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To obtain a patent, first a patent application needs to be written. The patent application is
required to describe how to make and use the invention. The description must be clear how to
make and use the invention without undue experimentation. At the end of the application are
claims, which define the breadth of coverage that applicant seeks.
After the application is written, it is filed with the Patent and Trademark Office. Within about
three months, the Patent and Trademark Office sends a filing receipt, which includes a foreign
filing licence giving the Applicant permission to file the patent application in another country.
However, despite the foreign filing licence it is possible that another government agency
prohibits exporting the technology associated with the patent application to another country.
Depending upon the art area into which the application is classified, about a year and a half
after filing the application an Office Action is received. However, sometimes the first Office
Action is received as early as six months after filing the application, while at other times the
first Office Action may not be received until four or five years after filing the application.
The Office Action may include a Notice of Allowance. More commonly, however, the Office
Action contains one or more rejections of some or all of the claims and/or one or more
objections. Often all of the claims will be rejected in the first Office Action. Since the
objective of the claims is to obtain the broadest coverage to which the Applicant is entitled, a
rejection in the first Office Action is not necessarily a bad thing, because the lack of a rejection
in the first Office Action is an indication that the Applicant may be entitled to broader claims.
The Applicant is typically given three months within which to reply to the Office Action.
After the three months, a reply may still be filed if a late fee is paid. However, ordinarily a
reply may not be filed more than six months after the mailing of the Office Action.
In response to a rejection, the Applicant may amend the claims and the specification and/or
submit arguments as to why the rejection and/or objection should be withdrawn. However,
although the wording of the specification may be amended, no new subject matter may be
added to the specification that was not present in the originally filed application after the
application is filed. After mailing the response to the Office Action, the Patent and Trademark
Office will usually reply within about three months with another Office Action. Again, this
Office Action may contain a Notice of Allowance or may contain one or more rejections
and/or one or more objections. The second Office Action is usually made final. This means
that, although a response to the final Office Action may contain an amendment, the entry of
the amendment is at the Examiner's discretion. After the Final Office Action, the Examiner
will typically only enter amendments that place the application in condition for allowance
without introducing any new issues that require further consideration. For example, an
amendment that merely cancels rejected claims is likely to be entered, but an amendment that
changes the wording in the claims in a manner that is not suggested by the Office Action is
likely not to be entered. The Patent and Trademark Office usually replies to a response to a
Final Office Action by sending an Advisory Office Action. The Advisory Office Action is
typically very terse, and may only indicate the status of the claims and whether or not any
amendments were entered.
After the mailing of a Final Office Action, if the Examiner refuses to allow the patent
application, a continuation may be filed. The filing of a continuation is a refiling of the original
application, while retaining the benefits of the filing date of the original application. The Patent
and Trademark Office uses the same set of fees to determine the filing fee for a continuation
as for filing a new application. Filing a continuation entitles the applicant to amend the
application, and entitles the applicant to another two Office Actions (the second application
being made final). In this respect filing a continuation is almost like filing a new application.
After receiving a second Office Action the Applicant may file an appeal to the Board of
Appeals and Interferences, appealing the Examiner's rejection. If the Board of Appeals and
Interferences affirms the Examiner's rejection, the Applicant may in at least certain instances
ask the Board of Appeals to reconsider their decision.
Even if the Board of Appeals and Interferences does not change its mind, the Applicant may
still file a continuation on a new set of claims of a narrower or of a different scope, but not of
a broader scope. More precisely, there is nothing stopping the Applicant from filing claims of
the same scope or of a broader scope, but such claims will be rejected, and the rejection of
these claims may be made final on the first Office Action on the basis that the Board of
Appeals and Interferences has already determined these claims to be unpatentable. However,
if the Applicant wishes to file a continuation the continuation ordinarily must be filed prior to
the issuing of a decision by the Board of Appeals. (In my opinion that should be changed, and
the Applicant should be given two months within which to file a continuation after receiving a
decision from the Board of Appeals, because it is unfair to force the Applicant to decide
whether to file a continuation prior to receiving a decision before the Board of Appeals).
The decision of the Board of Appeals and Interferences may be appealed to the Court of
Appeals of the Federal Circuit (CAFC). After receiving a decision from the Board of Appeals,
the Applicant ordinarily has two months within which to file an appeal to the CAFC. A
decision by the CAFC may be appealed to the Supreme Court. However, the Supreme Court
does not accept many patent cases. Consequently, the CAFC is usually the highest court to
which an application can be appealed. Further, only a relatively small percentage of
applications filed are appealed to the CAFC.
The above overview is not intended to give a complete description of all that may occur during
the pendency of a patent application. The above is just an overview, there are many other
possible nuances to the entire process.
required to describe how to make and use the invention. The description must be clear how to
make and use the invention without undue experimentation. At the end of the application are
claims, which define the breadth of coverage that applicant seeks.
After the application is written, it is filed with the Patent and Trademark Office. Within about
three months, the Patent and Trademark Office sends a filing receipt, which includes a foreign
filing licence giving the Applicant permission to file the patent application in another country.
However, despite the foreign filing licence it is possible that another government agency
prohibits exporting the technology associated with the patent application to another country.
Depending upon the art area into which the application is classified, about a year and a half
after filing the application an Office Action is received. However, sometimes the first Office
Action is received as early as six months after filing the application, while at other times the
first Office Action may not be received until four or five years after filing the application.
The Office Action may include a Notice of Allowance. More commonly, however, the Office
Action contains one or more rejections of some or all of the claims and/or one or more
objections. Often all of the claims will be rejected in the first Office Action. Since the
objective of the claims is to obtain the broadest coverage to which the Applicant is entitled, a
rejection in the first Office Action is not necessarily a bad thing, because the lack of a rejection
in the first Office Action is an indication that the Applicant may be entitled to broader claims.
The Applicant is typically given three months within which to reply to the Office Action.
After the three months, a reply may still be filed if a late fee is paid. However, ordinarily a
reply may not be filed more than six months after the mailing of the Office Action.
In response to a rejection, the Applicant may amend the claims and the specification and/or
submit arguments as to why the rejection and/or objection should be withdrawn. However,
although the wording of the specification may be amended, no new subject matter may be
added to the specification that was not present in the originally filed application after the
application is filed. After mailing the response to the Office Action, the Patent and Trademark
Office will usually reply within about three months with another Office Action. Again, this
Office Action may contain a Notice of Allowance or may contain one or more rejections
and/or one or more objections. The second Office Action is usually made final. This means
that, although a response to the final Office Action may contain an amendment, the entry of
the amendment is at the Examiner's discretion. After the Final Office Action, the Examiner
will typically only enter amendments that place the application in condition for allowance
without introducing any new issues that require further consideration. For example, an
amendment that merely cancels rejected claims is likely to be entered, but an amendment that
changes the wording in the claims in a manner that is not suggested by the Office Action is
likely not to be entered. The Patent and Trademark Office usually replies to a response to a
Final Office Action by sending an Advisory Office Action. The Advisory Office Action is
typically very terse, and may only indicate the status of the claims and whether or not any
amendments were entered.
After the mailing of a Final Office Action, if the Examiner refuses to allow the patent
application, a continuation may be filed. The filing of a continuation is a refiling of the original
application, while retaining the benefits of the filing date of the original application. The Patent
and Trademark Office uses the same set of fees to determine the filing fee for a continuation
as for filing a new application. Filing a continuation entitles the applicant to amend the
application, and entitles the applicant to another two Office Actions (the second application
being made final). In this respect filing a continuation is almost like filing a new application.
After receiving a second Office Action the Applicant may file an appeal to the Board of
Appeals and Interferences, appealing the Examiner's rejection. If the Board of Appeals and
Interferences affirms the Examiner's rejection, the Applicant may in at least certain instances
ask the Board of Appeals to reconsider their decision.
Even if the Board of Appeals and Interferences does not change its mind, the Applicant may
still file a continuation on a new set of claims of a narrower or of a different scope, but not of
a broader scope. More precisely, there is nothing stopping the Applicant from filing claims of
the same scope or of a broader scope, but such claims will be rejected, and the rejection of
these claims may be made final on the first Office Action on the basis that the Board of
Appeals and Interferences has already determined these claims to be unpatentable. However,
if the Applicant wishes to file a continuation the continuation ordinarily must be filed prior to
the issuing of a decision by the Board of Appeals. (In my opinion that should be changed, and
the Applicant should be given two months within which to file a continuation after receiving a
decision from the Board of Appeals, because it is unfair to force the Applicant to decide
whether to file a continuation prior to receiving a decision before the Board of Appeals).
The decision of the Board of Appeals and Interferences may be appealed to the Court of
Appeals of the Federal Circuit (CAFC). After receiving a decision from the Board of Appeals,
the Applicant ordinarily has two months within which to file an appeal to the CAFC. A
decision by the CAFC may be appealed to the Supreme Court. However, the Supreme Court
does not accept many patent cases. Consequently, the CAFC is usually the highest court to
which an application can be appealed. Further, only a relatively small percentage of
applications filed are appealed to the CAFC.
The above overview is not intended to give a complete description of all that may occur during
the pendency of a patent application. The above is just an overview, there are many other
possible nuances to the entire process.
An Overview of the Process of Obtaining a
Patent
Patent
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