Patent Persecution
Despite its name, patent prosecution does not involve criminal law, and patent prosecutors do not necessarily appear before a trial court. Patent prosecution instead refers to the process of preparing and filing a patent application and thereafter interacting with the USPTO to obtain a patent. Each of these processes is discussed in turn below.
A. Types of Patents
In the United States, patents can be one of three types: plant, design, and utility. Plant patents are the least common and protect new, distinct asexually reproduced plant varieties. Design patents are also less common and protect the appearance of the invention (for example, the design of a classic Coca-Cola bottle). Utility patents are the most common type of patent and protect the functional aspects of the invention. There are two types of utility patent applications: provisional applications and non-provisional applications. Provisional patent applications terminate one year after filing unless they are converted into a non-provisional application. Provisional applications are not examined by the USPTO and do not become an official, issued patent unless they are converted to a non-provisional patent within one year from the filing date of the provisional application. Non-provisional patent applications are examined by the USPTO and, if issued, have a term of 20 years from the earliest priority date. In the United States, many inventions are initially filed as provisional applications or as utility applications. Whether one or the other is a superior option depends on both business and patent strategy considerations.
B. Preparing and Filing a Patent Application
The first step toward obtaining a patent is to identify an invention, whether newly developed or existing and unrecognized. To drive the development of new inventions, many organizations find it useful to use incentive programs that reward employees for documenting and submitting innovative developments. Other potentially useful ways to encourage the development of new inventions include directly soliciting personnel for ideas and scheduling regular brainstorming sessions to resolve specific technical problems and obstacles relevant to an organization's business objectives. In addition, skilled personnel can be interviewed periodically about the problems and obstacles they have encountered and how these problems and obstacles were addressed.
After an invention is identified and an organization determines that the invention is potentially new and commercially significant, the organization typically instructs a patent professional to prepare an initial application for the invention. The preparation of the initial application is typically the most important part of the overall patent process. In most cases, an initial application serves as a foundation for all future patent protection for an invention. If an initial application is incorrect, incomplete, inconsistent with applicable legal standards, or otherwise flawed, patent rights that arise from the initial application and its prodigy are more likely to be weak, even if the underlying invention deserves strong protection. Accordingly, the details of an initial application are typically left to the expertise of a patent professional. It is common, however, for a patent professional and an owner of an invention to collaborate when deciding on a filing strategy for an invention.
An application can initially be filed as a provisional or non-provisional application. A filing strategy that relies on an initial provisional application (i.e., a "provisional-first strategy") is often preferable to a filing strategy that relies on an initial utility application (i.e., a "utility-first strategy") when an invention is still under development. Compared to a utility-first strategy, a provisional-first strategy tends to be more amenable to supplementing or modifying the invention after the initial application has been filed. Furthermore, a provisional-first strategy defers patent term in the United States by up to one year. This can be advantageous when backend patent term is more commercially important than frontend patent term. A utility-first strategy usually leads to a patent being granted faster than a provisional-first strategy. Therefore, a utility-first strategy may be superior to a provisional-first strategy when an invention is fully developed and there is value in obtaining a patent quickly. Utility applications have greater formal requirements and higher filing fees than provisional applications, but should not be construed as superior to provisional applications. In general, the implications of quality are the same for both provisional and utility applications. Accordingly, many patent professionals do not let the selection of filing strategy influence how an application is prepared.
C. Examination by the USPTO
Once the patent application is filed with the USPTO, the USPTO assigns an examiner to the patent application based on the type of technology disclosed in the patent. To obtain a granted patent, at least one of the claims must: (1) cover patentable subject matter, (2) have utility, and (3) be novel and non-obvious. Most claims usually meet the first two requirements, but novelty and non-obviousness are more difficult and the bulk of the examination process is normally spent addressing these two requirements.
To determine whether a claim is novel or non-obvious, the examiner compares the claim to prior art. To be novel, an invention set forth in a claim must be different in some way from what is described in a single reference of the prior art. The standard for non-obvious is whether persons working in the relevant technology would have found the claimed combination of features to be obvious when the patent application was filed.
During examination, the examiner will normally take one of the following actions: (1) allow all of the claims (not common), (2) allow some claims and reject other claims (also not common), or (3) reject all of the claims (most common). The examiner sends an official decision (known as an "Office Action") to the patent applicant (or the patent applicant's attorney), which normally occurs 1-2 years after filing the application. In the most common scenario where the examiner has rejected all of the claims, the applicant can leave the claims in their original form and argue that the examiner's rejections should be withdrawn if the examiner has made an error. Alternatively, the patent applicant can change the claims to overcome the examiner's rejections. This process can be repeated several times until the applicant convinces the examiner to allow at least one claim or abandons the application. If the applicant does not respond within the time permitted, the application will go abandoned.
If at any point during prosecution the examiner determines that all of the claims are patentable, the examiner will issue a "Notice of Allowance." The applicant then pays the issue fee within three months, and the USPTO will issue the patent. On average, most patents issue three to five years after filing. The issue date represents the first date on or after which the patent owner can enforce the patent in U.S. District Court.
A. Types of Patents
In the United States, patents can be one of three types: plant, design, and utility. Plant patents are the least common and protect new, distinct asexually reproduced plant varieties. Design patents are also less common and protect the appearance of the invention (for example, the design of a classic Coca-Cola bottle). Utility patents are the most common type of patent and protect the functional aspects of the invention. There are two types of utility patent applications: provisional applications and non-provisional applications. Provisional patent applications terminate one year after filing unless they are converted into a non-provisional application. Provisional applications are not examined by the USPTO and do not become an official, issued patent unless they are converted to a non-provisional patent within one year from the filing date of the provisional application. Non-provisional patent applications are examined by the USPTO and, if issued, have a term of 20 years from the earliest priority date. In the United States, many inventions are initially filed as provisional applications or as utility applications. Whether one or the other is a superior option depends on both business and patent strategy considerations.
B. Preparing and Filing a Patent Application
The first step toward obtaining a patent is to identify an invention, whether newly developed or existing and unrecognized. To drive the development of new inventions, many organizations find it useful to use incentive programs that reward employees for documenting and submitting innovative developments. Other potentially useful ways to encourage the development of new inventions include directly soliciting personnel for ideas and scheduling regular brainstorming sessions to resolve specific technical problems and obstacles relevant to an organization's business objectives. In addition, skilled personnel can be interviewed periodically about the problems and obstacles they have encountered and how these problems and obstacles were addressed.
After an invention is identified and an organization determines that the invention is potentially new and commercially significant, the organization typically instructs a patent professional to prepare an initial application for the invention. The preparation of the initial application is typically the most important part of the overall patent process. In most cases, an initial application serves as a foundation for all future patent protection for an invention. If an initial application is incorrect, incomplete, inconsistent with applicable legal standards, or otherwise flawed, patent rights that arise from the initial application and its prodigy are more likely to be weak, even if the underlying invention deserves strong protection. Accordingly, the details of an initial application are typically left to the expertise of a patent professional. It is common, however, for a patent professional and an owner of an invention to collaborate when deciding on a filing strategy for an invention.
An application can initially be filed as a provisional or non-provisional application. A filing strategy that relies on an initial provisional application (i.e., a "provisional-first strategy") is often preferable to a filing strategy that relies on an initial utility application (i.e., a "utility-first strategy") when an invention is still under development. Compared to a utility-first strategy, a provisional-first strategy tends to be more amenable to supplementing or modifying the invention after the initial application has been filed. Furthermore, a provisional-first strategy defers patent term in the United States by up to one year. This can be advantageous when backend patent term is more commercially important than frontend patent term. A utility-first strategy usually leads to a patent being granted faster than a provisional-first strategy. Therefore, a utility-first strategy may be superior to a provisional-first strategy when an invention is fully developed and there is value in obtaining a patent quickly. Utility applications have greater formal requirements and higher filing fees than provisional applications, but should not be construed as superior to provisional applications. In general, the implications of quality are the same for both provisional and utility applications. Accordingly, many patent professionals do not let the selection of filing strategy influence how an application is prepared.
C. Examination by the USPTO
Once the patent application is filed with the USPTO, the USPTO assigns an examiner to the patent application based on the type of technology disclosed in the patent. To obtain a granted patent, at least one of the claims must: (1) cover patentable subject matter, (2) have utility, and (3) be novel and non-obvious. Most claims usually meet the first two requirements, but novelty and non-obviousness are more difficult and the bulk of the examination process is normally spent addressing these two requirements.
To determine whether a claim is novel or non-obvious, the examiner compares the claim to prior art. To be novel, an invention set forth in a claim must be different in some way from what is described in a single reference of the prior art. The standard for non-obvious is whether persons working in the relevant technology would have found the claimed combination of features to be obvious when the patent application was filed.
During examination, the examiner will normally take one of the following actions: (1) allow all of the claims (not common), (2) allow some claims and reject other claims (also not common), or (3) reject all of the claims (most common). The examiner sends an official decision (known as an "Office Action") to the patent applicant (or the patent applicant's attorney), which normally occurs 1-2 years after filing the application. In the most common scenario where the examiner has rejected all of the claims, the applicant can leave the claims in their original form and argue that the examiner's rejections should be withdrawn if the examiner has made an error. Alternatively, the patent applicant can change the claims to overcome the examiner's rejections. This process can be repeated several times until the applicant convinces the examiner to allow at least one claim or abandons the application. If the applicant does not respond within the time permitted, the application will go abandoned.
If at any point during prosecution the examiner determines that all of the claims are patentable, the examiner will issue a "Notice of Allowance." The applicant then pays the issue fee within three months, and the USPTO will issue the patent. On average, most patents issue three to five years after filing. The issue date represents the first date on or after which the patent owner can enforce the patent in U.S. District Court.