Prosecution The prosecution includes the procedures that follow after a regular patent application is filed. The prosecution of a patent application includes the first, second and final Office actions and consists of the period between the filing of the application and its issuance or abandonment.
In the case of provisional applications, the complete applications are just stored for a maximum of one year. In contrast, nonprovisional applications are assigned to a specific examiner depending on the subject matter contained within the application (i.e.; computer related, biotechnology, engineering, etc.). The examiner will then review the application and he or she will eventually send the applicant what is called the first Office Action (this can take up to 14 months – so don’t hold your breath).
This first Office (FOA) action will evaluate the entire application, the overall patentability of the invention and the wording and validity of the claims. The FOA will contain specific rejections or amendments to the claims that the applicant will need to make. The applicant will have a time limit (which is usually three months) to make the appropriate changes, attempting to overcome any rejections and then must send the application back to the PTO.
The examiner will once again review the application, point out any shortcomings and send a review back to the applicant. This second review is called the second Office action. Once the applicant receives this, he or she will need to amend everything the examiner commented on and once again send a reply back within the specified time period. Finally, the examiner will review the amended application again and determine whether to notify the applicant of a final rejection (stating that the application will not issue into a patent) or allow the application to issue into a patent.
If a final rejection is received, the applicant may appeal to the Board of Patent Appeals and Interferences (Board). If a Notice of Allowance is received, the application is approved for a patent as long as the applicant complies with any final amendments and sends in an issue fee within the appropriate time period of three months. Once all the final amendments and fees have been tended to by the applicant, the patent will issue. A summary of the patent will be printed in a publication called the Official Gazette and a copy of the official patent papers will be mailed to the applicant.
The examiner will usually reject at least some of the claims of any given application. There are three major laws governing the rejections of the claims. These laws consist of 35 U.S.C. 101, 102 and 103. Law 35 U.S.C. 101 summarizes what qualifies as patentable material. If the disclosed subject matter is not a process, manufacture, machine or composition of matter, it will be rejected under 101.
35 U.S.C. 102 discusses the conditions for patentability; novelty and the loss of the right to patent. It states that a person shall be entitled to a patent unless:
a) The invention was known or used by others before the application was filed.
b) The invention was patented or described in a printed publication or was available for public use or was on sale more than one year prior to the application filing date, even if by the same person involved with the prior publication, use or sale. Therefore, if an individual has a fantastic idea, they need to apply for a patent as soon as possible.
c) The invention was abandoned.
d) The application was patented in a foreign country first (more than 12 months before).
e) The invention was described in a U.S. or international patent.
f) The applicant did not actually invent the subject matter of the patent application.
g) If it can be proven that another invented the same thing first, and did not abandon, suppress or conceal it.
To summarize, the 102 laws state that the inventor listed on an application will be granted a patent, unless he or she was not the first or deserving owner of the disclosed subject matter.
35 U.S.C. 103 discusses the obviousness of the subject matter. The applicant will not be granted a patent if the subject matter is found to be obvious. When combining or modifying previous inventions to yield the subject matter of the current application it is considered obvious to a person skilled in the subject matter, a rejection under 35 U.S.C. 103 is made.
Complications of the prosecution
Interferences
If two applications (or an application and a patent) claiming the same material have filing dates so close together that there is a reasonable possibility that the first to file may not be the first inventor, an interference will be held. An interference proceeds very much like a lawsuit, with each party attempting to prove they were the first to conceive of the invention and reduce it to practice before the other.
Reexamination
An issued patent may be reexamined if there is reason to believe that the patentability of the subject matter is questionable. Any member of the public may suggest that a patent be reexamined by citing prior art and sending copies of these references to the PTO. This prior art must raise a new question of patentability and must be newly discovered, hence, it was not used to evaluate the patentability of the subject matter during the initial prosecution.
Protest
If any member of the public knows of a pending application that should not be allowed to issue, he or she may send in a protest to the PTO. An instance such as this may arise if a coinventor was left off an application and discovered that his partner(s) filed the application without listing him as an inventor. This coinventor may file a protest.
Appeal
If an applicant believes his or her application was wrongfully rejected by the PTO, he or she may appeal to the Board of Patent Appeals and Interferences. The applicant will have to file a Notice of Appeal and then an Appeal Brief stating the facts leading to the appeal. These proceedings can be very costly and take extensive amounts of time, but in some instances, it can be worth it.
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