What is the process of obtaining a patent?

The process of obtaining a patent is typically referred to as patent prosecution.

In the United States Patent and Trademark Office, examiners with technical backgrounds do the substantive review of the applications, including searching for relevant prior art. Unlike trademark practice, only registered patent attorneys or agents, or the inventors themselves, can normally file and prosecute patent applications in the Patent and Trademark Office.

After an application has been filed, it usually takes the U.S. Patent and Trademark Office between approximately one and two years to consider the application. In some instances, however, accelerated examination may be requested.

Sometimes, if more than one “invention” is being claimed in a single application, the U.S. Patent and Trademark Office will require that one invention be elected and the others pursued, if at all, in divisional applications. After this restriction requirement, the application is examined substantively.

Although the examiner’s review sometimes results in an immediate notice of allowance, in the vast majority of cases the examiner’s review results in an initial rejection. The rejection is typically based on the lack of novelty in the invention (35 U.S.C. sec. 102), the obviousness of the invention (sec. 103), the failure to provide clear enough claims (sec. 112, 2nd para.), the failure to provide an enabling disclosure (sec. 112, 1st para.), or the subject matter not being subject to patent protection, e.g., the claimed invention is merely a mathematical algorithm (sec. 101).

These rejections can be overcome in most applications. Therefore, an inventor should not despair too much when the application is initially rejected. One responds to a rejection by amending the application (including usually the claims) and/or by arguing that the examiner’s rejection is ill-founded. This response may result in a notice of allowance or another rejection. There may be several iterations of this process, and one may appeal from a final rejection by the examiner. It is important that a patent attorney handle the prosecution of a patent application, as well as its drafting, since it is all too easy to lose valuable patent coverage by amending the claims, or even by arguing that the rejection is ill-founded.

Most industrialized foreign countries publish patents applications at eighteen months after the priority date. As of November 29, 2000, the United States also began to publish applications at the eighteen month date, but there are exceptions available where foreign filing has not occurred. International applications filed pursuant to the Patent Cooperation Treaty are also published at eighteen months after the priority date. Thus, pursuing foreign coverage can result in the application being published before a patent is issued in the United States. In situations where the invention is not yet being commercialized, it may be possible to delay the filing of foreign or international applications, at the cost of losing an earlier priority date, and thereby delay the publication of the patent application.

It is important that all relevant prior art that is known to the inventors and others involved in the prosecution of the patent be disclosed to the U.S. Patent and Trademark Office during the prosecution. 37 C.F.R. sec. 1.56(a) states:

“A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section…”

Where there has been an intentional failure to disclose all known material prior art during the prosecution of an application, a patent that issues from that application could be declared unenforceable in later patent litigation.  (More)