The following information was downloaded from the United States Patent Office and provides a framework for those wishing to gain a patent for their invention. This information and additional information is available directly from the
United States Patent and Trademark Office
.
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What is a patent
What can be patented
Novelty and other conditions for obtaining a patent
General information and correspondence
Who may apply for a patent
Application for patent
Oath or declaration, signature
Specification (description and claims)
Drawing
Models, exhibits, specimens
Examination of applications and proceedings in the Patent and Trademark Office
Answers to frequently asked questions (FAQ)
Main TOC
A patent for an invention is a grant of a property right by the Government to the inventor (or his heirs or assignees), acting through the Patent and Trademark Office. The term of the patent is 17 years from the date the patent is granted, subject to the payment of maintenance fees.
The right conferred by the patent grant extends throughout the United States and its territories and possessions.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, or selling" the invention. What is granted is not the right to make, use, or sell, but the right to exclude others from making, using, or selling the invention. Most of the statements in the preceding paragraphs will be explained in greater detail in later sections.
Some persons occasionally confuse patents, copyrights, and trademarks. Although there may be some resemblance in the rights of these three kinds of intellectual property, they are different and serve different purposes.
- Copyrights
- A copyright protects the writings of an author against copying. Literary, dramatic, musical and artistic works are included within the protection of the copyright law, which in some instances also confers performing and recording rights. The copyright goes to the form of expression rather than to the subject matter of the writing. A description of a machine could be copyrighted as a writing, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered in the Copyright Office in the Library of Congress. Information concerning copyrights may be obtained from the Register of Copyrights, Library of Congress, Washington, D.C. 20559. (Telephone 202-479-0700)
- Trademarks
- A trademark relates to any word, name, symbol or device which is used in trade with goods to indicate the source or origin of the goods and to distinguish them from the goods of others. Trademark rights may be used to prevent others from using a confusingly similar mark but not to prevent others from making the same goods or from selling them under a non-confusing mark. Similar rights may be acquired in marks used in the sale or advertising of services (service marks). Trademarks and service marks which are used in interstate or foreign commerce may be registered in the Patent and Trademark Office. The procedure relating to the registration of trademarks and some general information concerning trademarks is given in a separate information file and a pamphlet entitled "Basic Facts About Trademarks."
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Section TOC
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Source: United States Patent Office
The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.
In the language of the statute, any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent," subject to the conditions and requirements of the law. By the word "process" is meant a process or method, and new processes, primarily industrial or technical processes, may be patented. The term "machine" used in the statute needs no explanation. The term "manufacture" refers to articles which are made, and includes all manufactured articles. The term "composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything which is made by man and the processes for making the products.
The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.
The patent law specifies that the subject matter must be "useful." The term "useful" in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.
Interpretations of the statute by the courts have defined the limits of the field of subject matter which can be patented, thus it has been held that methods of doing business and printed matter cannot be patented.
In the case of mixtures of ingredients, such as medicines, a patent cannot be granted unless there is more to the mixture than the effect of its components. (So called patent medicines are ordinarily not patented; the phrase "patent medicine" in this connection does not have the meaning that the medicine is patented.) A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required
Section TOC
Source: United States Patent Office
In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:
- "(a) The invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
- "(b) The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States... "
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If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a valid patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he must apply for a patent before one year has gone by, otherwise any right to a patent will be lost.
Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be inobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another, or changes in size, are ordinarily not patentable.
Section TOC
Source: United States Patent Office
WHAT A PATENT IS
A patent is a grant of a property right by the Government to the inventor 'to exclude others from making, using or selling the invention.' Patents are granted for a term of 17 years, (14 years for design patents) which may be extended only by a special act of Congress (except for certain pharmaceutical patents). After expiration of the term, the patentee loses rights to the invention.
WHEN TO OBTAIN A PATENT
A valid patent may not be obtained if the invention was in public use or on sale in this country for more than one year prior to the filing of your patent application. Your own use and sale of the invention for more than a year before your application is filed will bar your right to a patent just as effectively as though this use and sale had been done by someone else.
WHO MAY OBTAIN A PATENT
Patents are granted only to the true inventor. Methods of doing business and printed matter cannot be patented. A patent cannot be obtained on a mere idea or suggestion.
TYPES OF PATENTS
The patent law provides for the granting of patents in three major categories:
Utility Patents are granted to anyone who invents or discovers any new and useful process, machine, manufacture, or compositions of matter, or any new and useful improvement thereof. 'Process' means a process or method; new industrial or technical processes may be patented. 'Manufacture' refers to articles which are made. 'Composition of matter' relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.
Design Patents are granted to any person who has invented a new, original and ornamental design for an article of manufacture. The appearance of the article is protected.
Plant Patents are granted to any person who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.
OWNERSHIP AND SALE OF PATENT RIGHTS
The inventor may sell all or part of his interest in the patent application or patent to anyone by a properly worded assignment. The application must be filed in the U.S. Patent and Trademark Office as the invention of the true inventor, however, and not as the invention of the person who has purchased the invention from the inventor.
CORRESPONDENCE WITH USPTO
The Office will answer an applicant's inquiries about the status of an application, but if you have an attorney or agent, correspondence should be forwarded through them. It is not necessary to come to the Office in person, as most business is conducted through correspondence. The agency does not have field offices. All correspondence should be addressed to Commissioner of Patents and Trademarks, Washington, DC 20231.
OBTAINING PATENT COPIES
Printed copies of any patent identified by its patent number, may be purchased from the USPTO (see fee schedule). Orders should be mailed to the United States Patent and Trademark Office, Washington, D.C. 20231. Copies may also be obtained from Patent and Trademark Depository Libraries.
PATENT PENDING
The terms 'patent pending' and 'patent applied for' are used by a manufacturer or seller of an article to inform the public that an application for a patent on that article is on file. The law imposes a fee on those who use these terms falsely.
PATENT PROTECTION IN FOREIGN COUNTRIES
The United States patent protects your invention only in this country. Normally a license must be obtained from the Commissioner of Patents and Trademarks before you can file for a patent in another country, unless the filing in another country occurs more than six months after the filing in this country, in which case no license is necessary.
PATENT ATTORNEY AND AGENTS
The U.S. Patent and Trademark Office cannot assist in preparation of application papers and strongly advises prospective applicants to engage the services of a patent attorney or agent. The Office does not control fees charged by attorneys and agents, nor can it recommend any particular attorney or agent. Applicants may consult local telephone directories or the roster of attorneys and agents registered to practice (see the section on publications at the end of this booklet).
PATENT PROMOTION ORGANIZATIONS
The Office has no control over, and does not maintain information about, patent promotion organizations. It is advisable to check on the reputation of such firms before making any commitments by inquiring of Better Business Bureaus or asking your patent attorney or agent.
MARKETING INVENTIONS
The Office cannot assist in the development and marketing of an invention, but will publish, at a patent owner's request, a notice in the weekly
Official Gazette
that the patent is available for licensing or sale. See publication list for current price. You may want to consult chambers of commerce, banks, industrial development organizations, or similar groups for help in promoting your invention. Consult local directories or write to state authorities for names and addresses of such organizations.
Section TOC
Source: United States Patent Office
According to the law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If the inventor is dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is insane, the application for patent may be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or a person having a proprietary interest in the invention may apply on behalf of the missing inventor.
If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.
Officers and employees of the Patent and Trademark Office are prohibited by law from applying for a patent or acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent.
Section TOC
Source: United States Patent Office
An application for a patent is made to the Commissioner of Patents and Trademarks and includes:
- (1) A written document which comprises a specification (description and claims), and an oath or declaration;
- (2) A drawing in those cases in which a drawing is necessary; and
- (3) The filing fee. (See fee schedule.)
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The specification and oath or declaration must be legibly written or printed in permanent ink on one side of the paper. The Office prefers typewriting on letter or legal size paper, 8 to 8-1/2 by 10-1/2 to 13 inches, (20.3 to 21.6 by 26.7 to 33.0 cm) 1-1/2 or double spaced with margins of 1 inch (2.54 cm) on the left-hand side and at the top. If the papers filed are not correctly, legibly, and clearly written, the Patent and Trademark Office may require typewritten or printed papers.
The application for patent is not forwarded for examination until all its required parts, complying with the rules relating thereto, are received. If the papers and parts are incomplete, or so defective that they cannot be accepted as a complete application for examination, the applicant will be notified about the deficiencies and be given a time period in which to remedy them. A surcharge may be required. If the applicant does not respond within the prescribed time period the application will be returned or otherwise disposed of. The filing fee may be refunded when an application is refused acceptance as incomplete; however, a handling fee will be charged.
It is desirable that all parts of the complete application be deposited in the Office together; otherwise each part must be signed and a letter must accompany each part, accurately and clearly connecting it with the other parts of the application.
All applications are numbered in serial order, and the applicant is informed of the serial number and filing date of the application by a filing receipt. The filing date of the application is the date on which the names of the inventors, a specification (including claims) and any required drawings are received in the Patent and Trademark Office; or the date on which the last part completing the application are received in the case of a previously incomplete or defective application.
Section TOC
Source: United States Patent Office
The oath or declaration of the applicant is required by law. The inventor must make an oath or declaration that he/she believes himself/herself to be the original and first inventor of the subject matter of the application, and he/she must make various other allegations required by law and various allegations required by the Patent and Trademark Office rules. The oath must be sworn to by the inventor before a notary public or other officer authorized to administer oaths. A declaration may be used in lieu of an oath as part of the original application for a patent involving designs, plants, and other patentable inventions; for reissue patents; when claiming matter originally shown or described but not originally claimed; or when filing a divisional or continuing application. A declaration does not need to be notarized.
The application, oath or declaration must be signed by the inventor in person, or by the person entitled by law to make application on the inventor's behalf. A full first or middle name of each inventor without abbreviation and a middle or first initial, if any, is required. The post office address of the inventor is also required.
Blank forms for applications or certain other papers are not supplied by the Patent and Trademark Office.
The papers in a complete application will not be returned for any purpose whatever, nor will the filing fee be returned. If applicants have not preserved copies of the papers, the Office will furnish copies for a fee.
Section TOC
Source: United States Patent Office
The specification must include a written description of the invention and of the manner and process of making and using it, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the technological area to which the invention pertains, or with which it is most nearly connected, to make and use the same.
The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor for carrying out his invention must be set forth.
In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.
The title of the invention, which should be as short and specific as possible, should appear as a heading on the first page of the specification, if it does not otherwise appear at the beginning of the application.
A brief abstract of the technical disclosure in the specification must be set forth in a separate page immediately following the claims in a separate paragraph under the heading "Abstract of the Disclosure."
A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, commensurate with the invention as claimed and any object recited, should precede the detailed description. Such summary should be that of the invention as claimed.
When there are drawings, there shall be a brief description of the several views of the drawings, and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures, and to the different parts by use of reference numerals.
The specification must conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.
The claims are brief descriptions of the subject matter of the invention, eliminating unnecessary details and reciting all essential features necessary to distinguish the invention from what is old. The claims are the operative part of the patent. Novelty and patentability are judged by the claims, and, when a patent is granted, questions of infringement are judged by the courts on the basis of the claims.
When more than one claim is presented, the claims may be placed in dependent form in which a claim may refer back to and further restrict one or more preceding claims.
A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.
The following order of arrangement should be observed in framing the specification:
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- (a) Title of the invention.
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- (b) Cross-references to related applications, if any.
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- (c) Brief summary of the invention.
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- (d) Brief description of the several views of the drawing, if there are drawings.
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- (e) Detailed Description.
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- (f) Claim or claims.
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- (g) Abstract of the disclosure.
Section TOC
Source: United States Patent Office
The applicant for a patent will be required by law to furnish a drawing of the invention whenever the nature of the case requires a drawing to understand the invention. However, the Commissioner may require a drawing where the nature of the subject matter admits of it; this drawing must be filed with the application. This includes practically all inventions except compositions of matter or processes, but a drawing may also be useful in the case of many processes.
The drawing must show every feature of the invention specified in the claims and is required by the Office rules to be in a particular form. The Office specifies the size of the sheet on which the drawing is made, the type of paper, the margins, and other details relating to the making of the drawing. The reason for specifying the standards in detail is that the drawings are printed and published in a uniform style when the patent issues, and the drawings must also be such that they can be readily understood by persons using the patent descriptions.
No names or other identification will be permitted within the "sight" of the drawing, and applicants are expected to use the space above and between the hole locations to identify each sheet of drawings. This identification may consist of the attorney's name and docket number or the inventor's name and case number and may include the sheet number and the total number of sheets filed (for example, "sheet 2 of 4"). The following rule, reproduced from title 37 of the Code of Federal Regulations, relates to the standards for drawings:
1.84 Standards for drawings.
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- (a) Paper and ink. Drawings must be made upon paper which is flexible, strong, white, smooth, non-shiny and durable. India ink, or its equivalent in quality, is preferred for pen drawings to secure perfectly black solid lines. The use of white pigment to cover lines is not normally acceptable.
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- (b) Size of sheet and margins. The size of the sheets on which drawings are made may either be exactly 8= by 14 inches (21.6 by 35.6 cm.) or exactly 21.0 by 29.7 cm. (DIN size A4). All drawing sheets in a particular application must be the same size. One of the shorter sides of the sheet is regarded as its top.
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- (1) On 8 1/2 by 14 inch drawing sheets, the drawings must include a top margin of 2 inches (5.1 cm) and bottom and side margins of 1/4 inch (6.4 mm) from the edges, thereby leaving a "sight" precisely 8 by 11-3/4 inches (20.3 by 29.8 cm). Margin border lines are not permitted. All work must be included within the "sight". The sheets may be provided with two 1/4 inch (6.4 mm) diameter holes having their center lines spaced 11/16 inch (17.5 mm) below the top edge and 2-3/4 inches (7.0 cm) apart, said holes being equally spaced from the respective side edges.
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- (2) On 21.0 by 29.7 cm drawing sheets, the drawing must include a top margin of at least 2.5 cm, a left side margin of 2.5 cm, a right side margin of 1.5 cm, and a bottom margin of 1.0 cm. Margin border lines are not permitted. All work must be contained within a sight size not to exceed 17 by 26.2 cm.
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- (c) Character of lines. All drawings must be made with drafting instruments or by a process which will give them satisfactory reproduction characteristics. Every line and letter must be durable, black, sufficiently dense and dark, uniformly thick and well-defined; the weight of all lines and letters must be heavy enough to permit adequate reproduction. This direction applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. All lines must be clean, sharp, and solid. Fine or crowded lines should be avoided. Solid black should not be used for sectional or surface shading. Freehand work should be avoided wherever it is possible to do so.
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- (d) Hatching and shading. (1) Hatching should be made by oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. (2) Heavy lines on the shade side of objects should preferably be used except where they tend to thicken the work and obscure reference characters. The light should come from the upper left-hand corner at an angle of 450 degrees. Surface delineations should preferably be shown by proper shading, which should be open.
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- (e) Scale. The scale to which a drawing is made ought to be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction, and views of portions of the mechanism on a larger scale should be used when necessary to show details clearly; two or more sheets should be used if one does not give sufficient room to accomplish this end, but the number of sheets should not be more than is necessary.
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- (f) Reference characters. The different views should be consecutively numbered figures. Reference numerals (and letters, but numerals are preferred) must be plain, legible and carefully formed, and not be encircled. They should, if possible, measure at least one-eighth of an inch (3.2 mm) in height so that they may bear reduction to one twenty-fourth of an inch (1.1 mm); and they may be slightly larger when there is sufficient room. They should not be so placed in the close and complex parts of the drawing as to interfere with a thorough comprehension of the same, and therefore should rarely cross or mingle with the lines. When necessarily grouped around a certain part, they should be placed at a little distance, at the closest point where there is available space, and connected by lines with the parts to which they refer. They should not be placed upon hatched or shaded surfaces but when necessary, a blank space may be left in the hatching or shading where the character occurs so that it shall appear perfectly distinct and separate from the work. The same part of an invention appearing in more than one view of the drawing must always be designated by the same character, and the same character must never be used to designate different parts. Reference signs not mentioned in the description shall not appear in the drawing, and vice versa.
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- (g) Symbols, legends. Graphical drawing symbols and other labeled representations may be used for conventional elements when appropriate, subject to approval by the Office. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. While descriptive matter on drawings is not permitted, suitable legends may be used, or may be required in proper cases, as in diagrammatic views and flow sheets or to show materials or where labeled representations are employed to illustrate conventional elements. Arrows may be required, in proper cases, to show direction of movement. The lettering should be as large as, or larger than, the reference characters.
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- (h) [Reserved]
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- (i) Views. The drawing must contain as many figures as may be necessary to show the invention; the figures should be consecu- tively numbered if possible in the order in which they appear. The figures may be plain, elevation, section, or perspective views, and detail views of portions of elements, on a larger scale if necessary, may also be used. Exploded views, with the separated parts of the same figure embraced by a bracket, to show the relationship or order of assembly of various parts, are permissible. When necessary, a view of a large machine or device in its entirety may be broken and extended over several sheets, if there is no loss in facility of understanding the view. Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets should be so arranged that the complete figure can be understood by laying the drawing sheets adjacent to one another. The arrangement should be such that no part of any of the figures appearing on the various sheets is concealed and that the complete figure can be understood even though spaces will occur in the complete figure because of the margins on the drawing sheets. The plane upon which a sectional view is taken should be indicated on the general view by a broken line, the ends of which should be designated by numerals corresponding to the figure number of the sectional view and have arrows applied to indicate the direction in which the view is taken. A moved position may be shown by a broken line superimposed upon a suitable figure if this can be done without crowding; otherwise a separate figure must be used for this purpose. Modified forms of construction can only be shown in separate figures. Views should not be connected by projection lines nor should center lines be used.
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- (j) Arrangement of views. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views longer than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet with the appropriate top margin is on the right-hand side. One figure must not be placed upon another or within the outline of another.
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- (k) Figure for Official Gazette. The drawing should, as far as possible, be so planned that one of the views will be suitable for publication in the Official Gazette as the illustration of the invention.
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- (l) Extraneous matter. Identifying indicia (such as the attorney's docket number, inventor's name, number of sheets, etc.) not to exceed 2-3/4 inches (7.0 cm) in width may be placed in a centered location between the side edges within three-fourths inch (19.1 mm) of the top edge. Authorized security markings may be placed on the drawings provided they are outside the illustrations and are removed when the material is declassified. Other extraneous matter will not be permitted upon the face of a drawing.
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- (m) Transmission of drawings. Drawings transmitted to the Office should be sent flat, protected by a sheet of heavy binder's board, or may be rolled for transmission in a suitable mailing tube; but must never be folded. If received creased or mutilated, new drawings will be required. (See 1.152 for design drawing, 1.165 for plant drawings, and 1.174 for reissue drawings.)
The requirements relating to drawings are strictly enforced, but a drawing not complying with all of the regulations may be accepted for purpose of examination, and correction or a new drawing will be required later.
Applicants are advised to employ competent draftsmen to make their drawings.
Section TOC
Source: United States Patent Office
Models are not required in most patent applications since the description of the invention in the specification and the drawings must be sufficiently full and complete and capable of being understood to disclose the invention without the aid of a model. A model will not be admitted unless specifically requested by the examiner.
A working model, or other physical exhibit, may be required by the Office if deemed necessary. This is not done very often. A working model may be requested in the case of applications for patent for alleged perpetual motion devices.
When the invention relates to a composition of matter, the applicant may be required to furnish specimens of the composition, or of its ingredients or intermediates, for inspection or experiment. If the invention is a microbiological invention, a deposit of the micro-organism involved is required.
Section TOC
Source: United States Patent Office
Applications filed in the Patent and Trademark Office and accepted as complete applications are assigned for examination to the respective examining groups having charge of the areas of technology related to the invention. In the examining group, applications are taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed or in accordance with examining procedures established by the Commissioner.
Applications will not be advanced out of turn for examination or for further action except as provided by the rules, or upon order of the Commissioner to expedite the business of the Office, or upon a verified showing which, in the opinion of the Commissioner, will justify advancing them.
The examination of the application consists of a study of the application for compliance with the legal requirements and a search through United States patents, prior foreign patent documents which are available in the Patent and Trademark Office, and available literature, to see if the claimed invention is new and unobvious. A decision is reached by the examiner in the light of the study and the result of the search.
- Office Action
- The applicant is notified in writing of the examiner's decision by an "action" which is normally mailed to the attorney or agent. The reasons for any adverse action or any objection or requirement are stated in the action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his application.
If the invention is not considered patentable subject matter, the claims will be rejected. If the examiner finds that the invention is not new, the claims will be rejected, but the claims may also be rejected if they differ only in an obvious manner from what is found. It is not uncommon for some or all of the claims to be rejected on the first action by the examiner; relatively few applications are allowed as filed.
- Applicant's Response
- The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner's action. The applicant must respond to every ground of objection and rejection in the prior Office action (except that a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated). The applicant's action must appear throughout to be a bona fide attempt to advance the case to final action. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration.
In amending an application in response to a rejection, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. He/she must also show how the claims as amended avoid such references or objections.
After response by the applicant the application will be reconsidered, and the applicant will be notified if claims are rejected, or objections or requirements made, in the same manner as after the first examination. The second Office action usually will be made final.
- Final Rejection
- On the second or later consideration, the rejection or other action may be made final. The applicant's response is then limited to appeal in the case of rejection of any claim and further amendment is restricted. Petition may be taken to the Commissioner in the case of objections or requirements not involved in the rejection of any claim. Response to a final rejection or action must include cancellation of, or appeal from the rejection of, each claim so rejected and, if any claim stands allowed, compliance with any requirement or objection as to form.
In making such final rejection, the examiner repeats or states all grounds of rejection then considered applicable to the claims in the application.
Interviews with examiners may be arranged, but an interview does not remove the necessity for response to Office actions within the required time, and the action of the Office is based solely on the written record.
If two or more inventions are claimed in a single application, and are regarded by the Office to be of such a nature that a single patent should not be issued for both of them, the applicant will be required to limit the application to one of the inventions. The other invention may be made the subject of a separate application which, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. A requirement to restrict the application to one invention may be made before further action by the examiner.
As a result of the examination by the Office, patents are granted in the case of about two out of every three applications for patents which are filed.
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Section TOC
Source: United States Patent Office
l. Q. What do the terms "patent pending" and "patent applied for" mean?
A. They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.
2. Q. Is there any danger that the Patent and Trademark Office will give others information contained in my application while it is pending?
A. No. All patent applications are maintained in the strictest secrecy until the patent is issued. After the patent is issued, however, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Room for inspection by anyone and copies of these files may be purchased from the Office.
3. Q. May I write to the Patent and Trademark Office directly about my application after it is filed?
A. The Office will answer an applicant's inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent the Office will not correspond with both you and the attorney concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.
4. Q. Is it necessary to go to the Patent and Trademark Office to transact business concerning patent matters?
A. No; most business with the Office is conducted by correspondence. Interviews regarding pending applications can be arranged with examiners if necessary, however, and are often helpful.
5. Q. If two or more persons work together to make an invention, to whom will the patent be granted?
A. If each had a share in the ideas forming the invention, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If on the other hand one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his name alone.
6. Q. If one person furnishes all of the ideas to make an invention and another employs him or furnishes the money for building and testing the invention, should the patent application be filed by them jointly?
A. No. The application must be signed by the true inventor, and filed in the Patent and Trademark Office, in the inventors name. This is the person who furnishes the ideas, not the employer or the person who furnishes the money.
7. Q. Does the Patent and Trademark Office control the fees charged by patent attorneys and agents for their services?
A. No. This is a matter between you and your patent attorney or agent in which the Office takes no part. To avoid misunderstanding you may wish to ask for estimate charges for: (a) the search, (b) preparation of the patent application, (c) Patent and Trademark Office prosecution.
8. Q. Will the Patent and Trademark Office help me to select a patent attorney or agent to make my patent search or to prepare and prosecute my patent application?
A. No. The Office cannot make this choice for you. However, your own friends or general attorney may help you in making a selection from among those listed as registered practitioners on the Office roster. Also, some bar associations operate lawyer referral services that maintain lists of patent lawyers available to accept new clients.
9. Q. Will the Patent and Trademark Office advise me as to whether a certain patent promotion organization is reliable and trustworthy?
A. No. The Office has no control over such organizations and does not supply information about them. It is advisable, however, to check on the reputation of invention promotion firms before making any commitments. It is suggested that you obtain this information by inquiring of the Better Business Bureau of the city in which the organization is located, or of the bureau of commerce and industry or bureau of consumer affairs of the state in which the organization has its place of business. You may also undertake to make sure that you are dealing with reliable people by asking your own patent attorney or agent or by inquiry of others who may know them.
10. Q. Are there any organizations in my area which can tell me how and where I may be able to obtain assistance in developing and marketing my invention?
A. Yes. In your own or neighboring communities you may inquire of such organizations as chambers of commerce, and banks. Many communities have locally financed industrial development organizations which can help you locate manufacturers and individuals who might be interested in promoting your idea.
11. Q. Are there any state government agencies that can help me in developing and marketing of my invention?
A. Yes. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of your state organizations you can obtain this information by writing to the governor of your state.
12. Q. Can the Patent and Trademark Office assist me in the developing and marketing of my patent?
A. The office cannot act or advise concerning the business transactions or arrangements that are involved in the development and marketing of an invention. However, the Office will publish, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. The fee for this is $20.
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Source: United States Patent Office
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