The Patent Attorney or Agent
The process by which an inventor obtains a patent — from the initial patent application filing to the issuance of the patent — is known as patent prosecution. Although an inventor can prepare and prosecute a patent application on her own, the process can be difficult and complicated, and most inventors hire registered patent attorneys or patent agents.
Patent attorneys and patent agents must pass a special bar exam administered by the US Patent and Trademark Office, known as the Patent Bar Exam. The examination is computer-based and can be taken at any time. It tests knowledge of the extremely detailed Manual of Patent Examining Procedure.[1] Pass rates are typically in the 40-50% range.[2] In addition, patent attorneys and agents must have earned bachelor’s degrees in scientific fields or must have taken a significant number of undergraduate science courses. They do not need to be lawyers or law school graduates.
Because patents can only be obtained for new and non-obvious inventions, patent prosecution should begin with a prior art search. Although there are no specific requirements for how detailed the search must be, most patent practitioners search at least the Patent Office’s database of issued patents. Outside search companies are often hired to conduct more detailed searches of foreign patent filings and non-patent literature.
Prior art searches serve several important goals. First, the searches can help inventors and practitioners to formulate the scope of the patent application, making sure to avoid any potentially invalidating prior art. Second, if the searches reveal prior art and if no workable claims can be drafted to avoid the prior art, the inventor can save time and money by declining to file an application. Third, knowledge of the prior art will help greatly in the event of a later dispute or litigation. Finally, if an accused infringer can establish that the inventor knew about prior art covering her patent, then the patent can be rendered unenforceable.
Patent Application Process
Design patent prosecution is typically more straightforward and streamlined than utility patent prosecution. A design patent application involves a single claim covering the ornamental features of the design of a specific item while a utility patent application can include claims to different, albeit related, inventions. In addition, design patent applications must include only figures and brief descriptions and do not include detailed descriptions of the inventions or any written claims.
During prosecution, design patent applications can be rejected based on prior art designs. The patent practitioner must be adept at explaining the differences between the design at issue and prior art designs.
The detailed figures define the scope of each design patent. The patent practitioner can choose to expand the scope of the patent by using broken or dashed lines on a portion of the figures, as anything in broken or dashed lines is not included in the scope of the patent. However, broader claims potentially bring more prior art into play, and the patent attorney or agent must be able to explain the differences between the claimed design and the prior art. Often, several patent applications are filed for the same design, some claiming broader scope and some claiming narrower scope.
Design patent applications are cheaper, faster, and have a higher allowance rate than utility patent applications, but they typically cover a much more limited set of products.[3]
Provisional utility patent applications[4] provide the opportunity for lower-cost and less detailed initial patent filings. The provisional patent application is chiefly useful to lock in an initial filing date. If a nonprovisional patent application is filed within one year from the filing date of the provisional, the nonprovisional application can claim the filing date of the provisional. The earlier filing date is key, of course, when disputes arise over who patented something first.
In addition, the filing of a provisional application allows use of the term “patent pending” in connection with a product. A provisional application can be filed up to one year following an inventor’s public disclosure of the invention.
Provisional patent applications are not examined, so the only expenses are a relatively low filing fee and fees of the patent attorney agent. Often, they are used when an inventor is still working on all of the details of an invention, and they can be abandoned if the invention does not prove to be commercially viable.
A provisional application requires the title of the invention, the names of all inventors, a written description of the invention and drawings illustrating the invention. They should provide enough detail so that someone of ordinary skill in the technology could be able to make and use the invention. However, they do not need to include patent claims and the practitioner does not need to submit any prior art.
The 12-month provisional application period cannot be extended. If the inventor is not able to file a nonprovisional application within 12 months, the application is abandoned.
Nonprovisional utility patent applications are the most detailed, most expensive and most common types of patent applications. The application must include the title of the invention, a listing of all inventors, a cross-reference to all related applications, an abstract of the invention, one or more drawings showing the invention, a description of the drawings, a section detailing the background of the invention and a brief summary of the invention. Most importantly, the application must include a section detailing the process of making and using the invention in full, clear, concise and exact terms.[5] This section should also distinguish the invention from prior inventions. The application must conclude with one or more claims that detail the precise scope of the invention. Some of the claims can be dependent claims, which refer back to other claims. Each claim technically covers a separate invention.
Every patent application must also include an oath or declaration by the inventor, including a statement that the inventor believes herself to be the original inventor or an original joint inventor.
During prosecution of a nonprovisional utility patent application, the patent attorney or agent must submit all relevant prior art. Failure to submit relevant prior art could render the patent unenforceable if and when the patent is asserted in litigation.
Description and Claims
The written description of the invention must be sufficiently detailed so that any person of ordinary skill in the pertinent art could make and use the invention without extensive experimentation.[6] Every claim must be fully supported in the written description.
The written description requirement serves several policy objectives. The essential goal is to clearly convey that an inventor has invented the claimed subject matter.[7] Another objective is to clearly convey the scope of the invention to the public.[8] Further, the written description requirement promotes the progress of arts and science by ensuring that inventors adequately describe their inventions in exchange for the right to exclude others.
Because the patent claims define the scope of the invention, and because any potential infringer is judged based on whether the claims cover his product or process, the claims are the most important element of the patent application. Patent claim drafting is a difficult art to master. Ideally, the claim language will be broad enough to cover as many potential infringers as possible, but narrow enough to avoid rejection based on prior art.
For example, suppose your invention is a wine glass with a spring-loaded lid and timer designed to open after a predetermined amount of time so that the user does not drink wine too quickly. The skilled patent drafter could expand the invention to include other types of drinking vessels, other types of lids and various types of timers. Broad independent claims could cover drinking vessels in general and dependent claims could narrow the invention to specific types of containers.
In this case, independent claim 1 could claim a drinking vessel with a lid. Dependent claim 2 could claim a drinking vessel with a spring-loaded lid. Dependent claim 3 could claim a drinking vessel with a spring-loaded lid where the drinking vessel is a wine glass. Dependent claim 4 could claim a drinking vessel with a spring-loaded lid where the drinking vessel is a wine glass, and where the spring-loaded lid is attached to a battery-powered time lock to open at predetermined intervals. Dependent claim 5 might cover a drinking vessel with a spring-loaded lid where the drinking vessel is a beer mug. In actual practice, each of these claims would be more detailed so that they were not anticipated or rendered obvious by any prior art.
As this example shows, patent claims typically consist of several phrases, called elements, which can be swapped in or out of the various claims. The ability to create these separate elements and combine them, making sure that they are adequately covered in the written description and that they are not present in prior art is one of the key facets of patent drafting.
Patent Process and Timing
Several months after receiving the application, the Patent Office will provide an initial response, which often includes several bases for rejecting the application. Typical reasons for rejections include an inadequate written description and claims that are anticipated or rendered obvious by the prior art and inadequate drawings. The patent attorney or agent then has an opportunity to submit amendments. This back-and-forth can go on for years, depending on the type of examination and the number of Patent Office rejections.
The Patent Office fees differ based on the size of the entity filing the application and on whether the applicant wants a prioritized or accelerated examination.
In September 2011, the America Invents Act[9] changed our patent system from “first to invent” to a “first to file” system. The “first to file” system means that the first inventor who files a patent application is entitled to priority, regardless of who conceived the invention first. Under the previous “first to invent” system, priority went to the inventor who first conceived and reduced the invention to practice[10]. Such conception and reduction to practice could occur in a private lab. Thus, inventors often claimed that they were the first to invent even when not the first to file. The Patent Office then had to hold hearings and review evidence regarding the date of conception and reduction to practice. The “first to file” system provides a much brighter line, and it brings the United States in conformity with the rest of the world in this regard.
Patents generally last 20 years from the application date, provided the patent holder continues to pay the required maintenance fees during the term. Maintenance fees are due at approximately 3 ½, 7 ½ and 11 ½ years following the issue date.[11] The fees differ based on the size of the entity that owns the patent and based on the length of time that the patent has existed. They range from $400 – $1600 for the first payment to up to about $7,500 for the final payment.
Skilled patent attorneys and agents can have one patent application branch into multiple related applications, extending the scope of patent protection and effectively extending the life of the patent family well beyond the 20-year term. The branching patent applications are generally referred to as continuing applications, and they take several forms, including continuations, continuations-in-part, divisionals and reissue patents.
Continuation Applications
Continuation applications comprise an important part of intellectual property strategy.[12] They allow inventors to obtain multiple patents on distinct but related inventions. Continuations can be used to expand the scope of patent protection, to target competitors’ products, to create uncertainty among competitors regarding the precise scope of patent protection, to modify patents when the law is in flux and to react to newly discovered prior art. In addition, when a patent is sold or licensed, the existence of a continuation application can greatly enhance the value of the patent.
When a nonprovisional patent application is still pending in the Patent Office, the patent agent or attorney can file a continuation application with a new set of claims. The continuation application can change the claims but cannot include anything that would constitute new matter if inserted in the original application.[13] Thus, the claims must be supported by the original description. The benefit of a continuation application is that it can expand the scope of patent protection and still benefit from the filing date of the original application.[14]
Thus, if Inventor Y files an application claiming the same invention after the date of the Inventor X’s original application but before the date of the continuation, Inventor X still has priority. Similarly, if Company Z markets a similar product during this time period, that product does not become invalidating prior art to Inventor X’s patent. Indeed, continuations can be used offensively, with claims specifically crafted to cover Company Z’s product.
A continuation-in-part application can disclose subject matter not disclosed in the parent application.[15] However, any claims based on the new subject matter are not entitled to the filing date of the continuation application. Continuations-in-part allow inventors to submit enhancements and improvements that are built upon their earlier inventions. The downside is that statements made in prosecuting the original patent application can be used against the inventor in prosecuting a continuation-in-part. Regardless, they remain important tools.
Each patent application can cover only one group of inventions that form a single inventive concept. If the patent examiner thinks that a patent application covers multiple, different inventions, she can issue a restriction requirement. The patent attorney or agent can then file a divisional application. In this, no new matter can be added to the new application, but the claims can be directed to a different inventive concept.[16] The later-filed divisional application claims priority to the earlier parent application.
Whenever any patent is deemed inoperative or invalid, because of a defective specification or drawing or because the inventor claimed more or less than he had the right to claim, the inventor can apply for a reissued patent.[17] The reissue application cannot include any new matter. In addition, the scope of the claims cannot be enlarged unless the reissue application is filed less than two years from the grant of the original patent. However, broadening a reissue patent cannot recapture any subject matter that was specifically disclaimed during patent prosecution.
Reissue patent applications allow the inventor to correct a wide variety of errors. For example, if the claims of the original patent were disclosed in previously unknown prior art, the inventor can apply for a reissue patent that avoids the prior art. Also, the reissue patent can correct typographical errors in a patent’s specification, drawings or claim language. The reissue can also fix an incorrect listing of inventors, or inadvertent procedural errors made by the patentee during patent prosecution.
Reissue patents do have some drawbacks. Any changes to claims in a reissue application can create “intervening rights” on the part of potential infringers who infringe the claims between the issue dates of the original and reissue patents. This means that the infringer has the right to practice anything that was not specifically claimed in the original patent.
[1] https://www.uspto.gov/web/offices/pac/mpep/index.html
[2] https://www.uspto.gov/learning-and-resources/patent-and-trademark-practitioners/registration-exam-results-and-statistics
[3] https://www.uspto.gov/web/offices/pac/mpep/s1503.html
[4] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent
[5] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/nonprovisional-utility-patent
[6] 35 USC 112.
[7] In re Barker, 559 F.2d 588, 592 n.4, 194 USPQ 470, 473 n.4 (CCPA 1977)
[8] Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed. Cir. 1997),
[9] https://www.uspto.gov/sites/default/files/aia_implementation/20110916-pub-l112-29.pdf
[10] https://www.merriam-webster.com/legal/reduction%20to%20practice
[11] https://www.uspto.gov/patents-maintaining-patent/maintain-your-patent
[12] https://www.schleeip.com/patents-2/continuing-patent-application-uspto-epo/
[13] 37 CFR 1.78
[14] 35 USC 120
[15] 37 CFR 1.53; https://bitlaw.com/source/mpep/201_08.html
[16] 37 CFR 1.53; https://bitlaw.com/source/mpep/201_06.html
[17] 35 USC 251