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PATENT PROSECUTION
Prosecuting 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.
Patent Issuance.
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.
Engage a Professional. Consider engaging
the Law
Firm of Louis Ventre, Jr. to represent you. If your invention is
worth patenting, it is worth the cost of a professional.
Cost. The cap or ceiling charge (see "Patent Prosecution" on the utility patent page) offerred by The Law Firm of Louis Ventre Jr. for responding to office actions up to a final decision on the application can be an important consideration for limited budget small entity clients. Business Week published an article on 09-AUG-2012, titled "Startups' New Creed: Patent First, Prototype Later," and it quotes an attorney with a California patent law group stating: "Unlike most large Silicon Valley law firms, Schox Patent Group charges clients a flat $15,000 fee per patent application, rather than by the billable hour. That means Schox doesn't charge for things like e-mails or brain-storming sessions, making him more like a partner to his clients. Law firms typically charge an average of $40,000 to get a patent approved, says Schox." Schox's average cost estimate may include action beyond a final office action decision, so there is not a direct one-to-one correspondence on costs, but this amount is considerably beyond the average overall charges you would expect from The Law Firm of Louis Ventre, Jr.
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This file last modified 05/19/20.
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