The Application
There are many hurdles involved with gaining a patent. The initial task is to file a patent application, complete with all the bells and whistles required by the PTO. There are a number of standard forms to fill out in addition to quite a bit of writing. An application might range from about 25 pages up to thousands. In 1991, the National Institutes of Health tried to patent practically the entire human brain, or at least 2,600 DNA sequences of it in an enormous patent application.

Specification
One of the most important and involved sections of a patent application is the specification. The specification specifies exactly what has been invented and thus, what the patent will cover if the application is granted. There is usually a great deal of background information involved with a specification. Think of it as a report, one that relays all the information related to the invented subject matter. An applicant or his or her patent practitioner will need to check all the available references to make the background as complete as possible, from existing patents to magazine articles and even dissertations to formal presentations. The more research done, the better.

The reason is because in nearly every instance there will be many similar inventions already existing.  The patent application needs to convey these differences. It will need to outline in detail how it is unique and not obvious in reference to what's already out there as that's what the examiner will do once he or she starts examining the application.

Claims
In regular patent applications, the claims come at the end of the specification. The claims explicitly outline what is being patented. They are used to define the exact scope of an invention. For example, if an inventor lists claims relating to an ink pen, is he or she claiming only the ink cartridge or the entire pen? If the claims encompass the ink cartridge, is the ink being claimed or just the cartridge? What is special about the ink cartridge? What makes it different from other ink cartridges?

The claims set specific boundaries of the invention and help an examiner decide if it warrants a patent as is or if it needs to be adjusted. Many inventors and their patent practitioners will aggressively push the boundaries of the claims to make the patent as valuable as possible. Often the claims will need to be re-written if the examiner believes the claimed invention overlaps with what's already existing (which is called the prior art).

The claims are very important because if the patent is granted, and later, someone starts making the ink cartridge without authorization from the applicant owner, an infringement case may take place. The claims will help the courts decide whether or not infringement of the patent actually occurred.

We've just glossed over the basics of applications. It is much more complicated than this. There are several different patent application types to choose from. In addition, you need to give thought to all kinds of details, like how to mail in your application and the forms you might need to send in during the prosecution. All this and more will be discussed later on.

The Examination
Once an application has been sent in, the USPTO will begin the process of determining if it warrants a patent.

First, they decide whether or not the application is complete based on the type of application it is. If the application is found to be complete, it will eventually be assigned to a specific department within the PTO. From there, an examiner with the right background will take on the job of examining or prosecuting it. But, this won't happen right away. It might take several months to over a year for a new application to actually wind up on an examiner's desk.

Once the application arrives and reaches the top of the pile, the examiner will completely pick it apart, comparing it to anything that may have been written on the subject matter in the past. Examiners check for utility, novelty and nonobviousness in addition to scrutinizing virtually every aspect of the claims.

Finally, the examiner will compile what is called an Office action, presenting every issue with the application. An Office action is essentially a rejection of the initial patent application. This Office Action will be sent back to the applicant.

The applicant (or his or her patent practitioner) must overcome the rejections presented in the Office action by making amendments, sending in missing documents or filling in any blanks in the specification. This task must be accomplished within a limited amount of time. If the applicant fails to meet the deadline, the PTO will abandon the application.

If the applicant succeeds, chances are the PTO will send out a second Office action, where the application is volleyed back and forth from examiner to applicant in the same manner as the first Office action. Lastly, the PTO may send out a Final rejection for the third and final Office action. As you can probably guess, this typically means, "You're out!"

Now, this is a worst case scenario, applications don't always get rejected (there are millions of patents in the U.S. alone). Obviously, many are allowed to issue into a patent.

If a patent is allowed to issue, a Notice of Allowance will be sent out. When this happens, the applicant will usually just need to send in a fee known as the issue fee. Once the applicant pays the required fee amount, the patent will be granted.

Alternately, if the application is finally rejected, there are still options. We will discuss these alternatives later.