The monopoly in a novel invention conveyed to the owner a patent is granted in exchange for inventors publicly disclosing their invention in a patent application, which the government soon publishes for all to see. Thus, the first step in obtaining a patent on an invention is to prepare and file a patent application. Inventors file a patent application with a country’s patent office, such as the U.S. Patent and Trademark Office, which examines whether the application complies with statutory requirements for granting a patent.
Individual inventors can file a patent application on their own, but typically inventors assign their inventions to an employer (e.g., a company, university, research facility, etc.) that files for the application in the name of the inventors. Ownership rights in patent applications vary from country to country. Within the United States, a patent application is owned by all of the inventors equally until the inventors assign their rights to another person or company.
Applications for patents are filed by or in the name of the inventors of the claims. An inventor is someone who first conceived of at least one element recited in at least one claim in the patent application. Conceiving of an element of a claim means that the individual had the entire concept of the claim element in his or her mind even if some refinements were required. Patents may list single inventors or groups of inventors who worked collaboratively or independently to conceive elements recited in the claims. Indeed, many inventions are the product of a collaboration of two or more individuals working together or combining their expertise to generate something new. Unlike technical papers that typically list everyone involved in a project, only those who conceived of the claimed invention are listed as the inventors. Those who merely identify a problem requiring a solution, implement or refine a concept, build prototypes, run tests or otherwise perform non-inventive tasks at the direction of those who conceived the invention are not inventors.
Under U.S. patent statutes, a patent application must “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” In other words, patent applications must provide a complete teaching of how to make and use the invention so that others can readily comprehend and practice the invention after the patent expires or if a patent is denied.
The written specification is both a technical and legal paper that describes the important aspects—particularly the new and inventive aspects—of the invention. While the description of the invention needs to be complete, it does not have to explain technology that is already well known. Thus, a patent application covering a new type of electroencephalogram (EEG) sensor headset would not have to explain the science of brainwaves or known EEG sensors. Patent attorneys will typically include more details regarding the background of technology and the invention to ensure the application meets all disclosure requirements of any country in which it will be filed. Also, the patent laws in many countries require the specification to identify the improvements or benefits that the invention provides over what is known. Thus, drafting patent applications involves a balancing act between disclosing sufficient background information to place the invention in context, including revealing how the invention improves over what is known, and cluttering the application with unnecessary details well known in the technology.
The typical patent application is written in a series of sections. First, the application includes a description of the background of the invention in which known technologies may be outlined. This may be followed by a summary of the invention, which is typically a restatement of the claims or a brief outline of the important aspects of the invention. Following the summary is typically a brief description of each of the drawings included in the application. Next, the bulk of the specification provides a detailed description of the invention, including a description of the drawings and any alternative implementations and embodiments. The detailed description explains the invention in sufficient detail to enable others to practice it and provide explanation and support for the claims. The description may also explain the utility of the invention, such as an example of how it may be employed or used. The United States requires that the “best mode” be disclosed, which is the preferred or most likely implementation of the invention known to the inventor at the time the application is filed. Following the detailed description is a set of claims that define specifically what is claimed. The application may conclude with an abstract, which is a brief summary, typically limited to about 150 words or less, that is printed on the face of the patent.
The application must include “a drawing where necessary for the understanding of the subject matter sought to be patented.” Most patent applications include a set of drawings. The drawings support the written description, and may tag features with reference numbers that are referred to in the written description. Inventions involving methods should include a process flow diagram showing at least each of the steps recited in the claims. Drawings are typically simple black-and-white line drawings. Patent drawings are not works of art, and typically show simplistic or cartoon versions of the device, process or material being claimed. Since there a number of technical requirements for patent drawings, typically a draftsman prepares the final drawings for application.
The application concludes “with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” If the detailed description is the heart of the specification, the claims are its soul. Claims identify the scope of the monopoly that the inventors want to obtain if a patent is granted. The allowed claims constitute the legal rights that can be enforced in a court of law. The claims must clearly articulate the scope of invention that is claimed, and with a few exceptions only need to recite those elements which are new and actually being claimed. Claims are typically written in an arcane style. There are many rules, regulations and presumptions imposed on claim language by national patent laws, courts and patent offices which can have significant impact on the value of a patent. For this reason, claims should always be written by an experienced practitioner, such as a patent attorney or patent agent knowledgeable about the patent laws in the country in which the application will be filed.
An application not satisfying these requirements may be rejected, and options to correct an incomplete application are limited. For this reason, attorneys are trained to satisfy these statutory requirements, because failure to fully comply with these requirements can lead to loss of rights in the invention.
While patent applications are typically written by patent attorneys or patent agents, it is important that the inventor thoroughly review the entire application before it is filed with a patent office. In most countries, the inventor must confirm that the invention is their own and completely discloses their invention. In some countries, there are legal penalties for signing such documents without confirming that the invention is complete.
After patent applications have been received in a country’s patent office (e.g., the USPTO) and confirmed to be complete, the applications wait in a queue for examination by the patent office to determine whether the claimed invention is patentable over what is known. The wait before an application is examined varies based on the technology of the invention and the country in which the application is filed. In the U.S., waiting 18 months to two years to receive the first feedback from the USPTO is not unusual. In some countries, the wait can be much longer.
Within about 18 months after the patent application is filed, the patent office will typically publish the application, which means that the document is publicly available. Publication makes an electronic copy of the application available in public databases, many of which can be accessed via the Internet. Published applications become prior art to later filed applications. Thus, even if a patent application does not result in an issued patent, the published application can preclude others from obtaining patents on the same or a similar invention.
Eventually, an examiner receives the patent application and conducts a search to determine what was known at the time the application was filed, typically concentrating on patents and published patent applications from around the world. In the jargon of patent law, that which is known to the public, such as described in a publication before the application filing date is referred to as “prior art.” Publications generally encompass any book, journal, magazine or newspaper article, public advertisement, press release, Internet webpage or blog posting, graduate thesis or dissertation catalogued in a library somewhere in the world, and any publicly released government document, such as patents and published patent applications. Even 5000 year old Chinese scrolls cataloged in a library somewhere would be prior art.
The examiner may use keywords in the claims or look for documents that are related to the same type of technology. Quite often, the examiner is knowledgeable of the relevant because applications are generally assigned to examiners based upon the technology areas they examine.
The examiner then compares the claim language to the disclosure in identified prior art documents to determine whether the country’s statutory basis for allowing a patent claim is satisfied. This includes determining whether the claims are new and not obvious (or involve an inventive step) in view of the prior art found by the examiner. These evaluations are accomplished on a claim by claim basis.
The examiner will reject any claims that are anticipated (i.e., not new) by a prior art document that describes or suggest every element recited in claim language. The definition of “new” varies somewhat from country to country. In most countries, an invention is new only if it has not been publicly disclosed or known to others prior to the application filing date, with a few limited exceptions. This is referred to as an absolute novelty requirement. In the United States and Brazil, an invention may still receive patent protection provided the application is filed within one year of a public disclosure of the invention by the inventor. Public disclosure at any time by anyone other than the inventor will render an invention unpatenable for not meeting the novelty requirement.
Further, an invention may not be “new” if it has been disclosed to anyone in the public that is not under some obligation to keep the disclosure secret (e.g., a non-disclosure agreement). For example, a presentation describing the invention in a conference qualifies as prior art. Also, an invention is not “new” if it is–or at some time was–in use by others (except for secret uses) before the application was filed, even if such use was not published. The basic concept is that the patent monopoly cannot be applied to products, methods, materials and technologies already in use and known to the public before the application filing date.
If a claim is not anticipated by a single reference, the examiner will determine whether the claims are obvious variations or combinations of what was known in the prior art. In most countries, the patent laws require that a claim include or involve an “inventive step” by the inventor that goes beyond the prior art. In the United States this requirement is expressed slightly differently; a claim cannot be “obvious” in view of the prior art. As may be expected, determining whether a claimed invention is “obvious” or “involves an inventive step” in view of the prior art involves a degree of judgment on the part of the examiner, which often forms the battleground for arguments between inventors (or their patent attorneys) and patent offices around the world. In general, an examiner will reject a claim based on obviousness or lack of an inventive step when two or more references in the same technical field that make sense to combine teach all of the elements in the claim.
When the examiner completes the examination, an official paper is issued to the applicants or their attorneys. In the parlance of patent prosecution, this official paper is typically referred to as an “office action.” An office action identifies claims that are allowed; claims that are rejected; the basis for the rejections and objections and the prior art that the examiner relied upon. Most patent applications have at least some of the claims rejected in the first office action.
If any claims are rejected, the applicants have a period of time to respond in writing. The response to an office action typically includes amendments to the claims. Amendments may add elements to the claims that are not disclosed in the prior art, as well as clarify aspects of novelty. As a common example, if the office action indicates that a dependent claim is allowable, the independent claims may be amended to include elements recited in that allowable dependent claim.
Also, the response to an office action typically includes arguments providing reasons why the claims should be allowed over the prior art identified in the office action. The types of arguments that will persuade an examiner are defined by the country’s patent laws and thus, are best left to an experienced patent attorney or patent agent.
Office actions specify a period of time in which the applicant must respond. In some countries, like the United States, the office action must be responded to within a set period of time (e.g., three months in the U.S.), which typically can be extended with payment of fees for a limited duration. In other countries, such as Australia, the applicant has a set period of time in which the application must be placed in condition for allowance by overcoming all of the examiner rejections, including rejections that may be made in the future.
When a response to the office action in the form of amendments and arguments is submitted to the patent office, the examiner will reconsider the claims and either allow the patent or issue another rejection. If the examiner rejects some or all of the patent claims, another office action will be issued and the applicants will have an opportunity to respond again.
This rejection and response process may be repeated a number of times, with the procedure varying from country to country in terms of types of submissions and fees. Since patent applications are typically filed in several countries, similar procedures may be repeated in many of the countries in which the application is filed.
When the examiner finds that all pending claims are allowable, an official action will notify the applicants that the application is allowed, and the applicant may be invited to pay an issue fee for the application. A few weeks after the issue fees are paid, the patent will issue, which involves the public publication of the patent and issuance of a patent certificate. The claims can be enforced in a court of law of the issuing country as soon as the patent issues.
The examination process may take anywhere from one to five years depending upon the technology and the patent office, although it may take longer in some countries.
With all of the fees and legal services involved in prosecuting a patent application, it is not surprising that the process of obtaining patents can be very expensive, particularly when an applicant seeks to protect the invention in many countries.
As mentioned above, patents are enforceable only in the country issuing the patent, which requires owners of globally relevant technologies to file the same application in many countries. In order to simplify the process of global patenting, most countries in the world have entered into the Paris Convention Treaty which gives applicants a year to file in the country after filing in another country, and the Patent Cooperation Treaty (PCT) that governs PCT applications.
A PCT application is a special form of application that enables a single application to be filed in most countries around the world. A PCT application must be filed within one year of the filing date of a patent application in a treaty member country. The PCT application enables applicants to designate the countries of the world for filing of a national patent application.
Filing a PCT application enables the applicant to delay filing in other countries for 30, 31 or 32 months depending on the country. This delay is measured from the first day that the application was filed (either as the PCT application or as a preceding national application). This delay can be economically advantageous to companies since it permits them to investigate the invention for marketability and technical feasibility before having to invest in the fees and legal services associated with filing in several countries. Such expenses can be significant, especially because many countries require translation of the patent application into their official language.
A PCT application is searched by a patent search authority (e.g., the European Patent Office) designated by the applicant. Results of that search are provided to the applicant and form a basis for examination of the application in the countries in which national applications are eventually filed.
While the PCT application is searched and applicants have the opportunity to amend the claims, the PCT application does not result in a patent that can be enforced in any country. Instead, the PCT application simply expires after the 30-32 month deadline for filing national stage applications. The national stage applications are examined similar to the U.S. process described above.
With all of the submissions and examinations involved, it should be no surprise that it can take three to five years to obtain, although there are ways to accelerate the process. So, in addition to an invention, those desiring to obtain a patent need to have patience.
