Patent Applications - Module 2 of 5
Module 2: Patent Applications
The Patent Attorney or Agent
The process by which an inventor obtains a patent -- from the initial patent application filing to the issuance of the patent -- is known as patent prosecution. Although an inventor can prepare and prosecute a patent application on her own, the process can be difficult and complicated, and most inventors hire registered patent attorneys or patent agents.
Patent attorneys and patent agents must pass a special bar exam administered by the US Patent and Trademark Office, known as the Patent Bar Exam. The examination is computer-based and can be taken at any time. It tests knowledge of the extremely detailed Manual of Patent Examining Procedure. Pass rates are typically in the 40-50% range. In addition, patent attorneys and agents must have earned bachelor’s degrees in scientific fields or must have taken a significant number of undergraduate science courses. They do not need to be lawyers or law school graduates.
Because patents can only be obtained for new and non-obvious inventions, patent prosecution should begin with a prior art search. Although there are no specific requirements for how detailed the search must be, most patent practitioners search at least the Patent Office’s database of issued patents. Outside search companies are often hired to conduct more detailed searches of foreign patent filings and non-patent literature.
searches serve several important goals.
First, the searches can help inventors and practitioners to formulate
the scope of the patent application, making sure to avoid any potentially
invalidating prior art. Second, if the searches reveal prior art and if no
workable claims can be drafted to avoid the prior art, the inventor can save
time and money by declining to file an application. Third, knowledge of the
prior art will help greatly in the event of a later dispute or litigation.
Finally, if an accused infringer can establish that the inventor knew about prior
art covering her patent, then the patent can be rendered unenforceable.
Design patent prosecution is typically more straightforward and streamlined than utility patent prosecution. A design patent application involves a single claim covering the ornamental features of the design of a specific item while a utility patent application can include claims to different, albeit related, inventions. In addition, design patent applications must include only figures and brief descriptions and do not include detailed descriptions of the inventions or any written claims.
prosecution, design patent applications can be rejected based on prior art
designs. The patent practitioner must be
adept at explaining the differences between the design at issue and prior art
figures define the scope of each design patent. The patent practitioner can
choose to expand the scope of the patent by using broken or dashed lines on a
portion of the figures, as anything in broken or dashed lines is not included
in the scope of the patent. However, broader claims potentially bring more
prior art into play, and the patent attorney or agent must be able to explain
the differences between the claimed design and the prior art. Often, several patent applications are filed
for the same design, some claiming broader scope and some claiming narrower
applications are cheaper, faster, and have a higher allowance rate than utility
patent applications, but they typically cover a much more limited set of
Provisional utility patent applications provide the opportunity for lower-cost and less detailed initial patent filings. The provisional patent application is chiefly useful to lock in an initial filing date. If a nonprovisional patent application is filed within one year from the filing date of the provisional, the nonprovisional application can claim the filing date of the provisional. The earlier filing date is key, of course, when disputes arise over who patented something first.
In addition, the filing of a provisional application allows use of the term “patent pending” in connection with a product. A provisional application can be filed up to one year following an inventor’s public disclosure of the invention.
applications are not examined, so the only expenses are a relatively low filing
fee and fees of the patent attorney agent.
Often, they are used when an inventor is still working on all of the
details of an invention, and they can be abandoned if the invention does not
prove to be commercially viable.
application requires the title of the invention, the names of all inventors, a
written description of the invention and drawings illustrating the
invention. They should provide enough
detail so that someone of ordinary skill in the technology could be able to
make and use the invention. However,
they do not need to include patent claims and the practitioner does not need to
submit any prior art.
provisional application period cannot be extended. If the inventor is not able to file a
nonprovisional application within 12 months, the application is abandoned.
utility patent applications are the most detailed,
most expensive and most common types of patent applications. The application must include the title of the
invention, a listing of all inventors, a cross-reference to all related
applications, an abstract of the invention, one or more drawings showing the
invention, a description of the drawings, a section detailing the background of
the invention and a brief summary of the invention. Most importantly, the application must
include a section detailing the process of making and using the invention in
full, clear, concise and exact terms. This section should also distinguish the
invention from prior inventions. The
application must conclude with one or more claims that detail the precise scope
of the invention. Some of the claims can
be dependent claims, which refer back to other claims. Each claim technically covers a separate
application must also include an oath or declaration by the inventor, including
a statement that the inventor believes herself to be the original inventor or
an original joint inventor.
of a nonprovisional utility patent application, the patent attorney or agent
must submit all relevant prior art.
Failure to submit relevant prior art could render the patent
unenforceable if and when the patent is asserted in litigation.
Description and Claims
description of the invention must be sufficiently detailed so that any
person of ordinary skill in the pertinent art could make and use the invention
without extensive experimentation. Every claim must be fully supported in the
description requirement serves several policy objectives. The essential goal is
to clearly convey that an inventor has invented the claimed subject matter. Another objective is to clearly convey the
scope of the invention to the public. Further, the written description requirement
promotes the progress of arts and science by ensuring that inventors adequately
describe their inventions in exchange for the right to exclude others.
Because the patent claims define the scope of the
invention, and because any potential infringer is judged based on whether the
claims cover his product or process, the claims are the most important element
of the patent application. Patent claim
drafting is a difficult art to master.
Ideally, the claim language will be broad enough to cover as many
potential infringers as possible, but narrow enough to avoid rejection based on
For example, suppose your invention is a wine glass with a spring-loaded lid and timer designed to open after a predetermined amount of time so that the user does not drink wine too quickly. The skilled patent drafter could expand the invention to include other types of drinking vessels, other types of lids and various types of timers. Broad independent claims could cover drinking vessels in general and dependent claims could narrow the invention to specific types of containers.
In this case, independent claim 1 could claim a
drinking vessel with a lid. Dependent
claim 2 could claim a drinking vessel with a spring-loaded lid. Dependent claim 3 could claim a drinking
vessel with a spring-loaded lid where the drinking vessel is a wine glass. Dependent claim 4 could claim a drinking
vessel with a spring-loaded lid where the drinking vessel is a wine glass, and
where the spring-loaded lid is attached to a battery-powered time lock to open
at predetermined intervals. Dependent
claim 5 might cover a drinking vessel with a spring-loaded lid where the
drinking vessel is a beer mug. In actual
practice, each of these claims would be more detailed so that they were not
anticipated or rendered obvious by any prior art.
As this example shows, patent claims typically consist
of several phrases, called elements, which can be swapped in or out of the
various claims. The ability to create
these separate elements and combine them, making sure that they are adequately
covered in the written description and that they are not present in prior art
is one of the key facets of patent drafting.
Patent Process and Timing
after receiving the application, the Patent Office will provide an initial
response, which often includes several bases for rejecting the
application. Typical reasons for
rejections include an inadequate written description and claims that are
anticipated or rendered obvious by the prior art and inadequate drawings. The patent attorney or agent then has an
opportunity to submit amendments. This
back-and-forth can go on for years, depending on the type of examination and
the number of Patent Office rejections.
The Patent Office
fees differ based on the size of the entity filing the application and on
whether the applicant wants a prioritized or accelerated examination.
In September 2011, the America Invents Act
changed our patent system from “first to invent” to a “first to file” system. The “first to file” system means that the
first inventor who files a patent application is entitled to priority,
regardless of who conceived the invention first. Under the previous “first to invent” system,
priority went to the inventor who first conceived and reduced the invention to
conception and reduction to practice could occur in a private lab. Thus, inventors often claimed that they were the
first to invent even when not the first to file. The Patent Office then had to
hold hearings and review evidence regarding the date of conception and
reduction to practice. The “first to file” system provides a much brighter
line, and it brings the United States in conformity with the rest of the world
in this regard.
Patents generally last 20 years from the application
date, provided the patent holder continues to pay the required maintenance
fees during the term. Maintenance
fees are due at approximately 3 ½, 7 ½ and 11 ½ years following the issue date. The fees differ based on the size of the
entity that owns the patent and based on the length of time that the patent has
existed. They range from $400 - $1600 for the first payment to up to about
$7,500 for the final payment.
Skilled patent attorneys and agents can have one
patent application branch into multiple related applications, extending the
scope of patent protection and effectively extending the life of the patent
family well beyond the 20-year term. The branching patent applications are
generally referred to as continuing applications, and they take several
forms, including continuations, continuations-in-part, divisionals and reissue
Continuation applications comprise an important part
of intellectual property strategy. They allow inventors to obtain multiple
patents on distinct but related inventions.
Continuations can be used to expand the scope of patent protection, to
target competitors’ products, to create
uncertainty among competitors regarding the precise scope of patent protection,
to modify patents when the law is in flux and to react to newly discovered
prior art. In addition, when a patent is sold or licensed, the existence of a
continuation application can greatly enhance the value of the patent.
When a nonprovisional patent application is still pending in the Patent Office, the patent agent or attorney can file a continuation application with a new set of claims. The continuation application can change the claims but cannot include anything that would constitute new matter if inserted in the original application. Thus, the claims must be supported by the original description. The benefit of a continuation application is that it can expand the scope of patent protection and still benefit from the filing date of the original application.
Thus, if Inventor Y files an application claiming the same invention after the date of the Inventor X’s original application but before the date of the continuation, Inventor X still has priority. Similarly, if Company Z markets a similar product during this time period, that product does not become invalidating prior art to Inventor X’s patent. Indeed, continuations can be used offensively, with claims specifically crafted to cover Company Z’s product.
A continuation-in-part application can disclose subject matter not disclosed in the parent application. However, any claims based on the new subject matter are not entitled to the filing date of the continuation application. Continuations-in-part allow inventors to submit enhancements and improvements that are built upon their earlier inventions. The downside is that statements made in prosecuting the original patent application can be used against the inventor in prosecuting a continuation-in-part. Regardless, they remain important tools.
Each patent application can cover only one group of
inventions that form a single inventive concept. If the patent examiner thinks that a patent
application covers multiple, different inventions, she can issue a restriction
requirement. The patent attorney or agent can then file a divisional
application. In this, no new matter
can be added to the new application, but the claims can be directed to a
different inventive concept. The later-filed divisional application claims
priority to the earlier parent application.
Whenever any patent is deemed inoperative or invalid,
because of a defective specification or drawing or because the inventor claimed
more or less than he had the right to claim, the inventor can apply for a
reissued patent. The reissue application cannot include
any new matter. In addition, the scope
of the claims cannot be enlarged unless the reissue application is filed less
than two years from the grant of the original patent. However, broadening a
reissue patent cannot recapture any subject matter that was specifically
disclaimed during patent prosecution.
Reissue patent applications allow the inventor to
correct a wide variety of errors. For
example, if the claims of the original patent were disclosed in previously
unknown prior art, the inventor can apply for a reissue patent that avoids the
prior art. Also, the reissue patent can
correct typographical errors in a patent’s specification, drawings or claim
language. The reissue can also fix an
incorrect listing of inventors, or inadvertent procedural errors made by the
patentee during patent prosecution.
Reissue patents do have some drawbacks. Any changes to claims in a reissue
application can create “intervening rights” on the part of potential infringers
who infringe the claims between the issue dates of the original and reissue
patents. This means that the infringer
has the right to practice anything that was not specifically claimed in the
In our next module, we’ll focus more on the procedural
aspects of the patent processes and proceedings.
 35 USC 112.
 In re Barker, 559 F.2d 588, 592 n.4, 194 USPQ 470, 473 n.4 (CCPA 1977)
 Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed. Cir. 1997),
 37 CFR 1.78
 35 USC 120
 37 CFR 1.53; https://bitlaw.com/source/mpep/201_08.html
 37 CFR 1.53; https://bitlaw.com/source/mpep/201_06.html
 35 USC 251