Obtaining a patent generally includes two significant stages: (1) preparing a patent application and (2) prosecuting the patent application in the United States Patent and Trademark Office. A general overview of patent preparation and prosecution is provided below. Not provided below, however, are many details that can arise on a case-by-case basis.
A patent application includes certain important sections that include, for example, the abstract, the specification, the drawings, and the claims. Each of these sections can be important in understanding an invention, but it is the claims that describe the legal metes and bounds of a particular invention. Accordingly, it is important that each section is well-drafted to provide the best support for the claims; it will be the claims that will be most scrutinized by the USPTO during examination of the patent application.
A typical patent preparation process begins by providing a patent attorney with certain initial documentation. Such initial documentation typically includes an invention disclosure document that provides a summary of the invention, the problem to be solved, and previous ways others have addressed the problem. An invention disclosure may also include other information that can be critical to a patent preparation process, including dates of past disclosure of the inventive idea. An invention disclosure may also provide certain further supplemental information that can assist a patent attorney in understanding the invention.
After reviewing and analyzing the invention disclosure, a patent attorney may do some initial research to become further familiar with the subject matter of the invention. At this point, the patent attorney will seek to schedule a meeting with the inventor to better understand the invention and the prior art. As part of the meeting with the inventor, the patent attorney will seek to fully understand the problem to which the invention is directed, and the state of the art.
The patent attorney then turns to drafting the patent application that will include claims and a supporting description, usually including a description of the background art and a detailed description of example embodiments. The textual descriptions will typically refer to detailed patent drawings that also support the claims. Each of these sections will include significant information to meet certain legal requirements for a patent application, e.g., written description requirement, enablement requirement, etc. An experience patent attorney understands that leaving certain details out of a patent application can have significant and detrimental effects during prosecution in the USPTO.
The claims of a patent provide the legal metes and bounds of the invention. For this reason, a patent attorney will expend significant time an effort to draft the best claims to capture an invention. Claim drafting is usually commenced at the start of the patent drafting process, so that the scope of the supporting disclosure and figures can be tailored to fully support the draft claims, without extraneous information. When drafting the claims, a patent attorney will consider whether to draft claims as apparatus claims and/or method claims. In certain situations, it can be important to draft claims in a variety of ways so as to capture the most meaningful intellectual property possible. Here, it can also be important to consider a company’s goals in seeking patent protection.
With a complete draft of a patent application, a patent attorney will then ask the inventor to review the application to confirm that it is accurate and complete. After addressing any issues, a patent application is then ready to file with the USPTO.
The patent prosecution process is initiated with the USPTO by filing the various parts of an application including the above-described textual descriptions and drawings but also other significant paperwork such as an Application Data Sheet that includes information about the title of the invention, the inventors, any assignees, for example. Other information that is filed with the USPTO includes an oath from the inventors about being a true inventor. Where an invention is assigned to a company, assignment documents can also be filed with the USPTO.
A patent application is usually published and included in the USPTO’s application database after about 18 months from the earliest priority date of the application.
The substantive review of a patent application is usually conducted by a Patent Examiner where the Patent Examiner’s findings are communicated to an applicant through Office Actions. A Patent Examiner will review a patent application including the text and drawings to confirm that they meet certain legal requirements. The Patent Examiner will also closely scrutinize the claims by comparing them to the prior art. In many cases, the Patent Examiner will rely on older patents or patent applications as prior art. The Patent Examiner will compare the claims to the prior art and set out the findings in an Office Action. A first Office Action is typically a Non-final Office Action where the applicant will have an opportunity to respond. For example, a Patent Examiner may find certain prior art that, in the examiner’s opinion, discloses every aspect of a claimed invention. A Patent Examiner may also identify other legal deficiencies with the application and will set them out in the Office Action.
In response to a Non-final Office Action, for example, the patent attorney may argue that the Patent Examiner’s analysis is incorrect and explain why the claims are allowable. An applicant may also amend the claims so as to avoid or overcome the rejections brought by the Patent Examiner, and thereby obtain allowance. An applicant should also address all other issues raised by the Examiner.
It is often advantageous to interview the examiner, for example by telephone. An examiner interview is a meeting between the examiner and prosecuting attorney, where the patent application and prior art are discussed. The interview can be helpful to better understand an examiner’s position, and can also be helpful in persuading an examiner on particular points. Information gleaned from the interview can be used later when drafting a formal response to the Office Action.
The Patent Examiner will consider the applicants’ response. If it is persuasive, the examiner will allow the patent. If the response is not persuasive, then the examiner will provide reasons for not allowing the claims of the application in a next Office Action, which is typically a Final Office Action. At that point, an applicant will be faced with a decision of whether to keep moving forward at further cost or whether to abandon the application. Abandoning the application may be the best decision in situations where it is very unlikely to be able to obtain any worthwhile claims. Continuing to prosecute the application may be appropriate when the subject matter is important and there is a likelihood that meaningful claims can be obtained.
When faced with final claims rejection, the applicant can submit another response “after final,” but the examiner does not have to consider it because examination on the merits ends with the final office action. If no further amendments to the claims can help, then the applicant can choose to appeal or abandon. If further amendments would improve the likelihood of winning a later appeal, but the examiner will not enter them, then the applicant can file a Request for Continued Examiner (RCE), along with an appropriate fee, and amend the claims as a matter of right. The filing of an RCE provides further process opportunities to convince the examiner to allow the pending claims, but its primary purpose is to eliminate problems with the claims before appeal.
If and when the pending claims are ultimately allowed, the applicant must pay an issue fee to actually obtain the patent.