Information Center Intellectual Property

Patents

A patent is a government grant to an inventor of a right to exclude others from making, using, selling, offering for sale or importing a specifically defined invention for a limited period of time, now typically 20 years as measured from the effective patent application filing date. In order to receive a patent, the invention must be considered novel, useful and non-obvious.

Requirements to Receive a Patent

In order for a discovery to be considered a patentable invention, the invention must meet several basic requirements. First, the invention must fall within one of the classes of statutory subject matter: it must be a composition, machine, article of manufacture or process. It cannot be just a disembodied idea or scientific concept. On the borders of this statutory subject matter are software-driven inventions, "business methods" and biological products. Second, the invention must be "novel" in view of the prior art, which encompasses all of the things of like kind which have been publicly practiced or described before the date of the invention. Third, the invention must be "useful" in that its use will yield at least some benefit to the user. Fourth, the subject matter of the invention must be "non-obvious" to a person of ordinary skill in the art to which the invention most closely pertains, and this is considered as of the date of invention. Most patentable inventions are improvements of existing compositions, methods or devices.

The United States Patent and Trademark Office

Established under the federal Patent Act and within the Department of Commerce, the United States Patent and Trademark Office (USPTO) is charged with issuing patents, registering trademarks and service marks, making all issued patents publicly available, providing public information and regulations on patents and trademarks, and carrying out prescribed functions according to certain international intellectual property protection treaties such as the Patent Cooperation Treaty (PCT) and the Madrid Protocol. Located in Alexandria, Virginia, the USPTO receives and examines national applications for utility and design patents, and, in regard to international patent applications filed under the PCT, acts as an application receiving office and an international preliminary search and examination authority. The USPTO also conducts further examinations of those international patent applications, filed by both domestic and foreign applicants, which have entered into a later, "national" stage of prosecution before the USPTO. The USPTO further is a forum for challenging the validity of issued patents by way of reexamination proceedings, correcting issued patents via reissue proceedings, and deciding between conflicting claims of ownership of an invention through interference proceedings. Also within the ambit of the USPTO is accepting the periodic payment of maintenance fees and recording transfers of ownership in patent applications and patents.

Applying for a Patent

Patent applications are filed with the USPTO and are reviewed by personnel working under its Director. Each application is first examined to make sure that it is complete. It is then passed to one of the Examiners in the Examining Corps for substantive examination. The assigned Examiner will examine the application for such things as novelty, nonobviousness and sufficiency of disclosure and illustration. If the Examiner finds that all of the requirements of the patent statute and regulations have been met, he or she will issue a Notice of Allowance. More typically, the Examiner will issue an Office Action rejecting the application on grounds such as lack of novelty or obviousness in view of one or more prior issued patents (which act as technical articles for this purpose). The Applicant is given at least one opportunity to respond to the Office Action, by which he or she can argue the patentability of the invention as claimed and/or amend the claims to differently define what the claimed invention is. If the application is rejected in a "final" Office Action, the applicant may appeal the rejection to the USPTO's Board of Patent Appeals and Interferences. The process of negotiating a patent application to issuance is called "prosecution".

Application Requirements and Confidentiality

To be considered complete, a filed patent application must have a specification, drawings (if the character of the invention admits to its illustration) and an Oath or Declaration of the inventor. The specification sets forth a description of the invention in sufficient detail that persons of ordinary skill in the area of endeavor to which the invention pertains may make it and use it. The applicant also has to set forth the best mode of which he or she is aware in carrying out the invention. The specification concludes with one or more numbered paragraphs called "claims" that define the monopoly which the Applicant is seeking to be granted to him or her by the government. Most of patent prosecution involves whether these claims patentably define the invention over the prior art, are sufficiently definite and have sufficient support in the specification as initially filed. Applications are held in strict confidence by the USPTO until they are published or, in certain circumstances, are issued as patents. Unless a request for nonpublication is made at filing, a patent application will be published by the USPTO on a date which is at least 18 months after the effective filing date of the application.

Professional Assistance

While inventors have the ability to draft, file and prosecute patent applications pro se, the results rarely are as good as those which could have been achieved by a patent attorney. The practice is sufficiently specialized and filled with pitfalls that the firm strongly encourages inventors to seek the assistance of patent counsel in doing this. Only those attorneys who are registered to practice before the USPTO in patent cases are permitted to assist inventors in drafting, filing and prosecuting patent applications. Momkus McCluskey has such patent counsel on its staff.