Defining the Invention
The patent attorney's first step when an inventor has an invention he or she wants to patent, is to develop a disclosure of the invention. Any documentation of the invention, together with drawings, if available, are gathered together along with the history of how the invention was developed and how it is different from what currently exists in the field. This can be done during a phone conference or an in-person discussion with the inventor.
Conducting a Search
Once the patent attorney understands the field of the invention and what the invention is, the next step is to conduct a limited prior art search. In a prior art search, prior publications and patent applications are searched to determine what information concerning the field of this invention exists.
One of the reasons for conducting a prior art search is to decide whether to go ahead with a patent application. Prior art searches are important because, while an inventor wants to get the broadest protection possible for the invention, the inventor cannot claim protection for an invention that is
described in or obvious in view of information disclosed in prior patents and publications. Based on the information disclosed by the inventor about the idea or invention, the patent attorney interprets the results of the prior art search and provides a written summary to the inventor. The inventor can then use this information to make the decision of whether to file a patent application.
Another reason for conducting a prior art search is to use that information to prepare a better patent application. If the results of the prior art search indicate that the invention may be considered new or not obvious, the patent practitioner uses any prior art or publications discovered in the search, along
with the invention disclosure, to write the patent application.
Writing the Patent Application
If the client decides to go ahead with a patent application, the next step is for the patent attorney to begin writing the patent application. The patent application contains, at a minimum, a brief history of the field of the invention, the problem solved by the current invention and its uniqueness, one or more
drawings of the invention, a detailed description of the invention and the drawings, and the patent claims which define the boundaries of the intellectual property the client is seeking to protect.
A draft of the patent application is prepared and then reviewed with the inventor, any necessary changes are made and the application is put into final form. The rough drawings, initially provided by the inventor, are changed and refined by the patent attorney to meet the Patent Office criteria, and are sent to be professionally drafted.
Filing the Patent Application
In addition to the parts of the patent application listed above, a declaration or oath by the inventor, a power of attorney, invention assignments and assignment recordation, small entity declaration ( if the client qualifies as a small entity) and information disclosure statement along with a check for the filing fee are usually included with the application. As soon as the patent application is filed, the inventor may mark "Patent Pending" on the invention. This serves as notice to others that a patent application has been filed. Applications for a patent are made to PTO in Washington, D.C.
Examining the Patent in the Patent and Trademark Office
The PTO examines each application to determine whether the claimed invention should be issued a patent. The claimed invention must first be statutory, which means that the subject matter falls under the patent statute. For example, the claimed invention cannot simply be a law of nature or a mathematical algorithm that describes a law of nature.
After the PTO determines that the invention is indeed subject matter that is covered by the patent statute, the invention is then examined to determine that it is novel (not exactly the same as another invention), non-obvious (not an obvious variation of another invention), useful (has a practical application), and adequately disclosed in the patent application. When a patent application is filed in the PTO, a patent examiner determines these issues regarding patentability. The examiner looks at prior art and publications to determine if the novelty and non-obviousness standards are met. In addition, the examiner will attempt to determine from information provided in the patent application whether there are any other bars to patentability, such as a disclosure by the inventor to the public or a sale or offer for sale of the invention more than one year prior to the filing date of the patent application.
Before the patent is granted, the PTO examiner will usually send at least one office action to the patent attorney asking for clarifications, explanations or changes in the patent application. Any issues of novelty or non-obviousness raised by the examiner must be addressed. The patent attorney responds to these office actions within the time period specified in the office action by the examiner. The patent attorney and the client may choose to make changes (called amendments) to the patent application based on the examiner's office action; may choose to make no changes and point out to the examiner the reasons why the application should be granted as written; or some combination of the above.
Assuming the PTO requirements for patentability are met, the PTO sends a Notice of Allowance, which means that the patent application is ready to be granted. When the applicant pays the issue fee, the patent then issues. The total time period for the examination process within the PTO varies, ranging
from one year to several years.
The Strength of the Patent
After a patent issues, its validity or scope may be challenged as part of an infringement action by or against another party. If this occurs, one of the steps that occurs is called a "Markman hearing". At that hearing, the scope of the claims are interpreted (called "claim construction"). The court interpreting the
claims first looks at the "intrinsic" evidence, that is within the four corners of the patent document itself. This is one reason that what is contained within the patent application and ultimately in the patent itself is so important and must be well understood by the patent attorney.
After interpreting the patent document itself, if necessary, the court then looks to "extrinsic" evidence, evidence outside the patent. Any changes to the patent application during the examination process become part of the "prosecution history" of the patent when it is issued and may be considered to be extrinsic evidence. If the validity or scope of the issued patent is later challenged, this prosecution history in the patent office may become especially important in deciding the outcome. Therefore, it is important that care be taken in making any changes to the patent application and that statements made in amendments and responses to the examiner's office actions be carefully worded to convey the correct reasons why any changes were made or why the examiner's comments in an office action are incorrect.