The Patent Application Process
Enabling the Invention:
Quid pro quo:
Going through the process of obtaining a patent from the PTO.
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:
In addition to initial application filing fees, fess are required for reexamination and other procedures authorized by the provision above. More information can be found at: http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_17.htm#cfr37s1.17
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
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, 2005, Deborah files a provisional application for her invention, the Sage-O-Meter.” On May 4, 2006 she files a nonprovisional application for the product. If a patent is granted, it will expire 20 years from the 2006 filing, but the 2005 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:
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, 2006. 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.
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-Matic.
The Transition Phrase
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-Matic.
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-Matic 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.
A dog locating device comprising:
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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