Patent Applications: Understanding the Process

Here's how you can patent that great invention of yours.

Applications, other than provisional 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 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, foreign patent documents, and available literature, to see if the claimed invention is new, useful and nonobvious and if the application meets the requirements of the patent statute and rules of practice. A decision is reached by the examiner in the light of the study and the result of the search.

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.

Office Action

(Excerpted from General Information Concerning Patents print brochure)

The applicant is notified in writing of the examiner’s decision by an “action” which is normally mailed to the attorney or agent of record. 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/her application.

If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first office action by the examiner, relatively few applications are allowed as filed.

Applicant’s Reply

(Excerpted from General Information Concerning Patents print brochure)

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 reply 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 reply 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 reply 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 reply by the applicant, the application will be reconsidered, and the applicant will be notified as to the status of the claims, that is, whether the claims are rejected, or objected to, or whether the claims are allowed, in the same manner as after the first examination. The second Office action usually will be made final.

Final Rejection

(Excerpted from General Information Concerning Patents print brochure)

On the second or later consideration, the rejection or other action may be made final. The applicant’s reply 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. Reply 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 reply to Office actions within the required time, and the action of the Office is based solely on the written record.

Restrictions

(Excerpted from General Information Concerning Patents print brochure)

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.