Patent Process

Have you ever wondered what the patent process looks like from the inventor's perspective ?

The first thing that happens is the inventor conceives a new idea for a process, machine, article of manufacture, composition of matter, plant, or ornamental design.  In the best case, though not necessarily always, they then proceed to build a working model, or to otherwise constructively reduce the invention to practice. 

Sometime during the process it occurs to the inventor, as most are driven by economic considerations, that if they were to sell products which embrace their invention either in whole or in part, then others would be very likely to copy their invention.  Often, inventors come to the conclusion that by obtaining a patent, they may be afforded a legal remedy by which they can stop others from copying their idea, and hence prevent others from reaping where they have not sewn.

So the inventor writes up, files, and prosecutes a patent application and is awarded a patent on her invention.  She then uses the patent to stop others from making, using, or selling her invention or articles embodying the same.  Simple.  Right ?

Wrong.  Patent prosecution is a relatively complex matter, and most inventors are not well versed in it.  Accordingly, most inventors seek out the help of an experienced Patent Agent or Patent Attorney (hereinafter collectively referred to as "patent practitioner").

So, our inventor friend seeks out and locates the best patent practitioner in the world.  The inventor discloses her invention to the practitioner in such full, clear, and concise detail as to enable the practitioner or anyone else to make and/or use the invention.  The inventor and practitioner come to agreement on a fee amount, schedule, etc., and the ball is rolling.

The first thing done is a search of what has been invented, for two reasons.  First, the inventor and practitioner need to know if the idea is in fact new and not obvious, as being new and not obvious are requirements for patentability.  In the event that the idea seems to be new and not obvious, an assessment is made as to what breadth of coverage is likely to be allowed by the Patent Office.  If the breadth of coverage seems enough to afford the inventor a business advantage which would justify the cost of filing the patent, then the inventor may decide to have the practitioner go ahead and write up a patent application for the invention.  (If the coverage is marginal, or if only a miniscule portion of the invention is truly new such that the likely allowable claim breadth would not afford much of a business advantage, the inventor may elect to skip the whole patent idea, and just make and sell the gadgets.)  Patent searchers typically cost between about $ 500 and $ 1200 for the US only, depending upon the nature of the art to which the invention pertains, its complexity, and who is doing the search.

So, the practitioner has been paid (usually between $ 1200 and $ 6000) and proceeds to write an application on the invention.   This takes between about 2 and 60 days depending on the practitioner hired and the complexity of the subject matter.  The practitioner usually has a draftsperson as an aide who is knowledgeable regarding drawings necessary, and who handles the creation of formal drawings for the invention (typically between $ 175 and $ 400 per case).  Once the application is prepared, it is filed with the patent office in Washington (filing fee = $ 380).  Then the waiting period begins.

After filing, assuming all required parts of the application were sent in properly, the application gets docketed with a patent examiner.   The examiner, upon coming to our inventor's case, will read the application and then do a patent search in the patent offices files.  The Examiner does the search to make certain that the applicant does not seek to claim subject matter which is already in the public domain, for such would be inequitable.  In the event that the claims in the application meet all requirements of law and procedure, the application will be approved and the applicant will be permitted to pay the issue fee ($605), and the patent will come out in about 4 months.  More typically, however, some or all of the claims in most pending applications are rejected by the Patent Examiner.  In rejecting the claims of the application, the Examiner will usually rely upon two sections of statutes: title 35 of the United States Code, § 102, and title 35 of the United States Code, § 103.  These rejections are known as anticipation-type rejections and obviousness-type rejections.  The patent examiner then sends either a rejection or a notice of allowability to the practitioner at a time between about 4 months and 18 months from the date on which the application was filed.

After the practitioner receives a rejection of some or all of the claims from the Patent Examiner, he will amend the claims of the inventors application, usually narrowing the claims just enough to obviate the rejections cited by the Examiner and thus providing the inventor with as broad of claim coverage as possible. 

In some instances, Patent Examiners are wrong about the rejections they make, and being mere mortals, make errors on occasion.   Accordingly, a practitioner's response to a rejection by the patent office may not be an amendment to the claims which narrows their scope, but may consist only of arguments directed at the Patent Examiner as to why the Patent Examiner is wrong.  (This is where tact comes in !) 

Regardless of whether the response by the practitioner consists of arguments only, claim amendments only, or some combination of these, the practitioner next submits the arguments and/or amendments back to the Examiner for reconsideration.  Such re-submission does not result in any fee due to the government, but costs the inventor the money which the practitioner charges for his time in preparing the response, (which is typically between about $ 350 and $ 1000, depending on the nature and complexity of the rejection and on what the practitioner charges).

The Examiner then reconsiders the application in view of the amendments and arguments presented.  If it appears that the practitioner has overcome all of the rejections, then the Examiner may allow the application to be issued as a patent (applicant must pay $ 605 issue fee).  If certain circumstances exist, such as, for one, a new grounds of rejection being necessitated by the practitioner's response, the Examiner may issue a FINAL REJECTION of the application.   This is not as bad as it sounds.  At this point, the Applicant may either take the case to appeal before the Board of Patent Appeals and Interferences, or they may make further amendments to the case and file it as a continuing application under several procedural options, depending upon the facts existing in the case at the timer.  The applicant must pay a new filing fee of $ 380 to the government, and transmittal fees, which are ordinarily nominal, to the practitioner.  Often, Applicants find it helpful to file what is known as a Continuing Prosecution Application, which allows for further claim amendments by the Applicant as a matter of right.

Usually, applicants know where the patent office stands with regards to the patentability of their invention by the time they get the second response back from the patent office (after the patent office reconsidered the application, including amendments and/or arguments).  We usually know whether we are going to get a patent or not, based on what the Examiner has brought to light.  On occasion, the second response from the patent office is not a FINAL REJECTION, and the Applicant is permitted to once again amend/argue the patentability of the case (costing the inventor once again between $ 350 and $ 1000 depending on the complexity of the rejection, and the individual practitioner).  These fees that the inventor pays to the practitioner for responding to Patent Office rejections and other communications are collectively referred to as "prosecution fees".

Once the prosecution is over before the Examiner, the case is either allowed to issue,  it goes to appeals, or the Applicant can re-file again.  If the Applicant loses the appeal, she can sue the Commissioner of Patents and Trademarks in the District Court for Washington DC to have her patent allowed, or else take it to the court of Appeals for the federal circuit.  If the DC district court finds against her, she can go to the court of appeals for the federal circuit.   If the court of appeals for the federal circuit finds against her, she can go all the way to the Supreme Court, as in the case of US v. Chakrabarty (I think it was Dow or DuPont who wanted to patent a genetically-engineered microorganism useful in cleaning up oil spills, and they ultimately won, even though it took about 10 years !)

Typically, most patents are issued between about 1 1/2 and 3 1/2 years from the filing date of the application, with 28 months being common.

There you have it. Christopher J. Whewell

Christopher J. Whewell is a registered patent agent and is fully capable of helping you with your patent needs, for further advice on this subject please contact him at the following link. It is not the best looking site in the world but he is way too busy to worry about that. http://www.patentsearcher.com