This purpose of this article is to provide general information to readers who may be considering patenting their inventions, or who otherwise have an interest in the subject of patents.

When a client contacts me about protecting their invention, the first thing that I normally recommend is a patent search.  For this I need a description of the invention, drawings or a model if they have one, and my fee.  I tell them that I am required to keep confidential everything that they disclose to me.  While other patent attorneys may outsource the patent search, I generally do it myself at the headquarters of the U.S. Patent & Trademark Office (“PTO”), which is across the street from my office. 

I begin the search by looking through the Patent Classification System for classes and subclasses related to the invention.  If it is not an area where I have done much searching in the past, I will call a Patent Examiner who works in the area for advice on where to search.  (The Patent Examiners are employees of the PTO, and they are required to keep what is disclosed to them confidential.)  I then walk over to the PTO to do the search. 

When I started doing patent searches at the PTO, the patents were on paper, in boxes called “shoes” on dusty shelves.  (According to legend, they were called shoes because Thomas Jefferson, who when he was Secretary of State was the first head of the Patent Office, keep patent applications in shoe boxes under his bed.)  The patents in the PTO are now all on computer.  There is just one row of shelves of Plant Patents that are kept on paper (including one that I wrote myself for a client) because they are in color.  (There are not very many Plant Patents, so they can be kept in one short row of shelves.)  All the rest of the paper patents have been placed in storage in a warehouse away from the PTO.  There are computers in the PTO that can be used by the public free of charge to search patent and trademarks (though the PTO does charge to print copies).  You may also search patents and trademarks though the PTO website on the Internet, but this is not as fast as using the computers in the PTO.  My experience has been that it takes less time to search patents on computer than on paper, but as the number of patents to be searched continually increases, the process is not necessarily shorter.

I printout the most relevant patents that I find.  I may also search for non-patent prior art on the Internet.  I then write a search report of several pages, briefly summarizing the most relevant patents and their differences (if any) from my client’s invention, and give the client my opinion about whether or not their invention can be patented.  I then have the search report and the copies of the patents or other prior art bound together and mailed to my client.  (I may also e-mail it to them, if they want it right away.)

If the client decides that they want to apply for a patent, I then prepare a patent application. I usually begin by writing the claims.  The claims are the most important part of a patent application (or issued patent) because they define the “metes and bounds” of the patented invention.  The purpose of the rest of the patent application is to support the claims. There are peculiar grammatical rules that the PTO applies only to claims.  The number of claims may range from one to one hundred or more, but there is an extra fee charged by the PTO for claims beyond the first twenty.  Each claim must be written as a single sentence (which may be a very long sentence). Each claim begins with a preamble, e.g., “The widget, comprising:”  Each part of the invention (or “limitation”) must be preceded by “a” or “an” the first time it is mentioned, e.g., “a gear”.  When the part is referred to again, it must be preceded by “the” or “said”, e.g., “the gear”.  There are many other rules that must be followed for the claims to be accepted as being in proper form.  A claim that stands by itself is called an independent claim.  Claims that incorporate the limitations of other claims, and add new limitations, are called dependent claims, and begin with a preamble such as, “The widget according to claim 1, further comprising:”  There may be chains of claims, each depending on one before, which depends on one before it, and so on.

Other parts of a patent application include the specification, drawings, abstract, and inventor’s declaration.  The specification begins with a reference to previous patent applications for the same invention (if any), and usually includes a discussion of the prior art, a summary of the invention, the objects (purposes) of the invention, a brief description of the drawings, and a detailed description of the invention.  Drawings are usually included in the application, but are not always required.  The drawings are normally in the form of black lines on a white background, with perhaps some shading or hatching.  Parts of the invention are labeled by reference numbers in the drawings, which are explained in the detailed description.  The abstract is a brief summary of the invention, limited to 150 words, that is placed on the front page of the issued patent, and is mainly useful to patent searchers.  The inventor’s declaration states that he or she has read the application, and is the (or an) inventor of its subject matter.  (There may be, and often are, two or more inventors, each of whom is required to sign a declaration, unless an exception applies.)  Unless the inventor is pro se, he or she must also sign a power of attorney, giving a registered patent attorney or agent the authority to represent them before the PTO.  Employees of companies are normally required by contract to assign their inventions to their employer.  An assignment may be filed with the patent application.  An issued patent will be essentially the patent application, as amended during the examination process.  You may find examples of patents on my website at swift.law.pro or on the PTO’s website at uspto.gov.

When I began practicing patent law, all patent applications were filed on paper.  The paper had to be mailed or delivered to the PTO.  Now, most patent applications are filed electronically.  (The PTO discourages the filing of paper patent applications by charging an extra fee for paper filing.)  Filing fees are paid when the application is filed, by credit or debit card, direct debit from a bank account, or from a deposit account with the PTO.  (Paper filers may still pay by check or money order.)  An acknowledgment of filing is provided immediately upon electronic filing (or within a few days after paper filing, if a self-addressed stamped postcard is attached to the patent application). 

After a patent application is filed, the Office of Initial Patent Examination in the PTO will examine it as to form, making sure that all the required parts are present.  (If they are not, a notice will be sent to the applicant or his or her representative.)  It will then be assigned to an “Art Unit”, a group of patent examiners working in a particular area of technology, and to an individual patent examiner.  Due to the backlog in the PTO, it will usually be a year or two (or more) before the patent examiner begins examining the application.  He or she will do a more thorough review of the application as to form.  The patent examiner will do his or her own patent search, to determine whether or not the claims “read on the prior art”.  [Some naïve inventors sometimes ask why they should pay their patent attorney to do a search before preparing a patent application, when the examiner will do his own search later on.  The answer is that it costs less to pay the patent attorney (or another searcher) to do the patent search than it costs to pay the patent attorney to prepare the application, and the search will help the patent attorney know how to write the application so that its claims do not read on the prior art.] 

A claim reads on the prior art if every limitation (or “element”) in the claim (including any limitations in the claims that it depends from) is in the prior art, or is an obvious modification of the prior art.  Prior art includes issued patents, published patent applications, other printed publications, or (under new legislation called the “America Invents Act”) any disclosure to the public, anywhere in the world.  If none of the claims read on the prior art, and the patent examiner does not find anything else wrong with the application, the examiner will issue an Office action allowing the application.  (However, patent applications are allowed on the first Office action only about ten percent of the time.  The examiner usually finds something to object to, no matter how competent the patent attorney who wrote the application may be.  The examiners are encouraged to do this by the PTO’s “count” system, which makes it harder for them to meet their quota if they allow an application on the first Office action.) 

Patent applications are required by law to be kept confidential by the PTO until they are issued as patents or published by the PTO.  Publication normally takes place 18 months after filing, while patents are usually not issued (if they are issued) until two or three years or more after filing.  Applicants can request that their applications not be published before they are issued, but in order to do this they have to sign a statement that they will not apply for foreign patents!  (This provision is mainly useful to independent inventors, who cannot afford foreign patents anyway.)  Applicants can also request early publication.  Applications that are abandoned before 18 months will not be published, if not published earlier. 

If an Office action does not allow the application, then a written response must be filed, which will usually include an amendment to the claims.  The specification and/or drawings may also be amended, if there are objections to them.  A rejection of a claim may be “traversed”, without amending the claim, if the applicant (or his representative) believes that the rejection was incorrect, and submits an argument explaining why it is incorrect.  An interview with the patent examiner may also be requested.  The interview may either be in person or by telephone.  They interview may be attended by the inventor, his representative, or both.  (To represent clients in patent cases before the PTO, one must be registered as a patent attorney or patent agent.)

A second Office action which does not allow the application will normally be made “final”.  However, the applicant may continue prosecution of the patent application by filing a Request for Continued Prosecution, a Continuation or Continuation-In-Part, or an appeal to the Patent Trial and Appeal Board, for all of which additional filing fees are required.  (The process of applying for patents and responding to Office actions is called “patent prosecution”.  “Final” means that prosecution cannot continue without the payment of more fees.) 

If an Office action allows the application, then the issue fee must be paid, and the patent will then be issued by the PTO.  Maintenance fees must then be paid at three and a half years, seven and a half years, and eleven and a half years after the date the patent is issued.  (With the payment of a surcharge, these periods can be extended by six months to four, eight and twelve years after issue.)  If the maintenance fees are paid, then the patent will normally expire twenty years after the date that the patent application was filed. 

A U.S. patent gives its owner the exclusive right to make, use or sell the invention in the United States of America, or to import it into the U.S.A.  Patents issued by other countries likewise apply only in the country that issues them.  (Generally speaking, patents are not enforceable on the high seas, in outer space, or in Antarctica.)  Patents and copyrights are provided for by the clause in the U.S. Constitution that states, “The Congress shall have Power . . . to Promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”  (In the eighteenth century language of the Constitution, “Science” means knowledge in general, “useful Arts” means what we would today call “technology”, and “Discoveries” means “inventions”.  Thus, the words “Science”, “Authors” and “Writings” refer to copyrights, and the words “useful Arts”, “Inventors” and “Discoveries” refer to patents.  The Constitution does not actually contain the words patent or copyright, even though it provides for them.)

The foregoing applies to utility patents.  (Most patents are utility patents.)  There are two other types of patents issued by the PTO: design patents and plant patents.  The procedures for them are generally the same as for utility patents, with the exceptions noted.

Design patents protect the ornamental features of a useful article.  There is only a brief specification.  There is only one claim, which reads, “The ornamental design for _________ as shown.”  Drawings are always required, and are the most important part of a design patent.  A design patent is infringed by making, using, selling or importing an article that looks like the drawings.  Design patent applications are not published by the PTO before they are issued.  Design patents expire fourteen years after they are issued.  No maintenance fees are required for design patents.  Design patents may protect things that cannot be protected by copyrights, because the design does not have to be distinct from the useful article.  Design patents may provide stronger protection than copyrights, because the doctrine of equivalents applies to them (as it does to other patents), and independent creation is not a defense (as it is in copyrights). 

Plant patents protect asexually reproduced plants.  Tubers are not covered.  (There is a separate Plant Variety Protection Act that protects sexually reproduced plants, and it is administered by the Department of Agriculture, not by the PTO.)  It must be a plant that was cultivated by humans, not a plant that was found in the wild.  A detailed description of the plant and its scientific name are required.  Color drawings (paintings or photographs) are required.  Plant patents are published the same as utility patents, and have the same term as utility patents.  No maintenance fees are required for plant patents. 

 A provisional patent application may be filed without any claims.  However, it must be followed up within one year by a regular utility patent application, or it is abandoned.  (There are no provisional design or plant patent applications.)  The advantage of a provisional patent application is that it gives the applicant priority from the filing date of provisional patent application, if it is not abandoned.  In other words, if Inventor A files a provisional patent application on July 1, 2013, and then files a regular patent application on July 1, 2014 for the same invention, while Inventor B files only a regular patent application on January 1, 2014 for the same invention, then Inventor A will get the patent, even though Inventor B filed a regular patent application first.  Under the America Invents Act, the first inventor to file gets the patent. 

 Under the Paris Convention for the Protection of Industrial Property, if you file a utility patent application in one country, and you then file a utility patent application in another country for the same invention within one year, you have priority from the date of the first application.  Under the Patent Cooperation Treaty, you have the alternative of filing an International [Patent] Application within one year of the first application, which then gives you up to thirty months to file patent applications in countries that have ratified the Treaty.  The first application may be either a provisional or a regular application.