Lawyers and Settlements

Intellectual Property: Patents

STEP 4: Prosecution of the Patent Application

Receipt by the United States Patent and Trademark Office.
Patent applications filed in the Patent and Trademark Office are given serial numbers in chronological sequence. The filing date is also part of the identification for an application. That date is very important, since the filing date of a Provisional or Utility Patent Application determines priority of invention as against prior art and as against other applicants. The filing date of a Utility Patent Application determines the start 20 year life of the patent and will be considered the date of invention unless otherwise proven.

Assigned to a Patent Examiner.
Within the United States Patent and Trademark Office, patent applications are assigned to examiners with specialized technical expertise. The examination of applications normally occurs in the order in which they are received by the examiner, although specialized processing may be obtained under special circumstances, such as an inventor that is over a certain age or where there is active infringement occuring. Every effort is made by the Office to attain a uniform and fair treatment of patent applications; however, communications with the Office must meet certain standards and formalities. Since November 2000, the United States Patent and Trademark Office has time deadlines under which it must act and the patent term is adjusted to reflect any failure of the United States Patent and Trademark Office to meet such deadlines.

US Patent Examiners follow a MANUAL OF PATENT EXAMINING PROCEDURE. In a typical case, the patent examiner first reviews the patent application for compliance with formal requirements. Then he considers the invention as claimed. With an understanding of the claimed invention, the Patent Examiner researches earlier patents and publications (the prior art) to determine whether the claims of the patent application define subject matter that is patentable over the prior art. Traditionally, examiners are conservative, if not skeptical, in recognizing patentable subject matter. After determining his position, the examiner prepares a report or Examiner's Action, stating his position for communication to the patent applicant. The law specifies that this action is to be provided within 14 months of the filing date of the Utility Patent Application. Usually, few if any claims are allowed in the first Office Action.

If the applicant has a patent lawyer, the Office Action is mailed directly, and only, to the lawyer. The patent attorney will then have 3 months to respond to the examiner's position and will invariably contact the inventor to discuss whether a response is to be made and arrange for payment of any fees for such preparation. For example, the inventor may be asked to review the prior art cited by the examiner and express his resulting opinions. The applicant is given a time period for responding to the Office Action. The response might take the form of an argument seeking to change the examiner's position, with or with out an amendment modifying the claims of the patent application. Recent Court cases make any “narrowing” of the claims very dangerous to future enforceability of the patent. If the inventor did not use a patent attorney, this will usually be the point where the foolishness of that decision will become all too real and apparent to the inventor. Unless the inventor has a great deal of experience with patents, there is just no way the inventor can adequately prepare a response to an Official rejection from the United States Patent and Trademark Office, and any inventor who represents himself at this stage has a fool for a client.

After receiving the applicant’s response to her Office Action, the examiner again considers the case and reviews her position. Although the matter may not be concluded at that stage, there are usually no more than two or three actions and responses before the question of patentability of the claims is resolved. The second Office Action is usually made “final”, which means the applicant must either comply with any requirements made by the Examiner or in the next response convince the Examiner she is wrong. The examiner may determine that the application simply is not directed to a patentable invention. Alternatively, she may recognize the existence of a patentable invention and agree with the form and scope of the claims. A greater possibility is that the examiner concedes the invention to be patentable but disagrees with the lawyer on the scope of the claims that should be granted. Failing an agreement, an administrative appeal can be pursued before a Board of Patent Appeals and Interferences comprised of 3 experienced patent examiners called Administrative Judges. However, frequently agreement is reached between the examiner and the attorney, whereupon the patent application is ready to mature into, or "issue," as a patent. A "notice of allowance" results setting a deadline for paying an “issue fee” and putting the application, particularly drawings, in final form for publication.

Information on this page was supplied with permission of Bruce E. Burdick.

Patents | Step 5