CONSIDERATIONS REGARDING YOUR PATENT APPLICATION

A. Your Responsibilities

   Filing of a patent application creates duties on your part, which you should be aware of. Some of these are as follows.

1. You must disclose all prior art material to patentability.

    Importantly, the U.S. Patent & Trademark Office (USPTO) wants to know if your have any information which may be material to the patentability of the patent application. These can be newspaper or magazine articles you have read, patents or other publications you may be aware of. These can also be products you've seen on the market. Disclosing relevant information is a duty on your part and failure to do so may be deemed to be fraud which can subject you to severe penalties under the patent laws. There is a three month grace period to file an "Information Disclosure Statement" (IDS) detailing the prior art; after the First Office Action, if you've known about the information for three or more months, the USPTO charges a late submission fee. It is best to cite all the relevant art at the time of filing of the patent application.

2. You must file within 1 year from date of publication.

    Under U.S. patent laws, you are barred from obtaining a patent if you have offered your invention for sale more than one year from the date of filing, or if you published or publicly disclosed the invention more than one year from the date of filing. You are also barred if you are not the actual inventor. Please note that the act of falsifying this information for purposes of obtaining a patent is an act of fraud.

3. You must foreign file before a public disclosure and within 1 year of the U.S. filing date.

    Foreign countries have a rule that the invention must never have been publicly described or sold before filing there. However, under the Paris Convention, there is a one year grace period to file utility patent applications in most major foreign countries measured from the date of the U.S. filing. This allows you to foreign file even if you publicly disclosed your invention or offered it for sale after you filed in the U.S. (acts of this kind before the U.S. filing date are fatal). Canada has a one year grace period for acts of the inventor. A few countries do not subscribe to the Paris Convention. Note: Design Patents must be foreign filed within 6 months, not 1 year, under the Paris Convention.

4. You must disclose the best mode for carrying-out the invention.

    The Patent Office requires that you, in your honest opinion, disclose the invention with the best structural and functional disclosure that you can think of at the time the application is filed. This includes both the drawings and the written description. The disclosure must also be enabling for a person of ordinary skill in the relevant art to make and use the invention without an undue amount of experimentation.

5. The patent application must correctly name the inventor(s).

    Under U.S. patent law, each and every inventor must be identified as an "Applicant". Each named inventor must be a contributor to the claimed subject matter of at least one claim. Others who are not inventors who wish to be named on the patent, must be listed as assignees, provided they have been assigned some ownership interest.

B. Ordinary Patent Office Procedure

    After a patent application is filed, it will be accorded a serial number, a filing date and be assigned to a group art unit of the U.S. Patent & Trademark Office. A filing receipt (a blue sheet of paper) is then mailed to you (or your attorney if you retained one) confirming receipt. An Examiner within that group art unit will then be assigned to review the patent application, perform his/her own search, and then issue an "Office Action", usually within 6 to 12 months. Office Actions frequently include prior art references, such as patents. These prior art references may or may not have been found by you in the course of your own patent search. On reason that you may not have found a cited reference is that the Examiner has access to search facilities not generally available to the public, and he/she is also viewing the invention with his own interpretation which may suggest to him that certain prior art references are more relevant than someone else might.

    The first Office Action is mailed or e-mailed to you (or to your attorney) and usually includes rejection of some or all the claims, and may contain an objection to the way in which the drawings or the specification is/are presented. In so doing, the Examiner is required to provide you a copy of non-patent prior art references he/she found and explain his/her reasoning for the rejection. Sometimes, though, the first Office Action is an "Allowance" of all the claims (this happens in, perhaps, about 1 in 10 patent applications), and when this happens the "prosecution" of the patent application concludes; you'll eventually get a patent if you pay the issue fee and any other "formal matters" are taken care of by the deadline set by the Examiner.

    When the Office Action contains a rejection of one or more of the claims, you must file an "Amendment" so as to amend the claims or the specification of the patent application to overcome the Examiner's rejection. Argument is used to show the Examiner why the claims should be allowed. (Even if no claims are actually amended and only argument is submitted, it's still called an "Amendment".) For instance, argument could be presented to show how the prior art patents cited by the Examiner are being improperly applied by him under case law and the patent laws and rules. The Examiner will then "enter" the Amendment and reconsider whether to "allow" your claims. He/She will then issue a second Office Action. Again, this may be an Allowance or another rejection of some or all the claims.

    The second Office Action is usually marked "Final", meaning the Examiner no longer is required to enter an Amendment and then reconsider allowability. At this point, if a second Amendment is filed, the Examiner will later issue an "Advisory Action" as to his thinking regarding the Amendment. If the Examiner continues the rejection of the claims, and yet it is felt by you that the claims subject to rejection should be allowed (that is, the Examiner is in error), there are two viable options: 1) file a "Continuing Practice Application" with another filing fee and an Amendment to rectify any problems complained of by the Examiner (this is done to force the Examiner to enter the Amendment because entry was optional when on final rejection), or, 2) file an "Appeal" with the Patent Office Board of Appeals and Interferences, where three Examiners-in-Chief will read a brief filed by you and a brief filed by the Examiner, and then render a decision on allowability of the claims.

    You should be aware of certain other circumstances that can arise.

       There are occasions when the Examiner may require a "Restriction", in which the Examiner requires you to elect one invention out of the Application because he/she has determined more than one invention is present. This will entail the possible filing of other patent applications (known as 'Divisionals") to cover the "restricted" inventions, but then you'll receive more than one patent out of your original patent application. Usually, the most desirable situation is for one patent application to cover the whole invention using various claims to cover each feature of the invention, as filing and prosecution costs are minimized, and there is a patent law which forbids "Double Patenting" the same invention. But, it is the presentation of the various claims that triggers the Restriction requirement.

    There are occasions when a "Petition" to the Commissioner of Patents & Trademarks is necessary in order to correct a wrong suffered by you on account of error committed by the USPTO. Unfortunately, the USPTO charges a fee [see Links] for submitting petitions.

C. Petitions To Make Special

    If you are 65 years old or over, have poor health, have an energy related invention or have an invention which improves environmental quality, you may petition the U.S. Patent & Trademark Office (USPTO) for accelerated review of your patent application. There is no governmental fee for these grounds for the petition to make special.

       You can petition the USPTO to make special your patent application provided only one invention is claimed, and submitted is: a statement indicating a search has been performed along with who did it, copies of the references cited, and a detailed discussion of the references cited. There is a government fee for this ground for petition to make special.

D. Responding to Office Actions

    The Examiner in charge of your patent application will have read over your patent application, looked at the information disclosure statement you submitted (if any), then perform a prior art search related to the potential novelty and/or unobviousness of your claims. The Examiner will then send you (or your attorney) an Office Action detailing his/her findings. Unless you respond to each issue in the Office Action, your patent application will be come abandoned.

1. Time for Response:

    The Office Action will set a date for response (for example, 3 months from the date of mailing of the Office Action). If you do not respond by the due date your patent application will be considered "abandoned". However, the patent laws under certain conditions gives you 6 months to respond. This extra time, if available, can be used for an extension of time to reply, but the U.S. Patent & Trademark Office charges progressively higher late fees for doing this.

2. Drawing Objections:

    If the Office Action requires drawing corrections, you will want to address this by correcting the drawings and discussing how you corrected the problem. A copy of the original drawing marked in red ink is included to show where and how the changes were made.

3. Specification Objections:

    Problems with the specification frequently involve wording, spelling or punctuation inadvertencies and typos. However, significant corrections to the Specification should be carefully considered so that "new matter" is not introduced. New matter is new disclosure which is not supported by the patent application as a whole as it was originally filed (specification, drawings and claims may be resorted to for support).

4. Claim Rejections:

    The claims are at the heart of the examination process because they serve to define the breadth of the patent subject matter. Claim rejections usually fall within one of the following three types.

    4a. Section 112 Ground for Rejection (Improper Wording):

    For example, if the examiner says the wording of the claims is nondescriptive or vague, then you should consider amending the claims to more definitely recite what you are trying to say. Sometimes it's not clear what connects to what, or how the elements connect to each other. Clarify it. If the Examiner says there is a "lack of antecedent basis" what he/she means is that you presented an element without first positively identifying it. Here's an example: "A socket for a wrench, the socket being connectable to the spindle of the wrench." What spindle? Say instead: "A socket for a wrench, the wrench having a spindle, the socket being connectable to the spindle."

    4b. Section 102 Ground for Rejection (Lack of Novelty):

    Under this ground for rejection, the Examiner has found a reference which "anticipates" one or more of your claims. Anticipation can often be overcome if you argue that one or more elements cannot be found in the reference being used against you. This may require you to amend the claims so as to include this extra element.

    4c. Section 103 Ground for Rejection (Obviousness):

    Under this ground for rejection, the Examiner has found that one or more references can be modified using the skill of an average artisan to arrive at your invention. An example of how obviousness can be overcome is to argue that the references cannot be combined in the manner the Examiner suggests, as for example because there is no teaching or suggestion how to do this, and the reconstruction would involve making the references do something they were not intended to do. Usually, some claim amending is necessary to fully distinguish your claimed subject matter from the prior art references being used against you.

E. Foreign Filing

    Each country in which you wish to have patent protection must be filed for -- a U.S. patent only protects you in the U.S. and its possessions. However, since the domestic market in the U.S. for many inventions is large enough, the cost for foreign filing is usually unwarranted.

    U.S. patent law requires you to obtain a foreign filing license on any invention made in the U.S. before you file in a foreign country a) within six months of your your U.S. filing date or b) if no U.S. patent application has been filed. The filing receipt sent to you by the U.S. Patent & Trademark Office will include an indication of whether or not a foreign filing license has been granted.

    Foreign countries have a rule that the invention must never have been publicly described or sold before filing there. However, under the Paris Convention, there is a one year grace period to file utility patent applications in most major foreign countries measured from the date of the U.S. filing. This allows you to foreign file even if you publicly disclosed your invention or offered it for sale after you filed in the U.S. (acts of this kind before the U.S. filing date are fatal). Design Patents must be foreign filed within 6 months, not 1 year, under the Paris Convention.

    Foreign filing quite often is immensely expensive, and most inventors are satisfied with a patent in the U.S. only.  So, do not feel any pressure to file elsewhere unless you really think you can market your invention there, thereby making the expense, the time and the effort involved worth it.