To obtain a patent, an inventor must file an application
in the United States Patent and Trademark Office
(USPTO). Inventors may apply for one of two types
of patent applications: (1) a non-provisional application,
which begins the examination process and may lead
to a patent and (2) a provisional application, which
establishes a filing date but does not begin the
examination process. Both types of patent applications
can be filed either electronically or in writing
to the Commissioner for Patents. If the examiner
rejects the claims, the applicant may seek review
within the USPTO and in the courts. For applications
filed after June 8, 1995, utility and plant patents
are granted for a term of 20 years. Design patents
last 14 years from the date an applicant is granted
the patent.
Application
The first step in the process of securing a patent
is filing in the USPTO a complete application consisting
of a petition, specification, drawings where necessary,
an inventor oath or declaration, and a filing fee.
The USPTO holds applications, both pending and abandoned,
in confidence.
Required Fees
The Patent Act and USPTO rules impose many fees,
including fees for filing a patent application (filing
fees), fees for taking certain steps in the course
of prosecuting an application (processing fees),
fees for obtaining issuance of the patent (issue
fees), and fees for maintaining a patent in force
(maintenance fees).
The Applicant
The application for a patent is to be made, or authorized
to be made, by the actual inventor or inventors.
The patent statutes provide for application by someone
other than the actual inventor in the following
three instances:
1. Fewer than all the joint inventors of a joint
invention may apply if a joint inventor refuses
to apply or cannot be found or reached after diligent
effort.
2. The legal representative of deceased inventors
and inventors under legal incapacity may apply.
3. A person to whom the inventor has assigned or
agreed in writing to assign the invention or who
otherwise shows sufficient proprietary interest
in the matter may apply when the inventor refuses
to apply, or cannot be found or reached after diligent
effort, on a showing that such action is necessary
to preserve the rights of the parties or to prevent
irreparable damage.
Filing Date
A patent application’s exact filing date is often
of critical importance. Under USPTO rules, an application
is accepted and given a filing date only when it
is complete, but certain minor exceptions can be
made to this rule. For example, an applicant may
obtain a filing date by submitting only the patent
specification and the required drawing. The fee
and oath may be submitted later, but the payment
of an additional charge on the filing fee would
be required.
Examination
Within the USPTO, an Application Division assigns
applications to the respective examining groups
to which the applications relate. An individual
patent examiner conducts the actual examination
of the application. The examiner studies the application
for compliance with statutes and rules and conducts
a search of the prior art to determine the novelty
and nonobviousness of the invention as claimed.
After examination, the examiner notifies the applicant
of his or her action.
Amendments to Applications
An applicant may amend an application’s specification
or drawings after the application is filed, but
a long-standing rule prohibits insertion of ”new
matter” into an application.
Late Claiming
Generally, an applicant may amend the claims originally
presented by canceling particular claims, by presenting
new claims or by rewriting particular claims. The
new claim must be ”supported” by the original
disclosure in the sense that it complies with the
enablement and description requirements. If such
a claim is not so supported, then it is rejected
for noncompliance with those requirements.
Appeals
An applicant can appeal an examiner’s claim rejection
by going to the USPTO’s Board of Patent Appeals
and Interferences. The Board may affirm or reverse
the examiner’s action and may enter a new ground
of rejection. The applicant may then either appeal
on the record to the Court of Appeals for the Federal
Circuit or file a civil suit to obtain a patent
against the Commissioner in the District Court for
the District of Columbia.
An applicant may not appeal an examiner’s objection
or requirement but may petition the Commissioner
to review these actions. The applicant may seek
judicial review under a writ of mandamus and the
Administrative Procedure Act. After a second or
final rejection, an applicant may appeal within
the USPTO to the Board of Patent Appeals and Interferences.
Post-Allowance Procedures
After the USPTO determines an applicant is entitled
to a patent under the law as to the claimed subject
matter, it sends the applicant a notice of allowance
of the application. If the applicant pays the prescribed
issue fee, the USPTO issues a patent.