The Patent Application Process

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As noted earlier, patents differ from other forms of intellectual property in that there can be no patent unless the patent application process is seen through successfully. Copyright rights begin when a work is created, and trademark rights begin when a mark is used in commerce. While in both cases there are advantages to filing, a filing is required in neither case. This is not true for patents.

EXAMPLE (1): Dina develops a product which she calls “Hirsche’s Handy Hammer.” She begins advertising the product in local papers. By using the product name in commerce, Dina establishes rights in the mark. Although placing the mark on the primary register has distinct advantages, Dina receives trademark protection even if she never files. 

EXAMPLE (2): Dana writes a short story about the history of Hirsche’s Handy Hammer which she hopes her sister, Dina, will put on the company website. Dana is protected by copyright law simply by creating the work, although filing a copy will help establish creation date, etc.

EXAMPLE (3): Dina thinks her hammer is useful, novel, and nonobvious. She is also concerned that the major hammer companies will rip off her idea and begin selling their own version of her invention. Unless she properly applies for a patent, and unless the patent is then actually granted, Dina’s new hammer design can be copied by anyone.

Overview of the Application Process

Title 35, Chapters 11 through 14 address the patent process, and can be summarized in the following way:

Chapter 11: Application for Patent (§§ 111–122)

1. Addresses application formalities which must be met by the applicant.
2. §111 requires that the application generally be made by the inventor.
3. §112 is vital. It requires written specifications of the invention such that it would “enable any person skilled in the art” to make and use the invention. This quid pro quo is part of the trade-off for patent applicants. The applicant receives a government-granted monopoly on the use of her invention, but the public is granted full disclosure which allows others to learn from the invention. In order to achieve this purpose, the description must be detailed enough to enable duplication and use without excessive experimentation. See Northern Telecom, Inc. v. Datapoint Corp., 908 F. 2d 931 (Fed. Cir. 1990); Hornbook at 395; Nutshell at 111.

                    a. §112 also requires that the specification include “one or more claims,” which must be done in a precise manner, the format of which will be addressed later in this chapter.

        4. §113 covers drawings of the invention, and §114 allows the PTO to request a model or specimen (which is not often done).

        5. §115 (Oath of Applicant) lays out a formality which must be met.

        6. §116, §117 and §118 are concerned with filing issues surrounding the inventor (multiple inventors, death of inventor, and filings by persons other than the inventor).

        7. §119 and §120 address filing dates.

        8. §121 allows the PTO to require an application be restricted to one invention if two or more distinct inventions were claimed on the application.

        9. §122 provides for the confidentiality of patent applications and the publication of the application 18 months after the earliest application filing date.

Chapter 12: Examination of Patent (§§ 131–135)

• §131 empowers the PTO to examine the application and issue patents when the applicant is entitled to a patent under the law. Relatively few patent applications are quickly and easily approved under §131.
• §132 dictates the procedures following issuance of a notice of rejection of application. Most applications are initially rejected in part or in whole. When rejected, an applicant can choose to file an amendment, and even lacking such an amendment the PTO can reexamine the application.
• §133 tells us that if an applicant fails to respond within 6 months to any PTO action taken on the application (or shorter, in some cases), the application will be considered abandoned. For this reason, it is vital to keep abreast of any action taken on an application filed on behalf of your client.
• §134 allows an applicant to appeal the decision of a patent examiner if the applicant’s claim has been rejected twice (before that time, the applicant will go through a back-and-forth process with the examiner in an attempt to get the patent issued). This first appeal is heard by the Board of Patent Appeals and Interferences. This section also allows third parties to appeal.
• §135 addresses conflicts between patent applications or between a patent application and an existing, valid patent.

Chapter 13: Review of Patent and Trademark Office (§§ 141–146)

• §141 allows an appeal from a PTO ruling to be heard by the Court of Appeals for the Federal Circuit.
• §142, §143 and §144 deal with procedural issues related to the appeal process.
• §145 allows an appeal from a PTO ruling to be heard by the District Court for the District of Columbia, as long as no appeal has already been made to the Federal Circuit.
• §146 addresses appeals from PTO decisions in §135 interference cases.

Chapter 14: Issue of Patent (§§ 151–157)

• §151 involves the payment of fees which must be paid before a patent is issued. Failure to pay the sum in the allotted time (3 months) will constitute abandonment of the application.
• §152 permits the PTO to grant a patent to an inventor’s assignee.
• §153 indicates how a patent is issued and recorded by the PTO.
• §154 dictates, among other things, the patent term (20 years).
• §§155, 155A, and 156 involve patent extension and restoration in certain limited cases.
• §157 provides for a “statutory invention registration” which differs from a patent in that §183 and §§271-289 of Title 35 would not apply. §271–289 address infringement as well as remedies and damages for infringement. Because statutory invention registration does not protect an inventor against infringement, it provides rights substantially less valuable than those granted by a patent.

In addition to initial application filing fees, fess are required for reexamination and other procedures authorized by the provision above. 

The process beginning with the filing of an application, and hopefully ending with the issuance of a patent, is known as the patent prosecution. When people talk of “prosecuting a patent” they simply mean going through the process of obtaining a patent from the PTO.

Claim Format & Drafting

Anyone wishing to do so can visit the PTO website and take a glance at the Manual of Patent Examining Procedure (MPEP); this will likely help you understand the value of a good patent attorney.

The patent process is very technical, and not simply because the inventions for which patents are sought often require strong knowledge of the

“art to which it pertains, or with which it is most nearly connected.”

It would be impossible to cover the great number of procedural requirements set forth in Title 35 given the scope of this course. As it stands, we can cover only the rough outlines of the requirements which follow from §112.

Note that a 1994 amendment to the Patent Act created §111(b), which provides for what is known as a “provisional application.” Provisional applications need not meet some of the formal requirements of a nonprovisional application, and the application fee is lower. But with these reduced costs come reduced benefits. There is one significant advantage to the provisional application: if someone files a provisional application and within a year files a nonprovisional application, the earlier filing date (of the provisional application) will apply, but the term of protection will commence from the filing date of the nonprovisional application.

EXAMPLE: On May 5, 2015, Deborah files a provisional application for her invention, the "Sage-O-Meter." On May 4, 2016 she files a nonprovisional application for the product. If a patent is granted, it will expire 20 years from the 2016 filing, but the 2015 date will be used as the filing date for the application.

Because they require a more complete set of formalities, we will limit our discussion to nonprovisional applications, and will drop the term “nonprovisional” for the sake of simplicity. All further discussion concerns only nonprovisional applications.

The basic outline of Chapter 11 (§§111–122) are laid out above. What interests us most here are the §112 requirements.

The first paragraph of §112 lays out the specification requirements, which are:

1. Enablement
2. Written description
3. “Best mode”

Although enablement and the written description requirements might seem redundant, they are in fact quite distinct. A specification is enabling when it permits someone “skilled in the art” to make and use the invention. A description which achieves this purpose satisfies the enabling requirement.

The written description requirement, however, serves a different purpose. While the enabling requirement is a way to disseminate information about the new invention to the public, the written description requirement is a way to keep applicants honest. If an applicant tries to add new features or technical advances to the invention after the initial filing, the written description from the original filing will be compared to the altered claim.

EXAMPLE: After inventing the Sage-O-Meter, Deb invents the Sage-O-Gauge, which is a stripped-down version of her previous invention. She applies for a patent on the Sage-O-Gauge on June 1, 2016.  In August, during the course of prosecution of the Sage-O-Gauge, she realizes that as of July 15th, her Sage-O-Meter had been in public use for a year, triggering the §102(b) statutory bar on a patent. She had intended to file an application for that invention as well, but got caught up in her newer product and forgot all about it. If she is able to amend her Sage-O-Gauge filing to include the better technology used in the Sage-O-Meter, she would get the benefit of the earlier filing date.

Requiring a detailed description, beyond that necessary for enablement, prevents abuses of the system such as might tempt Deb in the above example.

The final requirement in the first paragraph of §112 is that the application “set forth the best mode…of carrying out” the invention. This is a further disclosure requirement which, once the period of patent protection has lapsed, will allow others to make use of the formerly patented invention in just the same way as the inventor can. In other words, the inventor cannot hold back any secrets which would continue to provide him an advantage even after the patent has expired. See Hornbook at 401–402.  The America Invents Act has changed this so that a failure to state a sufficient “best mode” is no longer a defense against patent infringement or a reason to invalidate an issued patent.  A “best mode” is still technically required but is no longer enforceable.

But §112 is not satisfied merely by meeting the requirements of the first paragraph on specification. The second paragraph of the section requires that “[t]he specification shall conclude with one or more claims….” The drafting of this claim is crucial.

Although the order is not required by statute, a claim generally includes, in the following order: a preamble, a transition phrase, and a body. Also, each claim (all three parts) must be written as a single sentence (yikes!)  We will cover the basics of drafting a claim for the Sage-O-Meter.

The Preamble

The preamble provides a general description of the invention or generally defines the invention (e.g., “A dog locating device”). The preamble tells us the general purpose of the invention and indicates in some way whether it is a process or a product (the word “device” would indicate product).  Language found in the preamble might have a different effect than the same language used in the body. By referring to this device as a “dog locating device” is the use limited to dogs? Generally, if the language in the preamble merely states the intended purpose, and the language in the body adequately defines the product separate from the preamble language, the preamble will not limit the scope of the patent.

The Transition Phrase

The three transition phrases generally used are:

1. "consisting of"
2. "essentially consisting of"
3. "comprising"

If we file for “A dog locating device consisting of…” we are using a closed transition phrase, which means that if someone were to add an element to the invention, the new product would not infringe on the Sage-O-Meter.

If we file for “A dog locating device essentially consisting of…” we are using a hybrid transition phrase, which is not fully closed. If a new invention adds some element to the Sage-O-Meter but the addition is not a material change, the new product would infringe on the original.

If we file for “A dog locating device comprising …” we are using an open transition phrase which means that the claim includes some additional elements not listed in the body of the claim. This provides applicants with the broadest protection possible.

The Body

This is where we provide the structural elements of the Sage-O-Meter. The three parts of the claim might then come together like this:

• A dog locating device comprising:
• a plastic bowl; and
• a portable fan capable of being attached to the bowl; and
• a mesh container at the bottom of the bowl capable of holding meat.

This is a very simple example, but even this simple example required the used of the correct format. For an excellent discussion of a variety of claim formats, see Hornbook at 408–419.

The importance of carefully drafting claims is twofold. Our discussion here revolves around the claim’s impact on patent approval. A poorly drafted, or worse yet, incorrectly drafted, claim, might mean that the patent won’t be issued. In Chapter 7 of this Courseware we begin our discussion of patent infringement, and we shall see that claims also play a role in that area.

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