The Law Firm of
Louis Ventre, Jr.
Registered Patent Attorney
PATENT OFFICE REVIEW ACTIVITIES
PATENT PROSECUTIONProsecuting A Patent Application. When a patent application is filed, the United States Patent and Trademark Office begins a process of review against statutory standards to determine if the invention described in the application merits an award of a patent. Once the review is complete, the examiner typically sends the applicant an "office action." The exchange that occurs between an applicant and a patent examiner in response to the office action is commonly referred to as the “prosecution” of an application. This is the basically the same patent prosecution process practiced throughout the world.
Patent Examiner. A patent examiner in one of the technical centers of the Patent Office is assigned to review the application. This examiner is usually technically cognizant of the field of the invention.
Patent Application Components. The patent examiner will first determine if the application contains all of the formal matters required under the law, e.g., specification, drawing, oath and fee. These are requirements of section 111a, title 35 of the United States Code.
Full Disclosure in the Application. The examiner considers whether the submitted application fully discloses and distinctly claims the invention. This is a requirement of section 112, title 35 of the United States Code.
Best Mode Disclosed in the Application. The application must disclose the “best mode,” or preferred way, that the applicant knows to practice the invention. This is a requirement of section 112, title 35 of the United States Code.
Utility of the Invention. The examiner must decide whether or not the claimed invention is useful. The requirement of usefulness, or utility, is satisfied if the invention is operable and provides a tangible benefit. This is a requirement of section 101, title 35 of the United States Code.
Novel Invention. The examiner must evaluate whether or not the claimed invention is novel. To be judged novel, the invention must not be fully anticipated by a prior patent, publication or other knowledge within the public domain. This is a requirement of section 102, title 35 of the United States Code.
Nonobvious Invention. The examiner must evaluate whether or not the claimed invention is obvious considering the prior art. In order to make an informed judgment, the examiner searches existing patents and other published documents for disclosures of analogous art and art matching the claimed invention. A nonobvious invention must not have been within the ordinary skills of a competent artisan at the time the invention was made. For an invention to be obvious, a suggestion, teaching, or motivation to combine relevant prior art teachings may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself. There must also be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. This is a requirement of section 103, title 35 of the United States Code.
An Art Form. Patent application drafting and the method of claiming an invention is akin to an art form, which is informed by the legal standards set forth in the history of patent approval. Claiming an invention is not simply setting down the metes and bounds of an invention. Rather, it is ensuring that the statutory standards are met using the accepted terminology, which has specific and well accepted meanings in patent law. It is also providing meaningful protection to the invention against those who would design around the invention and bring competing products to the marketplace. Achieving the broadest protection to the invention often involves creating a set of claims with very broad to very narrow scope. This enables the broadest possible response to the examiner's office actions objecting to, or rejecting, an application.
Examiner Action. Within about 24 months of filing an application, the examiner will send out a first office action objecting or rejecting the application on various grounds using the above statutory standards. It happens, but not too often, that an application is accepted without any objection or rejection from the Examiner. A "rejection" is the refusal to grant claims because the subject matter as claimed is considered unpatentable. An "objection" is made when the form of a claim is improper, such as dependency on a rejected claim.
Applicant's Response. The applicant, usually through his representative, will then analyze the office action and determine the best approach to respond to the objection and eliminate it. The response must be within the confines of what is already disclosed within the application and may start with a meeting with the examiner. The written reply will usually be a clarification, an explanation, an affidavit, an amendment, a petition, a terminal disclaimer, a request for reconsideration based upon some missed point, or a suite of other potential replies conforming to the requirements of the regulations in title 37 of the Code of Federal Regulations. A second office action may result, which provides further objections or rejections, or the examiner may find the applicant's answer unresponsive and make his prior objection or rejection final. At some point an objection or rejection may be made final. Then, an appeal is possible or another application is filed with new matter, or the application is abandoned and the process stops.
If the applicant's answers are accepted and there are no further
objections, the patent will be accepted for issuance, pending payment of
issuance and publication fees by the applicant. The applicant's
responses become part of the history of patent application and are
available to all who may later need to understand exactly what was
patented and what was not patented.
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© 2005 Louis Ventre, Jr.
This file last modified 08/10/12.