paper in the USPTO. Likewise, the postcard receipt will not serve as evidence of receipt of papers which are not adequately itemized.
When preparing the detailed list of documents identified on the postcard, it is important to include the following identifying information:
The postcard should also include a detailed list of every document type and the number of pages of each document that are included in the delivery. If the postcard is submitted with a patent application, the detailed listing should include the following items:
It is important that the postcard itemizes each component of the application. For example, a general statement such as "complete application" or "patent application" or "drawings" will not show that each of the required components of an application was included if one of the items is later found to be missing by the USPTO.
When the self-addressed postcard is submitted with a utility patent application, the USPTO will stamp the postcard being returned to the addressee with both the receipt date and the application number before placing it in the outgoing mail.
Upon receipt of the returned postcard, the addressee should promptly review the postcard to ensure that all documents and all pages were received by the USPTO.
Pursuant to 35 U.S.C. § 21 and 37 CFR § 1.10, any correspondence received by the USPTO (including an application filing) that was delivered by the "Express Mail Post Office to Addressee" service of the United States Postal Service (USPS) will be considered filed in the Office on the date of deposit with the USPS. The date of deposit with the USPS is shown by the "date-in" on the "Express Mail" mailing label or other official USPS notation. If the USPS deposit date cannot be determined, however, the correspondence will be accorded the Office receipt date as the filing date. Before depositing an application with the USPS in accordance with the Express Mail procedure set forth at 37 CFR § 1.10, it is important to place the number of the "Express Mail" mailing label on the application papers. Further, only one application should be mailed in a single "Express Mail" package.
Note that a post card is typically not submitted when an application is filed via the Electronic Filing System (EFS) since the EFS system provides its own proof of filing.
A Utility Patent Application Transmittal Form (Form PTO/SB/05) or a transmittal letter should be filed with every patent application to instruct the USPTO as to what actual types of papers are being filed (e.g., specification, claims, drawings, declaration, information disclosure statement). It identifies the name of the applicant, the type of application, the title of the invention, the contents of the application, and any accompanying enclosures. (Form PTO/SB/21 is to be used for all correspondence after initial filing.)
Note that a Transmittal Form is typically not submitted when an application is filed via the Electronic Filing System (EFS).
The Fee Transmittal Form (Form PTO/SB/17) may be used to calculate the prescribed filing fees and indicate the method of payment, by check or by credit card. The amount and type of filing fees are dependent upon the number and type of claims presented.
The filing fee(s) for a patent application should be submitted with the application and must be made payable to the "Commissioner of Patents and Trademarks" if paid by check. If an application is filed without the basic filing fee, the applicant will be notified and will be required to submit the filing fee along with a surcharge within the time period set in the notice. Fees are subject to change and the applicant should consult the current Fee Schedule before filing.
Note that two sets of fees exist, one for "small" entities and one for other than small (i.e. "large") entities. If you qualify as a small entity for patent fee purposes, no special form is required to claim your entitlement to reduced fees (you may check a special box on the transmittal form), but you should only pay small entity rates after ensuring that you qualify for the small entity discount. For example, if the inventors have not assigned any rights in the invention set forth in the application and are not under any obligation to do so (as may be required in an employment contract), small entity status is appropriate.
Note also that a Fee Transmittal is typically not submitted when an application is filed via the Electronic Filing System (EFS). Rather, the EFS system computes fees and includes the Fee Transmittal form it generates with any EFS filings that require fees.
The application data sheet is a sheet or sheets, that may be voluntarily submitted in either provisional or nonprovisional patent applications, which contains bibliographic data, arranged in a format specified by the USPTO. Specific bibliographic data includes applicant information, correspondence information, application information, representative information, domestic priority information, foreign priority information and assignment information. (See 37 CFR § 1.76.) The sheets must be produced according to a format provided by the USPTO and which is downloadable to applicant’s computer.
Supplemental application data sheets may be subsequently supplied prior to payment of issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under title 37 CFR § 1.63 or § 1.67. However, inventorship changes are governed by 37 CFR § 1.48, correspondence changes are governed by 37 CFR § 1.33(a), and citizenship changes are governed by 37 CFR § 1.63 or § 1.67. Supplemental application data sheets should indicate the information that is being supplemented, and therefore need not and should not contain information previously supplied that has not changed.
See Specification Above.
The oath or declaration (Forms PTO/SB/01 and PTO/SB/02 may be used) must identify the application with which it is associated, and must give the name, city, and either state or country of residence, country of citizenship, and mailing address of each inventor. It must state whether the inventor is a sole or joint inventor of the invention claimed. Additionally, designation of a correspondence address is needed on the oath or declaration. Providing a correspondence address will help to ensure prompt delivery of all notices, official letters, and other communications. In addition, a shortened declaration may be used in conjuction with an Application Data Sheet (see Form PTO/SB/01A).
The oath or declaration must be signed by all of the actual inventors. An oath may be administered by any person within the United States, or by a diplomatic or consular officer of a foreign country, who is authorized by the United States to administer oaths. A declaration does not require any witness or person to administer or verify its signing. Thus, use of a declaration is preferable.
The oath or declaration must be in a language which you understand. If you comprehend the English language, you should preferably use an English language oath or declaration. If you cannot comprehend English, any oath or declaration must be in a language which you can comprehend and shall state that you understand the content of any documents to which the oath or declaration relates. If the oath or declaration used is in a language other than English, the oath or declaration must either be (1) accompanied by a verified English translation, or (2) in a form provided or approved by the United States Patent and Trademark Office.
If the person making the oath or declaration is not the inventor, the oath or declaration shall state the relationship of that person to the inventor, upon information and belief, the facts which the inventor would have been required to state, and the circumstances which render the inventor unable to sign, namely death, insanity or legal incapacity or unavailability/refusal to sign. (See 37 CFR § 1.42, § 1.43, and § 1.47.) If the inventor has refused or cannot be reached to sign the declaration, then a petition under 37 CFR § 1.47 is required, and if there are inventors who have signed the oath or declaration, then the remaining inventors must sign the oath or declaration on behalf of the non-signing inventor. If the sole or all of the inventors has not signed the oath or declaration, then the oath or declaration must be signed by the party showing proprietary interest in the application, as shown in the petition under 37 CFR § 1.47(b). If the inventor has died or is legally incapacitated, then the legal representative of the deceased or incapacitated inventor must sign the oath or declaration on behalf of the inventor.
An Information Data Sheet (IDS) (USPTO forms SB08A and SB08B for continuations) is utilized to submit prior art references to the USPTO. This can be done at any time starting at the time of initial application. Primarily this is to provide the examiner with all relevant prior art that is known to the applicant (or his patent attorney or agent). However, it can also be utilized to force an examiner to consider prior art. Often, an IDS filed with an application will contain results from a patent search undertaken in preparation for filing. Many practioners also file subsequent IDSes when they become aware of prior art during prosecution, such as the results of a search by another patent office.
Each assignment or any other document officially recorded in the USPTO must be accompanied by an Recordation Form Cover Sheet (Form PTO1595). Recording documents with the USPTO provides legal notice to the rest of the world about the document so recorded in a similar manner as does the recordation of transfers of real property. Recordation of each document requires a separate fee.
The default owner or owners of a patent are the inventor(s)
thereof. Typically however, inventorship is done as a function of
employment or under contract. In order to transfer ownership to,
for example, the employer of an inventor, the inventor will typically
execute an assignment document assigning his interest to his
employer. A sample assignment is Former
PTO/SB/41.
Assignments of patents are recorded in the USPTO in a similar manner as transfers of real property are recorded. Recording such provides legal notice to the rest of the world of the existance of the assignment.
Typically, several months after filing a patent application, applicant, or his attorney, will receive a filing receipt. The filing receipt will show a Serial Number and Filing Date for the application. Most of the time, it will also include a foreign filing license that allows an American citizen to file his application in other countries.
Note that a filing receipt is typically not necessary to prove patent application submissions or to determine an application's serial number when the application has been filed via the Electronic Filing System (EFS). However, the Filing Receipt does still provide the foreign filing license.
After an application is received, it is classified by art area and sent to an art group for examination. One of the examiners in that art group will be assigned the application for examination. He will review the application for formality problems. He will also conduct a search, looking for prior art that either anticipates or makes obvious the various claims. The prior art search will at a minimum include the patents issued by the USPTO. In many cases, foreign patents are searched, and, depending on art area, public data bases are searched. The result is typically a list of prior art referencs that the examiner believes to be relevant to the claimed invention. Note that he is often an expert in his narrow field, spending years examining the same types of inventions. Also, he has available the patents that issued between the time the application was filed and he did his search. The result is that examiners often find prior art that was not found by the best pre-filing searches by applicants.
After reviewing an application for formality problems and after having conducted a prior art search, an examiner then drafts a First Office Action to send to the applicant. He may Object to one or more of the drawings or part of the specification. These are typically formality issues that can be easily addressed, and usually fixed.
More importantly however, he applies the prior art references he found in his search to the claims in the application. Some, if not all, of the claims are typically Rejected under 35 U.S.C. § 112 for formality problems, 35 U.S.C. § 102 for being anticipated, or 35 U.S.C. § 103 as being obvious. He may also Object to some dependant claims that are dependant upon Rejected claims, stating that these claims would be allowable if rewritten in independant form (i.e. as independant claims). An anticipation rejection typically involves the examiner finding a single prior art reference that contains all of the elements in the rejected claim. An obviousness rejection typically involves the examiner finding multiple references, which, when combined, contain all of the elements in the Rejected claim.
An applicant then typically files an Amendment in response to receipt of an Office Action. Amendments typically are a mixture of changes to the specification, most notably the claims, and legal and technical arguments against the actions of the examiner, most notably his Rejection of claims. He may amend claims in order to overcome prior art cited by the examiner, adding, for example, additional limitations that were not in the original claims. Often an examiner gives the applicant a good idea of what might be allowable either explicitly or through his Objection (versus Rejection) of some dependant claims.
An examiner may respond to an Amendment with another Office Action. And if not designated as "Final", the applicant can amend as above. However, ultimately he will respond with an Office Action marked as "Final" (see 37 CFR 1.113) when he no longer believes that further examination is fruitful. This is most typically on his second Office Action, but may be later. See MPEP 706.07. At this point, examination is essentially closed. The applicant has a number of (not mutually exclusive) actions that he can take in response to an Office Action marked as Final. He may:
At some point in most prosecution, there comes a point when all remaining claims are allowable. This often is the case after an applicant amends after Final Rejection to cancel remaining rejected claims and rewrite objected to claims in independent form. When all remaining claims are allowable and all formality issues have been overcome, a Notice of Allowance for the allowable claims is issued.
After receipt of a Notice of Allowance and Issue Fee Due, the required issue fee is paid in order to allow issuance of a patent from the application under examination.
Upon receipt of payment of the issue fee for a patent application, the USPTO will prepare the patent for issue and publication. A patent number is assigned and it is published in the Official Gazette (OG) of the USPTO. See 35 U.S.C. §§ 151, 152, and 153.
The patent term of a new utility patent in the United States today is potentially twenty years from its Priority Date. However, in order to receive this term, periodic maintentance fees must be paid. If they are not paid, the patent will expire. Currently, $450 is required 3 1/2 years after issue, $1,150 is required 7 1/2 years after issue, and $1,900 is required 11 1/2 years after issue for small entities. These amounts are doubled for large entities. Also note that these fees are changed almost yearly, typically by being increased. Thus, the maintenance fees for any patent application filed today are liable to be significantly higher by the time they are due. It is always advisable to check the U.S.P.T.O. web site for the latest fees.
A patent is limited by law to a single invention. Occasionally, an examiner may determine that more than one invention is claimed in a patent application and impose a restriction requirement. In doing so, he will typically specify two or more inventions, each invention typically comprising one or more claims.
Typically, in response to a restriction requirement, an applicant will elect one of the inventions for further prosecution, and cancel the claims for the remainder of the inventions specified in the restriction. The applicant may then file divisional patent applications in order to prosecute any or all of the non-elected inventions. Thus, in the case of a five way restriction, the applicant may continue prosecution of one specified invention in the pending application and four other applications as divisional patent applications. See 35 U.S.C. § 121 and 37 CFR § 1.141, § 1.142, § 1.143, and § 1.144.
After a final rejection, if an applicant desires that the examiner reopen examination, he can file a Request for Continuing Examination (RCE) utilizing USPTO form SB30 and paying the requisite fee. Prior to the institution of RCE practice, this was done by filing a special form of Continuation, known as a "File Wrapper" Continuation. This is no longer required. See 37 CFR § 1.114.
Petition may be taken to the Director [of Patents, see 37 CFR § 1.181]:
Petitions may be filed for any number of reasons to the Director of Patents upon paying the required petition fee (see 37 CFR § 1.17, § 1.18, and § 1.20). Some of the more common petitions filed are:
After a final rejection, if an applicant is dissatisfied with the outcome of an examination, he may appeal (37 CFR § 1.191 et seq.) to the Board of Patent Appeals and Interferences. This is a somewhat lengthy process that starts with him filing a Notice of Appeal (with fee, currently $250 for small entity), followed by an Appeal Brief (with another fee, currently $250 for small entity). A panel of Superivsory Examiners does an initial review and may order examination reopened. However, if not, the appeal is ultimately heard and a decision is reached. The applicant has the option of either appealing based on his appeal brief and that of the examiner, or may request oral argument (with fee, currently $500 for small entity). If the applicant wins at this level, examination is reopened, pursuant to the decision of the board. However, if the applicant loses at this level, he may appeal to the U.S. District Court for the District of Columbia (35 U.S.C. § 145) or directly to the Court of Appeals for the Federal Circuit (35 U.S.C. § 141). If he loses at the District Court level, he may appeal to the Federal Circuit. If he loses there, he may attempt to appeal to the U.S. Supreme Court through a Petition for Writ of Certiorari. This all is an extremely lengthy process that often takes years to complete.
The United States has a First to Invent patent system. The invention date for an application is presumed to be the priority filing date for the application. In a situation where two (or more) applicants are claiming the same invention, the resulting patent goes to the one who can prove he invented first and was thereafter diligent. In order to resolve this issue, an examiner may call an Interference. The first inventor to file is initially the Senior party, and the second inventor is the Junior party. The Junior party must then prove that he invented before the Priority Date of the Senior party, who then gets a chance to prove a still earlier invention date. This is a cumbersome process that is very specialized. Most patent practioners only get involved in one or two Interferences in their entire career, and when they do, they get help from experts in this area. See also 35 U.S.C. § 135.
At any time during the enforceability of the patent, any person may request reexamination by the Office of any claim of a patent on the basis of prior patents or printed publications cited under 37 CFR 1.501. In order for the request for reexamination to be granted, a substantial new question of patentability must be present with regard to at least one patent claim. The request must be in writing and must be accompanied by payment of a reexamination request filing fee as set forth in 37 CFR 1.20(c). -- see 37 U.S.C. § 302, et seq. and MPEP 2209, et seq., for more.
Prior to 1999, all patent reexaminations were Ex Parte - only the patent owner was involved. This meant that only he had a chance to respond to prior art references cited during the reexamination process. This provided a strategic problem to anyone else questioning the validiity of a patent, in particular, during litigation. The problem is that once prior art has been considered by the USPTO and overcome by the patent owner, it cannot be further contested in court. This proved to be a significant disadvantage to using ex parte reexamination.
In 1999, Congress passed Public Law 106-113, codified 35 U.S.C. Chapter 31, which provides for Inter Partes reexamination. The requester of such an Inter Partes reexamination gets some limited right to participate in the reexamination. Any document served by either the requester or the patent owner is served on the other, and the requester is allowed to comment upon any responses by the patent owner. It is too early to tell if this will make reexamination more popular.
35 U.S.C. § 251 states that:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.
No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.