General Information Concerning Patents
General Information Concerning
Patents
Contents
Functions of the Patent and Trademark Office
Purpose of this booklet
What is a patent?
Patent laws
What can be patented
Novelty and other conditions for obtaining
a patent
The United States Patent and Trademark Office
Publications of the Patent and Trademark Office
General information and correspondence
Library, search room searches
Attorneys and agents
Disclosure Document
Who may apply for a patent
Application for patent
Oath or declaration, signature
Filing Fees
Specification (description and claims)
Drawing
Models, exhibits, specimens
Examination of applications and proceedings
in the Patent and
Trademark Office
Amendments to application
Time for response and abandonment
Appeal to the Board of Patent Appeals and Interferences
and to
the courts
Interferences
Allowances and issue of patent
Nature of patent and patent rights
Maintenance Fees
Correction of patents
Assignments and licenses
Infringement of patents
Patent marking and "patent pending"
Design patents
Plant patents
Treaties and foreign patents
Foreign applicants for United States patents
Fees and payment
Answers to questions frequently asked
FUNCTIONS OF THE PATENT AND TRADEMARK OFFICE
The Patent and Trademark Office is an
agency of the U.S.
Department of Commerce.
The role of the Patent and Trademark Office
is to provide
patent protection for inventions and to register
trademarks. It
serves the interest of inventors and businesses
with respect to
their inventions and corporate, product, and service
identifications. It also advises and assists the
bureaus and
offices of the Department of Commerce and other
agencies of the
Government in matters involving "intellectual
property" such as
patents, trademarks and semiconductor mask works.
Through the
preservation, classification, and dissemination
of patent
information, the Office aids and encourages innovation
and the
scientific and technical advancement of the Nation.
In discharging its duties, the Patent
and Trademark Office
examines applications and grants patents on inventions
when
applicants are entitled to them; it publishes
and disseminates
patent information, records assignments of patents,
maintains
search files of U.S. and foreign patents and a
search room for
public use in examining issued patents and records.
It supplies
copies of patents and official records to the
public. Similar
functions are performed relating to trademarks.
PURPOSE OF THIS BOOKLET
The purpose of this booklet is to give
the reader some
general information about patents and the operations
of the
Patent and Trademark Office. (A similar booklet
is available on
the subject of trademarks.) It attempts to answer
many of the
questions commonly asked of the Patent and Trademark
Office but
is not intended to be a comprehensive textbook
on patent law or
a guide for the patent lawyer. Consequently, many
details are
omitted and complications have been avoided as
much as
possible. It is hoped that this pamphlet will
be useful to
inventors and prospective applicants for patents,
to students,
and to others who may be interested in patents
by giving them a
brief general introduction to the subject.
Because of the large amount of mail received
by the Patent
and Trademark Office, a copy of this pamphlet,
with particular
sections marked when appropriate, may be used
by the Patent and
Trademark Office to reply to inquiries and is
intended as a
courtesy reply.
Additional information may be obtained
from the
publications listed on pages 6 and 7. The Patent
and Trademark
Office does not publish any textbooks on patent
law, but a
number of such works for the specialist and for
the general
reader have been published by private concerns.
WHAT IS A PATENT?
A patent for an invention is a grant of
a property right
by the Government to the inventor (or his heirs
or assigns),
acting through the Patent and Trademark Office.
The term of the
patent is 17 years from the date the patent is
granted, subject
to the payment of maintenance fees.
The right conferred by the patent grant
extends throughout
the United States and its territories and possessions.
The right conferred by the patent grant
is, in the
language of the statute and of the grant itself,
"the right to
exclude others from making, using, or selling"
the invention.
What is granted is not the right to make, use,
or sell, but the
right to exclude others from making, using, or
selling the
invention.
Most of the statements in the preceding
paragraphs will be
explained in greater detail in later sections.
Some persons occasionally confuse patents,
copyrights, and
trademarks. Although there may be some resemblance
in the
rights of these three kinds of intellectual property,
they are
different and serve different purposes.
Copyrights
A copyright protects the writings of an
author against
copying. Literary, dramatic, musical and artistic
works are
included within the protection of the copyright
law, which in
some instances also confers performing and recording
rights.
The copyright goes to the form of expression rather
than to the
subject matter of the writing. A description of
a machine could
be copyrighted as a writing, but this would only
prevent others
from copying the description; it would not prevent
others from
writing a description of their own or from making
and using the
machine. Copyrights are registered in the Copyright
Office in
the Library of Congress. Information concerning
copyrights may
be obtained from the Register of Copyrights, Library
of
Congress, Washington, D.C. 20559. (Telephone 202/479-0700)
Trademarks
A trademark relates to any word, name,
symbol or device
which is used in trade with goods to indicate
the source or
origin of the goods and to distinguish them from
the goods of
others. Trademark rights may be used to prevent
others from
using a confusingly similar mark but not to prevent
others from
making the same goods or from selling them under
a non-
confusing mark. Similar rights may be acquired
in marks used in
the sale or advertising of services (service marks).
Trademarks
and service marks which are used in interstate
or foreign
commerce may be registered in the Patent and Trademark
Office.
The procedure relating to the registration of
trademarks and
some general information concerning trademarks
is given in a
pamphlet called Basic Facts About Trademarks.
PATENT LAWS
The Constitution of the United States
gives Congress the
power to enact laws relating to patents. in Article
I, section
8, which reads "Congress shall have power...
to promote the
progress of science and useful arts, by securing
for limited
times to authors and inventors the exclusive right
to their
respective writings and discoveries." Under
this power Congress
has from time to time enacted various laws relating
to patents.
The first patent law was enacted in 1790. The
law now in effect
is a general revision which was enacted July 19,
1952, and
which came into effect January 1, 1953. It is
codified in Title
35, United States Code.
The patent law specifies the subject matter
for which a
patent may be obtained and the conditions for
patentability.
The law establishes the Patent and Trademark Office
for
administering the law relating to the granting
of patents, and
contains various other provisions relating to
patents.
WHAT CAN BE PATENTED
The patent law specifies the general field
of subject
matter that can be patented and the conditions
under which a
patent may be obtained.
In the language of the statute, any person
who "invents
or discovers any new and useful process, machine,
manufacture,
or composition of matter, or any new and useful
improvements
thereof, may obtain a patent," subject to
the conditions and
requirements of the law. By the word "process"
is meant a
process or method, and new processes, primarily
industrial or
technical processes, may be patented. The term
"machine" used
in the statute needs no explanation. The term
"manufacture"
refers to articles which are made, and includes
all
manufactured articles. The term "composition
of matter" relates
to chemical compositions and may include mixtures
of ingredients
as well as new chemical compounds. These classes
of subject
matter taken together include practically everything
which is
made by man and the process for making them.
The Atomic Energy Act of 1954 excludes
the patenting of
inventions useful solely in the utilization of
special nuclear
material or atomic energy for atomic weapons.
The patent law specifies that the subject
matter must be
"useful." The term "useful"
in this connection refers to the
condition that the subject matter has a useful
purpose and also
includes operativeness, that is, a machine which
will not
operate to perform the intended purpose would
not be called
useful, and therefore would not be granted a patent.
Interpretations of the statute by the
courts have defined
the limits of the field of subject matter which
can be
patented, thus it has been held that methods of
doing business
and printed matter cannot be patented.
In the case of mixtures of ingredients,
such as medicines,
a patent cannot be granted unless there is more
to the mixture
than the effect of its components. (So called
patent medicines
are ordinarily not patented, the phrase "patent
medicine" in
this connection does not have the meaning that
the medicine is
patented.) A patent cannot be obtained upon a
mere idea or
suggestion. The patent is granted upon the new
machine,
manufacture, etc., as has been said, and not upon
the idea or
suggestion of the new machine. A complete description
of the
actual machine or other subject matter sought
to be patented is
required.
NOVELTY AND OTHER CONDITIONS FOR OBTAINING
A PATENT
In order for an invention to be patentable
it must be new
as defined in the patent law, which provides that
an invention
cannot be patented if--
"(a) The invention was known or used by
others in this
country, or patented or described in a printed
publication
in this or a foreign country, before the
invention thereof
by the applicant for patent, or
"(b) The invention was patented or described
in a printed
publication in this or a foreign country
or in public use
or on sale in this country more than one
year prior to the
application for patent in the United States...."
If the invention has been described in
a printed
publication anywhere in the world, or if it has
been in public
use or on sale in this country before the date
that the
applicant made his invention, a patent cannot
be obtained. If
the invention has been described in a printed
publication
anywhere, or has been in public use or on sale
in this country
more than one year before the date on which an
application for
patent is filed in this country, a valid patent
cannot be
obtained. In this connection it is immaterial
when the
invention was made, or whether the printed publication
or
public use was by the inventor himself or by someone
else. If
the inventor describes the invention in a printed
publication
or uses the invention publicly, or places it on
sale, he must
apply for a patent before one year has gone by,
otherwise any
right to a patent will be lost.
Even if the subject matter sought to be
patented is not
exactly shown by the prior art, and involves one
or more
differences over the most nearly similar thing
already known, a
patent may still be refused if the differences
would be
obvious. The subject matter sought to be patented
must be
sufficiently different from what has been used
or described
before so that it may be said to be unobvious
to a person
having ordinary skill in the area of technology
related to the
invention. For example, the substitution of one
material for
another, or changes in size, are ordinarily not
patentable.
THE UNITED STATES PATENT AND TRADEMARK OFFICE
Congress established the United States
Patent and
Trademark Office to issue patents on behalf of
the Government.
The Patent and Trademark Office as a distinct
bureau may be
said to date from the year 1802 when a separate
official in the
Department of State who became known as "Superintendent
of
Patents" was placed in charge of patents.
The revision of the
patent laws enacted in 1836 reorganized the Patent
and
Trademark Office and designated the official in
charge as
Commissioner of Patents and Trademarks. The Patent
and
Trademark Office remained in the Department of
State until 1849
when it was transferred to the Department of Interior.
In 1925
it was transferred to the Department of Commerce
where it is
today.
The Patent and Trademark Office administers
the patent
laws as they relate to the granting of patents
for inventions,
and performs other duties relating to patents.
It examines
applications for patents to determine if the applicants
are
entitled to patents under the law and grants the
patents when
they are so entitled; it publishes issued patents
and various
publications concerning patents, records assignments
of
patents, maintains a search room for the use of
the public to
examine issued patents and records, supplies copies
of records
and other papers, and the like. Similar functions
are performed
with respect to the registration of trademarks.
The Patent
and Trademark Office has no jurisdiction over
questions of
infringement and the enforcement of patents, nor
over matters
relating to the promotion or utilization of patents
or
inventions.
The head of the Office is the Assistant
Secretary and
Commissioner of Patents and Trademarks and his
staff includes
the Deputy Assistant Secretary and Deputy Commissioner,
several
assistant commissioners, and other officials.
As head of the
Office, the Commissioner superintends or performs
all duties
respecting the granting and issuing of patents
and the
registration of trademarks; exercises general
supervision over
the entire work of the Patent and Trademark Office;
prescribes
the rules, subject to the approval of the Secretary
of
Commerce, for the conduct of proceedings in the
Patent and
Trademark Office and for recognition of attorneys
and agents;
decides various questions brought before him by
petition as
prescribed by the rules, and performs other duties
necessary
and required for the administration of the Patent
and Trademark
Office.
The work of examining applications for
patents is divided
among a number of examining groups, each group
having
jurisdiction over certain assigned fields of technology.
Each
group is headed by a group director and staffed
by a number of
examiners. The examiners review applications for
patents and
determine whether patents can be granted. An appeal
can be
taken to the Board of Patent Appeals and Interferences
from
their decisions refusing to grant a patent and
a review by the
Commissioner of Patents and Trademarks may be
had on other
matters by petition. The examiners also identify
applications
that claim the same invention and initiate proceedings,
known
as interferences, to determine who was the first
inventor.
In addition to the examining groups, other
offices perform
various services, such as receiving and distributing
mail,
receiving new applications, handling sales of
printed copies of
patents, making copies of records, inspecting
drawings, and
recording assignments.
At present, the Patent and Trademark Office
has about
4,400 employees, of whom about half are examiners
and others
with technical and legal training. Patent applications
are
received at the rate of over 170,000 per year.
The Patent and
Trademark Office receives over five million pieces
of mail each
year.
PUBLICATIONS OF THE PATENT AND TRADEMARK OFFICE
Patents--The specification and accompanying
drawings of
all patents are published on the same day they
are granted and
printed copies are sold to the public by the Patent
and
Trademark Office. Over 5,000,000 patents have
been issued.
Printed copies of any patent, identified
by its patent
number, may be purchased from the Patent and Trademark
Office.
See fee schedule.
Future patents classified in subclasses
containing subject
matter of interest may be obtained, as they issue,
by
prepayment of a deposit and a service charge.
For the cost of
such subscription service, a separate inquiry
should be sent to
the Patent and Trademark Office.
Official Gazette of the United States
Patent and Trademark
Office. -- The Official Gazette of the United
States Patent and
Trademark Office is the official journal relating
to patents
and trademarks. It has been published weekly since
January 1872
(replacing the old "Patent Office Reports"),
and is now issued
each Tuesday in two parts, one describing patents
and the other
trademarks. h contains a claim and a selected
figure of the
drawings of each patent granted on that day; notices
of patent
and trademark suits; indexes of patents and patentees,
list of
patents available for license or sale; and much
general
information such as orders, notices, changes in
rules, changes
in classification, etc. The Official Gazette is
sold on
subscription and by single copies by the Superintendent
of
Documents, U.S. Government Printing Office, Washington,
D.C.
20402.
The illustrations and claims of the patents
are arranged
in the Official Gazette according to the Patent
and Trademark
Office classification of subject matter, permitting
ready
reference to patents in any particular field.
Street addresses
of patentees and a geographical index of residents
of inventors
are included. Copies of the Official Gazette may
be found in
public libraries of larger cities.
Index of Patents. -- This annual index
to the Official
Gazette is currently in two volumes, one an index
of patentees
and the other an index by subject matter of the
patents. Sold
by Superintendent of Documents.
Index of Trademarks. -- An annual index
of registrants of
trademarks. Sold by Superintendent of Documents.
Manual of Classification. -- A looseleaf
book containing a
list of all the classes and subclasses of inventions
in the
Patent and Trademark Office classification systems,
a subject
matter index, and other information relating to
classification.
Substitute pages are issued from time to time.
Annual
subscription includes the basic manual and substitute
pages.
Sold by Superintendent of Documents.
Classification Definitions -- Contains
the changes in
classification of patents as well as definitions
of new and
revised classes and subclasses. Sold by Patent
and Trademark
Office.
Title 37 Code of Federal Regulations.
-- Includes rules of
practice for Patents, Trademarks and Copyrights.
Available from
the Superintendent of Documents.
Basic Facts about Trademarks -- Contains
general
information for the layman about applications
for, and
registration of, trademarks and service marks.
Copies may be
purchased from Superintendent of Documents.
Directory of Registered Patent Attorneys
and Agents
Arranged by States and Countries -- An alphabetical
and
geographical listing of patent attorneys and agents
registered
to practice before the U.S. Patent and Trademark
Office. Sold
by Superintendent of Documents.
Manual of Patent Examining Procedure --
A loose-leaf
manual which serves primarily as a detailed reference
work on
patent examining practice and procedure for the
Patent and
Trademark Office's Examining Corps. Subscriptions
service
includes basic manual, quarterly revisions, and
change notices.
Sold by Superintendent of Documents.
The Story of the United States Patent
Office. -- A
chronological account of the development of the
U.S. Patent and
Trademark Office and patent system and of inventions
which had
unusual impact on the American economy and society.
Sold by
Superintendent of Documents.
GENERAL INFORMATION AND CORRESPONDENCE
All business with the Patent and Trademark
Office should
be transacted by writing to "COMMISSIONER
OF PATENTS AND
TRADEMARKS, WASHINGTON, D.C. 20231." Correspondents
should be
sure to include their full return addresses, including
Zip
Codes.
The principal location of the office is
Crystal Plaza 3,
2021 Jefferson Davis highway, Arlington, Virginia.
The personal
attendance of applicants at the Office is unnecessary.
Applicants and attorneys are required
to conduct their
business with decorum and courtesy. Papers presented
in
violation of this requirement will be returned.
Separate letters (but not necessarily
in separate
envelopes) should be written in relation to each
distinct
subject of inquiry, such as assignments, payments,
orders for
printed copies of patents, orders for copies of
records,
requests for other services, etc. None of these
should be
included with letters responding to Office actions
in
applications (see page 19).
When a letter concerns a patent application,
the
correspondent must include the serial number,
filing date and
Group Art Unit number. When a letter concerns
a patent, it must
include the name of the patentee, the title of
the invention,
the patent number and the date of issue.
An order for a copy of an assignment must
give the book
and page or reel and frame of the record, as well
as the name
of the inventor; otherwise, an additional charge
is made for
the time consumed in making the search for the
assignment.
Applications for patents are not open
to the public, and
no information concerning them is released except
on written
authority of the applicant, his assignee, or his
attorney, or
when necessary to the conduct of the business
of the Office.
Patents and related records, including records
of any
decisions, the records of assignments other than
those relating
to assignments of patent applications, books,
and other records
and papers in the Office are open to the public.
They may be
inspected in the Patent and Trademark Office Search
Room or
copies may be ordered.
The Office cannot respond to inquiries
concerning the
novelty and patentability of an invention in advance
of the
filing of an application; give advice as to possible
infringement of a patent; advise of the propriety
of filing an
application; respond to inquiries as to whether
or to whom any
alleged invention has been patented; act as an
expounder of the
patent law or as counselor for individuals, except
in deciding
questions arising before it in regularly filed
cases.
Information of a general nature may be furnished
either
directly or by supplying or calling attention
to an appropriate
publication.
LIBRARY, SEARCH ROOM SEARCHES AND PATENT AND
TRADEMARK
DEPOSITORY LIBRARIES
The Scientific and Technical Information
Center of the
Patent and Trademark Office at Crystal Plaza 3,
2021 Jefferson
Davis Highway, Arlington, Va., has available for
public use
over 120,000 volumes of scientific and technical
books in
various languages, about 90,000 bound volumes
of periodicals
devoted to science and technology, the official
journals of 77
foreign patent organizations, and over 12 million
foreign
patents.
A Search Room is provided where the public
may search and
examine United States patents granted since 1836.
Patents are
arranged according to the Patent and Trademark
Office
classification system of over 400 classes and
over 120,000
subclasses. By searching in these classified patents,
it is
possible to determine, before actually filing
an application,
whether an invention has been anticipated by a
United States
patent, and it is also possible to obtain the
information
contained in patents relating to any field of
endeavor. The
Search Room contains a set of United States patents
arranged in
numerical order and a complete set of the Official
Gazette.
A Files Information Room also is maintained
where the
public may inspect the records and files of issued
patents and
other open records.
Applicants, their attorneys or agents,
and the general
public are not entitled to use the records and
files in the
examiners' rooms.
The Search Room is open from 8 a.m. to
8 p.m. Monday
through Friday except on Federal holidays.
Since a patent is not always granted when
an application
is filed, many inventors attempt to make their
own
investigation before applying for a patent. This
may be done in
the Search Room of the Patent and Trademark Office,
and
libraries, located throughout the U.S., which
have been
designated as Patent and Trademark Depository
Libraries (PTDL).
Patent attorneys or agents may be employed to
make a so-called
preliminary search through the prior United States
patents to
discover if the particular device or one similar
to it has been
shown in some prior patent. This search is not
always as
complete as that made by the Patent and Trademark
Office during
the examination of an application, but only serves,
as its name
indicates a preliminary purpose. For this reason,
the Patent
and Trademark Office examiner may, and often does,
reject
claims in an application on the basis of prior
patents or
publications not found in the preliminary search.
Those who cannot come to the Search Room
may order from
the Patent and Trademark Office copies of lists
of original
patents or of cross-referenced patents contained
in the
subclasses comprising the field of search, or
may inspect and
obtain copies of the patents at a Patent and Trademark
Depository Library. The Patent and Trademark Depository
Libraries (PTDLs) receive current issues of U.S.
Patents and
maintain collections of earlier issued patents
and trademark
information. The scope of these collections varies
from library
to library, ranging from patents of only recent
years to all or
most of the patents issued since 1790.
These patent collections are open to public
use. Each of
the Patent and Trademark Depository Libraries,
in addition,
offers the publications of the U.S. Patent Classification
System (e.g., The Manual of Classification, Index
to the U.S.
Patent Classification, Classification Definitions,
etc.) and
other patent documents and forms, and provides
technical staff
assistance in their use to aid the public in gaining
effective
access to information contained in patents. The
collections are
organized in patent number sequence.
Available in all PTDLs is the Classification
And Search
Support Information System (CASSIS), computer
data base. With
various modes, it permits the effective identification
of
appropriate classifications to search, provides
numbers of
patents assigned to a classification to permit
finding the
patents in a numerical file of patents, provides
the current
classification(s) of all patents, permits word
searching on
classification titles, abstracts, the Index provides
certain
bibliographic information on more recently issued
patents.
Facilities for making paper copies from
either microfilm
in readerprinters or from the bound volumes in
paper-to-paper
copies are generally provided for a fee.
Due to variations in the scope of patent
collections among
the Patent and Trademark Depository Libraries
and in their
hours of service to the public, anyone contemplating
the use of
the patents at a particular library is advised
to contact that
library, in advance, about its collection and
hours, so as to
avert possible inconvience.
State Name of Library
Alabama Auburn University
Libraries
Birmingham Public Library
Alaska Anchorage: Z. J.
Loussac Public
Library
Arizona Tempe: Noble Library,
Arizona State
University
Arkansas Little Rock: Arkansas
State
University
California Los Angeles City
Library
Sacramento: California
State Library
San Diego Public Library
Sunnyvale Patent Clearinghouse
Colorado Denver Public Library
Connecticut New Haven: Science
Park Library
Delaware Newark: University
of Delaware
Library
District of Columbia Washington: Howard
University
Libraries
Florida Fort Lauderdale:
Broward County Main
Library
Miami-Dade Public Library
Orlando: University
of Central
Florida Libraries
Tampa: Tampa Campus
Library,
University of
South Florida
Georgia Atlanta: Price Gilbert
Memorial
Library, Georgia
Institute of
Technology
Hawaii Honolulu: Hawaii
State Public
Library System
Idaho Moscow: University
of Idaho Library
Illinois Chicago Public Library
Springfield: Illinois
State Library
Indiana Indianapolis-Marion
County Public
Library
West Lafayette: Siegesmund
Engineering Laboratory,
Purdue
University
Iowa Des Moines: State
Library of Iowa
Kansas Wichita: Ablah Library,
Wichita
State University
Kentucky Louisville Free
Public Library
Louisiana Baton Rouge: Troy
H. Middleton
Library, Louisiana
State
University
Maryland College Park: Engineering
and
Physical Sciences
Library,
University of
Maryland
Massachusetts Amherst: Physical
Sciences Library,
University of
Massachusetts
Boston Public Library
Michigan Ann Arbor: Engineering
Library,
University of
Michigan
Big Rapids: Abigail
S. Timme
Library, Ferris
State
University
Detroit Public Library
Minnesota Minneapolis Public
Library and
Information Center
Mississippi Jackson: Mississippi
Library
Commission
Missouri Kansas City: Linda
Hall Library
St. Louis Public Library
Montana Butte: Montana College
of Mineral
Science and Technology
Library
Nebraska Lincoln: Engineering
Library,
University of
Nebraska-Lincoln
Nevada Reno: University
of Nevada-Reno
Library
New Hampshire Durham: University
of New Hampshire
Library
New Jersey Newark Public Library
Piscataway: Library
of Science and
Medicine, Rutgers
University
New Mexico Albuquerque: University
of New
Mexico General
Library
New York Albany: New York
State Library
Buffalo and Erie County
Public
Library
New York Public Library
(The
Research Libraries)
North Carolina Raleigh: D. H. Hill
Library, North
Carolina State
University
North Dakota Grand Forks: Chester
Fritz Library,
University of
North Dakota
Ohio Cincinnati and Hamilton
County,
Public Library
of
Cleveland Public Library
Columbus: Ohio State
University
Libraries
Toledo/Lucas County
Public Library
Oklahoma Stillwater Oklahoma
State University
Center for International
Trade
Development
Oregon Salem: Oregon State
Library
Pennsylvania Philadelphia: The
Free Library of
Pittsburgh: Carnegie
Library of
University Park: Pattee
Library,
Pennsylvania State
University
Rhode Island Providence Public
Library
South Carolina Charleston: Medical
University of
South Carolina
Library
Clemson University
Libraries
Tennessee Memphis and Shelby
County Public
Library and Information
Center
Nashville: Stevenson
Science
Library, Vanderbilt
University
Texas Austin: McKinney
Engineering
Library, University
of Texas at
Austin
College Station: Sterling
C. Evans
Library, Texas
A & M University
Dallas Public Library
Houston: The Fondren
Library, Rice
University
Utah Salt Lake City:
Marriott Library,
University of
Utah
Virginia Richmond: James
Branch Cabell
Library, Virginia
Commonwealth
University
Washington Seattle: Engineering
Library,
University of
Washington
West Virginia Morgantown: Evansdale
Library, West
Virginia University
Wisconsin Madison: Kurt F.
Wendt Library,
University of
Wisconsin-Madison
Milwaukee Public
Library
ATTORNEYS AND AGENTS
The preparation of an application for patent
and the
conducting of the proceedings in the Patent and
Trademark
Office to obtain the patent is an undertaking
requiring the
knowledge of patent law and Patent and Trademark
Office
practice as well as knowledge of the scientific
or technical
matters involved in the particular invention.
Inventors may prepare their own applications
and file them
in the Patent and Trademark Office and conduct
the proceedings
themselves, but unless they are familiar with
these matters or
study them in detail, they may get into considerable
difficulty. While a patent may be obtained in
many cases by
persons not skilled in this work, there would
be no assurance
that the patent obtained would adequately protect
the
particular invention.
Most inventors employ the services of
registered patent
attorneys or patent agents. The law gives the
Patent and
Trademark Office the power to make rules and regulations
governing conduct and the recognition of patent
attorneys and
agents to practice before the Patent and Trademark
Office.
Persons who are not recognized by the Patent and
Trademark
Office for this practice are not permitted by
law to represent
inventors before the Patent and Trademark Office.
The Patent
and Trademark Office maintains a register of attorneys
and
agents. To be admitted to this register, a person
must comply
with the regulations prescribed by the Office,
which require a
showing that the person is of good moral character
and of good repute and that he/she has the legal
and scientific
and technical qualifications necessary to render
applicants for
patents a valuable service. Certain of these qualifications
must be demonstrated by the passing of an examination.
Those
admitted to the examination must have a college
degree in
engineering or physical science or the equivalent
of such a
degree. The Patent and Trademark Office registers
both
attorneys at law and persons who are not attorneys
at law. The
former persons are now referred to as "patent
attorneys" and
the latter persons are referred to as "patent
agents." Insofar
as the work of preparing an application for patent
and
conducting the prosecution in the Patent and Trademark
Office
is concerned, patent agents are usually just as
well qualified
as patent attorneys, although patent agents cannot
conduct
patent litigation in the courts or perform various
services
which the local jurisdiction considers as practicing
law. For
example, a patent agent could not draw up a contract
relating
to a patent, such as an assignment or a license,
if the State
in which he resides considers drawing contracts
as practicing
law.
Some individuals and organizations that
are not registered
advertise their services in the fields of patent
searching and
invention marketing and development. Such individuals
and
organizations cannot represent inventors before
the Patent and
Trademark Office. They. are not subject to Patent
and Trademark
Office discipline, and the Office cannot assist
inventors in
dealing with them.
The Patent and Trademark Office cannot
recommend any
particular attorney or agent, or aid in the selection
of an
attorney or agent, as by stating, in response
to inquiry that a
named patent attorney, agent, or firm, is "reliable"
or
"capable." The Patent and Trademark
Office publishes a
directory of all registered patent attorneys and
agents who
have indicated their availability to accept new
clients,
arranged by states, cities, and foreign countries.
The
Directory must be purchased from the Government
Printing
Office.
The telephone directories of most large
cities have, in
the classified section, a heading for patent attorney's
under
which those in that area are listed. Many large
cities have
associations of patent attorneys.
In employing a patent attorney or agent,
the inventor
executes a power of attorney or authorization
of agent which
must be filed in the Patent and Trademark Office
and is usually
a part of the application papers. When an attorney
has been
appointed, the Office does not communicate with
the inventor
directly but conducts the correspondence with
the attorney
since he/she is acting for the inventor thereafter,
although
the inventor is free to contact the Patent and
Trademark Office
concerning the status of his/her application.
The inventor may
remove the attorney or agent by revoking the power
of
authorization.
The Patent and Trademark Office has the
power to disbar,
or suspend from practicing before it, persons
guilty of gross
misconduct, etc., but this can only be done after
a full
hearing with the presentation of clear and convincing
evidence
concerning the misconduct. The Patent and Trademark
Office will
receive and, in appropriate cases, act upon complaints
against
attorneys and agents. The fees charged to inventors
by patent
attorneys and agents for their professional services
are not
subject to regulation by the Patent and Trademark
Office.
Definite evidence of overcharging may afford basis
for Patent
and Trademark Office action, but the Office rarely
intervenes
in disputes concerning fees.
DISCLOSURE DOCUMENT
One of the services provided for inventors
is the
acceptance and preservation for a two-year period
of papers
disclosing an invention. This disclosure is accepted
as
evidence of the dates of conception of the invention.
It will be retained for two years at which
time it will be
destroyed unless it is referred to in a separate
letter in a
related patent application.
A fee must accompany the disclosure. See
current fee
schedule. The disclosure is limited to written
matter or
drawings on paper or other thin, flexible material,
such as
linen or plastic drafting material, having dimensions
or being
folded to dimensions not to exceed 8-1/2 x 13
inches (21.6 by
33.0 cm). Photographs are acceptable. Each page
should be
numbered. Text and drawings should be of such
quality as to
permit reproduction.
The disclosure must be accompanied by
a stamped,
self-addressed envelope and a duplicate copy also
signed by the
inventor. The papers will be stamped with an identifying
number
and returned with the reminder that the Disclosure
Document may
be relied upon only as evidence of the date of
conception and
that an application must be filed in order to
provide patent
protection.
WHO MAY APPLY FOR A PATENT
According to the law, only the inventor
may apply for a
patent, with certain exceptions. If a person who
is not the
inventor should apply for a patent, the patent,
if it were
obtained, would be invalid. The person applying
in such a case
who falsely states that he/she is the inventor
would also be
subject to criminal penalties. If the inventor
is dead, the
application may be made by legal representatives,
that is, the
administrator or executor of the estate. If the
inventor is
insane, the application for patent may be made
by a guardian.
If an inventor refuses to apply for a patent or
cannot be
found, a joint inventor or a person having a proprietary
interest in the invention may apply on behalf
of the missing
inventor.
If two or more persons make an invention
jointly, they
apply for a patent as joint inventors. A person
who makes a
financial contribution is not a joint inventor
and cannot be
joined in the application as an inventor. It is
possible to
correct an innocent mistake in erroneously omitting
an inventor
or erroneously naming a person as an inventor.
Officers and employees of the Patent and
Trademark Office
are prohibited by law from applying for a patent
or acquiring,
directly or indirectly, except by inheritance
or bequest, any
patent or any right or interest in any patent.
APPLICATION FOR PATENT
An application for a patent is made to
the Commissioner of
Patents and Trademarks and includes:
(1) A written document which comprises a specification
(description and claims), and an oath or
declaration;
(2) A drawing in those cases in which a drawing
is necessary;
(3) The filing fee. See fee schedule.
The specification and oath or declaration
must be legibly
written or printed in permanent ink on one side
of the paper.
The Office prefers typewriting on letter or legal
size 8 to 8
1/2 by 10 1/2 to 13 inches, (20.3 to 21.6 by 26.7
to 33.0 cm) 1
1/2 or double spaced with margins of 1 inch (2.54
cm) on the
left-hand side and at the top. If the papers
filed are not
correctly, legibly, and clearly written, the Patent
and
Trademark Office may require typewritten or printed
papers.
The application for patent is not forwarded
for
examination until all its required parts, complying
with the
rules relating thereto, are received. If the papers
and parts
are incomplete, or so defective that they cannot
be accepted as
a complete application for examination, the applicant
will be
notified about the deficiencies and be given a
time period in
which to remedy them. A surcharge may be required.
If the
applicant does not respond within the prescribed
time period.
The application will be returned or otherwise
disposed of. The
filing fee may be refunded when an application
is refused
acceptance as incomplete; however, a handling
fee will be
charged.
It is desirable that all parts of the
complete application
be deposited in the Office together; otherwise
each part must
be signed and a letter must accompany each part,
accurately and
clearly connecting it with the other parts of
the application.
All applications are numbered in serial order,
and the
applicant is informed of the serial number and
filing date of
the application by a filing receipt. The filing
date of the
application is the date on which the names of
the inventors, a
specification (including claims) and any required
drawings are
received in the Patent and Trademark Office; or
the date on
which the last part completing the application
are received in
the case of a previously incomplete or defective
application.
Oath or Declaration, Signature
The oath or declaration of the applicant
is required by
law. The inventor must make an oath or declaration
that he she
believes himself herself to be the original and
first inventor
of the subject matter of the application, and
he she must make
various other allegations required by law and
various
allegations required by the Patent and Trademark
Office rules.
The oath must be sworn to by the inventor before
a notary
public or other officer authorized to administer
oaths. A
declaration may be used in lieu of an oath as
part of the
original application for a patent involving designs,
plants,
and other patentable inventions; for reissue patents;
when
claiming matter originally shown or described
but not
originally claimed; or when filing a divisional
or continuing
application. A declaration does not need to be
notarized.
The application, oath or declaration must
be signed by the
inventor in person, or by the person entitled
by law to make
application on the inventor's behalf. A full first
or middle
name of each inventor without abbreviation and
a middle or
first initial, if any, is required. The postoffice
address of
the inventor is also required.
Blank forms for applications or certain
other papers are
not supplied by the Patent and Trademark Office.
The papers in a complete application will
not be returned
for any purpose whatever, nor will the filing
fee be returned.
If applicants have not preserved copies of the
papers, the
Office will furnish copies for a fee.
Filing Fees*
The filing fee of an application, except
in design and
plant cases, consists of a basic fee and additional
fees. The
basic fee entitles applicant to present twenty
(20) claims,
including not more than three (3) in independent
form. An
additional fee is required for each claim in independent
form
which is in excess of three (3) and an additional
fee is
required for each claim (whether independent or
dependent)
which is in excess of a total of twenty (20) claims.
If the
application contains multiple dependent claims,
additional fees
are required.
If the owner of the invention is a small
entity, (an
independent inventor, a small business concern
or a non-profit
organization), the filing fees are reduced by
half if the small
entity files a verified statement. Copies of sample
verification statements are enclosed.
To avoid errors in the payment of fees
it is suggested
that the table in the enclosed patent application
transmittal
letter be utilized to calculate the fee payment.
In calculating fees, a claim is in singularly
dependent
form if it incorporates by reference a single
preceding claim
which may be an independent or a dependent claim.
A multiple
dependent claim or any claim depending therefrom
shall be
considered as separate dependent claims in accordance
with the
number of claims to which reference is made.
The law also provides for the payment
of additional fees
on presentation of additional claims after the
application is
filed.
When an amendment is filed which presents
additional
claims over the total number already paid for,
or additional
independent claims over the number of independent
claims
already accounted for, it must be accompanied
by any additional
fees due.
* Please Note: The fees are current as of
the revision date.
Fees are subject to change in October each
year therefore
they should be verified before submission
to the PTO. A
fee schedule may be obtained by writing 16
Commissioner of
Patents, Washington, D.C. 20231 -- Attention
Public Service
Branch.
SPECIFICATION (DESCRIPTION AND CLAIMS)
The specification must include a written
description of
the invention and of the manner and process of
making and using
it, and is required to be in such full, clear,
concise, and
exact terms as to enable any person skilled in
the
technological area to which the invention pertains,
or with
which it is most nearly connected, to make and
use the same.
The specification must set forth the precise
invention for
which a patent is solicited, in such manner as
to distinguish
it from other inventions and from what is old.
It must describe
completely a specific embodiment of the process,
machine,
manufacture, composition of matter or improvement
invented, and
must explain the mode of operation or principle
whenever
applicable. The best mode contemplated by the
inventor of
carrying out his invention must be set forth.
In the case of an improvement, the specification
must
particularly point out the part or parts of the
process,
machine, manufacture, or composition of matter
to which the
improvement relates, and the description should
be confined to
the specific improvement and to such parts as
necessarily
cooperate with it or as may be necessary to a
complete
understanding or description of it.
The title of the invention, which should
be as short and
specific as possible, should appear as a heading
on the first
page of the specification, if it does not otherwise
appear at
the beginning of the application.
A brief abstract of the technical disclosure
in the
specification must be set forth in a separate
page immediately
following the claims in a separate paragraph under
the heading
"Abstract of the Disclosure."
A brief summary of the invention indicating
its nature and
substance, which may include a statement of the
object of the
invention, commensurate with the invention as
claimed and any
object recited should precede the detailed description.
Such
summary should be that of the invention as claimed.
When there are drawings, there shall be
a brief
description of the several views of the drawings,
and the
detailed description of the invention shall refer
to the
different views by specifying the numbers of the
figures, and
to the different parts by use of reference numerals.
The specification must conclude with one
or more claims
particularly pointing out and distinctly claiming
the subject
matter which the applicant regards as the invention.
The claims are brief descriptions of the
subject matter of
the invention, eliminating unnecessary details
and reciting all
essential features necessary to distinguish the
invention from
what is old. The claims are the operative part
of the patent.
Novelty and patentability are judged by the claims,'
and, when
a patent is granted, questions of infringement
are judged by
the courts on the basis of the claims.
When more than one claim is presented,
they may be placed
in dependent form in which a claim may refer back
to and
further restrict one or more preceding claims.
A claim in multiple dependent form shall
contain a
reference, in the alternative only, to more than
one claim
previously set forth and then specify a further
limitation of
the subject matter claimed. A multiple dependent
claim shall
not serve as a basis for any other multiple dependent
claim. A
multiple dependent claim shall be construed to
incorporate by
reference all the limitations of the particular
claim in
relation to which it is being considered.
The claim or claims must conform to the
invention as set
forth in the remainder of the specification and
the terms and
phrases used in the claims must find clear support
or
antecedent basis in the description so that the
meaning of the
terms in the claims may be ascertainable by reference
to the
description.
The following order of arrangement should
be observed in
framing the specification:
(a) Title of the invention.
(b) Cross-references to related applications,
if any.
(c) Brief summary of the invention.
(d) Brief description of the several views
of the drawing, if
there are drawings.
(e) Detailed Description.
(f) Claim or claims.
(g) Abstract of the disclosure.
DRAWING
The applicant for a patent will be required
by law to
furnish a drawing of the invention whenever the
nature of the
case requires a drawing to understand the invention.
However,
the Commissioner may require a drawing where the
nature of the
subject matter admits of it; this drawing must
be filed with
the application. This includes practically all
inventions
except compositions of matter or processes, but
a drawing may
also be useful in the case of many processes.
The drawing must show every feature of
the invention
specified in the claims and is required by the
Office rules to
be in a particular form. The Office specifies
the size of the
sheet on which the drawing is made, the type of
paper, the
margins, and other details relating to the making
of the
drawing. The reason for specifying the standards
in detail is
that the drawings are printed and published in
a uniform style
when the patent issues, and the drawings must
also be such that
they can be readily understood by persons using
the patent
descriptions.
No names or other identification will
be permitted within
the "sight" of the drawing, and applicants
are expected to use
the space above and between the hole locations
to identify each
sheet of drawings. This identification may consist
of the
attorney's name and docket number or the inventor's
name and
case number and may include the sheet number and
the total
number of sheets filed (for example, "sheet
2 of 4"). The
following rule, reproduced from title 37 of the
Code of Federal
Regulations, relates to the standards for drawings:
1.84 Standards for drawings.
(a) Paper and ink. Drawings must be made upon
paper which is
flexible, strong, white, smooth, non-shiny
and durable.
India ink, or its equivalent in quality,
is preferred for
pen drawings to secure perfectly black solid
lines. The
use of white pigment to cover lines is not
normally
acceptable.
(b) Size of sheet and margins. The size of
the sheets on which
drawings are made may either be exactly 81/2
by 14 inches
(21.6 by 35.6 cm.) or exactly 21.0 by 29.7
cm. (DIN size
A4). All drawing sheets in a particular application
must
be the same size. One of the shorter sides
of the sheet is
regarded as its top.
(1) On 81/2 by 14 inch drawing sheets,
the drawings must
include a top margin of 2 inches (5.1 cm.)
and bottom and
side margins of 1/4 inch (6.4 mm.) from the
edges, thereby
leaving a "sight" precisely 8 by
113/4 inches (20.3 by
29.8 cm.). Margin border lines are not permitted.
All work
must be included within the "sight".
The sheets may be
provided with two 1/4 inch (6.4 mm.) diameter
holes having
their centerlines spaced 11/16 inch (17.5
mm.) below the
top edge and 23/4 inches (7.0 cm.) apart,
said holes being
equally spaced from the respective side edges.
(2) On 21.0 by 29.7 cm. drawing sheets,
the drawing must
include a top margin of at least 2.5 cm.,
a left side
margin of 2.5 cm., a right side margin of
1.5 cm., and a
bottom margin of 1.0 cm. Margin border lines
are not
permitted. All work must be contained within
a sight size
not to exceed 17 by 26.2 cm.
(c) Character of lines. All drawings must
be made with
drafting instruments or by a process which
will give them
satisfactory reproduction characteristics.
Every line and
letter must be durable, black, sufficiently
dense and
dark, uniformly thick and well defined; the
weight of all
lines and letters must be heavy enough to
permit adequate
reproduction. This direction applies to all
lines however
fine, to shading, and to lines representing
cut surfaces
in sectional views. All lines must be clean,
sharp, and
solid. Fine or crowded lines should be avoided.
Solid
black should not be used for sectional or
surface shading.
Freehand work should be avoided wherever
it is possible to
do so.
(d) Hatching and shading. (1) Hatching should
be made by
oblique parallel lines spaced sufficiently
apart to enable
the lines to be distinguished without difficulty.
(2)
Heavy lines on the shade side of objects
should preferably
be used except where they tend to thicken
the work and
obscure reference characters. The light should
come from
the upper left-hand corner at an angle of
45 degrees.
Surface delineations should preferably be
shown by proper
shading, which should be open.
(e) Scale. The scale to which a drawing is
made ought to be
large enough to show the mechanism without
crowding when
the drawing is reduced in size to two-thirds
in
reproduction, and views of portions of the
mechanism on a
larger scale should be used when necessary
to show details
clearly; two or more sheets should be used
if one does not
give sufficient room to accomplish this end,
but the
number of sheets should not be more than
is necessary.
(f) Reference characters. The different views
should be
consecutively numbered figures. Reference
numerals (and
letters, but numerals are preferred) must
be plain,
legible and carefully formed, and not be
encircled. They
should, if possible, measure at least one-eighth
of an
inch (3.2 mm.) in height so that they may
bear reduction
to one twenty-fourth of an inch (1.1 mm.);
and they may be
slightly larger when there is sufficient
room. They should
not be so placed in the close and complex
parts of the
drawing as to interfere with a thorough comprehension
of
the same, and therefore should rarely cross
or mingle with
the lines. When necessarily grouped around
a certain part,
they should be placed at a little distance,
at the closest
point where there is available space, and
connected by
lines with the parts to which they refer.
They should not
be placed upon hatched or shaded surfaces
but when
necessary, a blank space may be left in the
hatching or
shading where the character occurs so that
it shall appear
perfectly distinct and separate from the
work. The same
part of an invention appearing in more than
one view of
the drawing must always be designated by
the same
character, and the same character must never
be used to
designate different parts. Reference signs
not mentioned
in the description shall not appear in the
drawing, and
vice versa.
(g) Symbols, legends. Graphical drawing symbols
and other
labeled and labeled representation are used
must be
adequately identified in the specification.
While
descriptive matter on drawings is not permitted,
suitable
legends may be used, or may be required in
proper cases,
as in diagrammatic views and flow sheets
or to show
materials or where labeled representations
are employed to
illustrate conventional elements. Arrows
may be required,
in proper cases, to show direction of movement.
The
lettering should be as large as, or larger
than, the
reference characters.
(h) [Reserved]
(i) Views. The drawing must contain as many
figures as may be
necessary to show the invention; the figures
should be
consecutively numbered if possible in the
order in which
they appear. The figures may be plain, elevation,
section,
or perspective views, and detail views of
portions of
elements, on a larger scale if necessary,
may also be
used. Exploded views, with the separated
parts of the same
figure embraced by a bracket, to show the
relationship or
order of assembly of various parts are permissible.
When
necessary, a view of a large machine or device
in its
entirety, may be broken and extended over
several sheets
if there is no loss in facility of understanding
the view.
Where figures on two or more sheets form
in effect a
single complete figure, the figures on the
several sheets
should be so arranged that the complete figure
can be
understood by laying the drawing sheets adjacent
to one
another. The arrangement should be such that
no part of
any of the figures appearing on the various
sheets are
concealed and that the complete figure can
be understood
even though spaces will occur in the complete
figure
because of the margins on the drawing sheets.
The plane
upon which a sectional view is taken should
be indicated
on the general view by a broken line, the
ends of which
should be designated by numerals corresponding
to the
figure number of the sectional view and have
arrows
applied to indicate the direction in which
the view is
taken. A moved position may be shown by a
broken line
superimposed upon a suitable figure if this
can be done
without crowding, otherwise a separate figure
must be used
for this purpose. Modified forms of construction
can only
be shown in separate figures. Views should
not be
connected by projection lines nor should
center lines be
used.
(j) Arrangement of views. All views on the
same sheet should
stand in the same direction and, if possible,
stand so
that they can be read with the sheet held
in an upright
position. If views longer than the width
of the sheet are
necessary for the clearest illustration of
the invention,
the sheet may be turned on its side so that
the top of the
sheet with the appropriate top margin is
on the right-hand
side. One figure must not be placed upon
another or within
the outline of another.
(k) Figure for Official Gazette. The drawing
should, as far as
possible, be so planned that one of the views
will be
suitable for publication in the Official
Gazette as the
illustration of the invention.
(l) Extraneous matter. Identifying indicia
(such as the
attorney's docket number, inventor's name,
number of
sheets, etc.) not to exceed 2 3/4 inches
(7.0 cm.) in width
may be placed in a centered location between
the side
edges within three-fourths inch (19.1 mm.)
of the top
edge. Authorized security markings may be
placed on the
drawings provided they are outside the illustrations
and
are removed when the material is declassified.
Other
extraneous matter will not be permitted upon
the face of a
drawing.
(m) Transmission of drawings. Drawings transmitted
to the
Office should be sent flat, protected by
a sheet of heavy
binder's board, or may be rolled for transmission
in a
suitable mailing tube; but must never be
folded. If
received creased or mutilated, new drawings
will be
required. (See 1.152 for design drawing,
1.165 for plant
drawings, and 1.174 for reissue drawings.)
The requirements relating to drawings
are strictly
enforced, but a drawing not complying with all
of the
regulations may be accepted for purpose of examination,
and
correction or a new drawing will be required later.
Applicants are advised to employ competent
draftsmen to
make their drawings.
MODELS, EXHIBITS, SPECIMENS
Models are not required in most patent
applications since
the description of the invention in the specification
and the
drawings must be sufficiently full and complete
and capable of
being understood to disclose the invention without
the aid of a
model. A model will not be admitted unless specifically
requested by the examiner.
A working model, or other physical exhibit,
may be
required by the Office if deemed necessary. This
is not done
very often. A working model may be requested in
the case of
applications for patent for alleged perpetual
motion devices.
When the invention relates to a composition
of matter, the
applicant may be required to furnish specimens
of the
composition, or of its ingredients or intermediates,
for
inspection or experiment. If the invention is
a microbiological
invention, a deposit of the micro-organism involved
is
required.
EXAMINATION OF APPLICATIONS AND PROCEEDINGS
IN THE PATENT AND
TRADEMARK OFFICE
Applications filed in the Patent and Trademark
Office and
accepted as complete applications are assigned
for examination
to the respective examining groups having charge
of the areas
of technology related to the invention. In the
examining group,
applications are taken up for examination by the
examiner to
whom they have been assigned in the order in which
they have
been filed or in accordance with examining procedures
established by the Commissioner.
Applications will not be advanced out
of turn for
examination or for further action except as provided
by the
rules, or upon order of the Commissioner to expedite
the
business of the Office, or upon a verified showing
which, in
the opinion of the Commissioner, will justify
advancing them.
The examination of the application consists
of a study of
the application for compliance with the legal
requirements and
a search through United States patents, prior
foreign patent
documents which are available in the Patent and
Trademark
Office, and available literature, to see if the
claimed
invention is new and unobvious. A decision is
reached by the
examiner in the light of the study and the result
of the
search.
Office Action
The applicant is notified in writing of
the examiner's
decision by an "action" which is normally
mailed to the
attorney or agent. The reasons for any adverse
action or any
objection or requirement are stated in the action
and such
information or references are given as may be
useful in aiding
the applicant to judge the propriety of continuing
the
prosecution of his application.
If the invention is not considered patentable
subject
matter, the claims will be rejected. If the examiner
finds that
the invention is not new, the claims will be rejected,
but the
claims may also be rejected if they differ only
in an obvious
manner from what is found. It is not uncommon
for some or all
of the claims to be rejected on the first action
by the
examiner; relatively few applications are allowed
as filed.
Applicant's Response
The applicant must request reconsideration
in writing, and
must distinctly and specifically point out the
supposed errors
in the examiner's action. The applicant must respond
to every
ground of objection and rejection in the prior
Office action
(except that a request may be made that objections
or
requirements as to form not necessary to further
consideration
of the claims be held in abeyance until allowable
subject
matter is indicated), and the applicant's action
must appear
throughout to be a bona fide attempt to advance
the case to
final action. The mere allegation that the examiner
has erred
will not be received as a proper reason for such
reconsideration.
In amending an application in response
to a rejection, the
applicant must clearly point out why he/she thinks
the amended
claims are patentable in view of the state of
the art disclosed
by the prior references cited or the objections
made. He/she
must also show how the claims as amended avoid
such references
or objections.
After response by applicant the application
will be
reconsidered, and the applicant will be notified
if claims are
rejected, or objections or requirements made,
in the same
manner as after the first examination. The second
Office action
usually will be made final.
Final Rejection
On the second or later consideration,
the rejection or
other action may be made final. The applicant's
response is
then limited to appeal in the case of rejection
of any claim
and further amendment is restricted. Petition
may be taken to
the Commissioner in the case of objections or
requirements not
involved in the rejection of any claim. Response
to a final
rejection or action must include cancellation
of, or appeal
from the rejection of, each claim so rejected
and, if any claim
stands allowed, compliance with any requirement
or objection as
to form.
In making such final rejection, the examiner
repeats or
states all grounds of rejection then considered
applicable to
the claims in the application.
Interviews with examiners may be arranged,
but an
interview does not remove the necessity for response
to Office
actions within the required time, and the action
of the Office
is based solely on the written record.
If two or more inventions are claimed
in a single
application, and are regarded by the Office to
be of such a
nature that a single patent should not be issued
for both of
them, the applicant will be required to limit
the application
to one of the inventions. The other invention
may be made the
subject of a separate application which, if filed
while the
first application is still pending, will be entitled
to the
benefit of the filing date of the first application.
A
requirement to restrict the application to one
invention may be
made before further action by the examiner.
As a result of the examination by the
Office, patents are
granted in the case of about two out of every
three
applications for patents which are filed.
AMENDMENTS TO APPLICATION
Following are some details concerning
amendments to the
application:
The applicant may amend before or after
the first
examination and action as specified in the rules,
or when and
as specifically required by the examiner.
After final rejection or action amendments
may he made
canceling claims or complying with any requirement
of form
which has been made but the admission of any such
amendment or
its refusal, and any proceedings relative thereto,
shall not
operate to relieve the application from its condition
as
subject to appeal or to save it from abandonment.
If amendments touching the merits of the
application are
presented after final rejection, or after appeal
has been
taken, or when such amendment might not otherwise
be proper,
they may be admitted upon a showing of good and
sufficient
reasons why they are necessary and were not earlier
presented.
No amendment can be made as a matter of
right in appealed
cases. After decision on appeal, amendments can
only be made as
provided in the rules.
The specifications, claims, and drawing
must be amended
and revised when required, to correct inaccuracies
of
description and definition of unnecessary words,
and to secure
correspondence between the claims, the description,
and the
drawing.
All amendments of the drawings or specifications,
and all
additions thereto, must conform to at least one
of them as it
was at the time of the filing of the application.
Matter not
found in either, involving a departure from or
an addition to
the original disclosure, cannot be added to the
application
even though supported by a supplemental oath or
declaration,
and can be shown or claimed only in a separate
application.
The claims may be amended by canceling
particular claims,
by presenting new claims, or by amending the language
of
particular claims (such amended claims being in
effect new
claims). In presenting new or amended claims,
the applicant
must point out how they avoid any reference or
ground rejection
of record which may be pertinent.
Erasures, additions, insertions, or alterations
of the
papers and records must not be made by the applicant.
Amendments are made by filing a paper, directing
or requesting
that specified changes or additions be made. The
exact word or
words to be stricken out or inserted in the application
must be
specified and the precise point indicated where
the deletion or
insertion is to be made.
Amendments are "entered" by
the Office by making the
proposed deletions by drawing a line in red ink
through the
word or words canceled and by making the proposed
substitutions
or insertions in red ink, small insertions being
written in at
the designated place and larger insertions being
indicated by
reference.
No change in the drawing may be made except
by permission
of the Office. Changes in the construction shown
in any drawing
may be made only by submitting new drawings. A
sketch in
permanent ink showing proposed changes, to become
part of the
record, must be filed for approval by the Office
before the new
drawings are filed. The paper requesting amendments
to the
drawing should be separate from other papers.
If the number or nature of the amendments
render it
difficult to consider the case, or to arrange
the papers' for
printing or copying, the examiner may require
the entire
specification or claims, or any part thereof,
to be rewritten.
The original numbering of the claims must
be preserved
throughout the prosecution. When claims are canceled,
the
remaining claims must not be renumbered. When
claims are added
by amendment or substituted for canceled claims,
They must be
numbered by the applicant consecutively beginning
with the
number next following the highest numbered claim
previously
presented. When the application is ready for allowance,
the
examiner, if necessary, will renumber the claims
consecutively
in the order in which they appear or in such order
as may have
been requested by applicant.
TIME FOR RESPONSE AND ABANDONMENT
The response of an applicant to an action
by the Office
must be made within a prescribed time limit. The
maximum period
for response is set at 6 months by the statute
which also
provides that the Commissioner may shorten the
time for reply
to not less than 30 days. The usual period for
response to an
Office action is 3 months. A shortened time for
reply may be
extended up to the maximum 6 months period. An
extension of
time fee is normally required to be paid if the
response period
is extended. The amount of the fee is dependent
upon the length
of the extension. If no reply is received within
the time
period, the application is considered as abandoned
and no
longer pending. However, if it can be shown that
the failure to
prosecute was unavoidable or unintentional, the
application may
be revived by the Commissioner. The revival requires
a petition
to the Commissioner, and a fee for the petition,
which should
be filed without delay. The proper response must
also accompany
the petition if it has not yet been filed.
APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES
AND TO
THE COURTS
If the examiner persists in the rejection
of any of the
claims in an application, or if the rejection
has been made
final, the applicant may appeal to the Board of
Patent Appeals
and Interferences in the Patent and Trademark
Office. The Board
of Patent Appeals and Interferences consists of
the
Commissioner of Patents and Trademarks, the Deputy
Commissioner, the Assistant Commissioners, and
the
examiners-in-chief, but normally each appeal is
heard by only
three members. An appeal fee is required and the
applicant must
file a brief to support his/her position. An oral
hearing will
be held if requested upon payment of the specified
fee.
As an alternative to appeal, in situations
where an
applicant desires consideration of different claims
or further
evidence, a new continuation application is often
filed. The
new application requires a filing fee and should
submit the
claims and evidence for which consideration is
desired. If it
is filed before expiration of the period for appeal
and
specific reference is made therein to the earlier
application,
applicant will be entitled to the earlier filing
date for
subject matter common to both applications.
If the decision of the Board of Patent
Appeals and
Interferences is still adverse to the applicant,
an appeal may
be taken to the Court of Appeals for the Federal
Circuit or a
civil action may be filed against the Commissioner
in the
United States District court for the District
of Columbia. The
Court of Appeals for the Federal Circuit will
review the record
made in the Office and may affirm or reverse the
office's
action. In a civil action, the applicant may present
testimony
in the court, and the court will make a decision.
INTERFERENCES
Occasionally two or more applications
are filed by
different inventors claiming substantially the
same patentable
invention. The patent can only be granted to one
of them, and a
proceeding known as an "interference"
is instituted by the
Office to determine who is the first inventor
and entitled to
the patent. About 1 percent of the applications
filed become
involved in an interference proceeding. Interference
proceedings may also be instituted between an
application and a
patent already issued, provided the patent has
not been issued
for more than one year prior to the filing of
the conflicting
application, and provided that the conflicting
application is
not barred from being patentable for some other
reason.
Each party to such a proceeding must submit
evidence of
facts proving when the invention was made. In
view of the
necessity of proving the various facts and circumstances
concerning the making of the invention during
an interference,
inventors must be able to produce evidence to
do this. If no
evidence is submitted a party is restricted to
the date of
filing the application as his earliest date. The
priority
question is determined by a board of three Examiners-in-Chief
on the evidence submitted. From the decision of
the Board of
Patent Appeals and Interferences, the losing party
may appeal
to the Court of Appeals for the Federal Circuit
or file a civil
action against the winning party in the appropriate
United
States district court.
The terms "conception of the invention"
and "reduction to
practice" are encountered in connection with
priority
questions. Conception of the invention refers
to the completion
of the devising of the means for accomplishing
the result.
Reduction to practice refers to the actual construction
of the
invention in physical form; in the case of a machine
it
includes the actual building of the machine, in
the case of an
article or composition it includes the actual
making of the
article or composition, in the case of a process
it includes
the actual carrying out of the steps of the process;
and actual
operation, demonstration, or testing for the intended
use is
also usually necessary. The filing of a regular
application for
patent completely disclosing the invention is
treated as
equivalent to reduction to practice. The inventor
who proves to
be the first to conceive the invention and the
first to reduce
it to practice will be held to be the prior inventor,
but more
complicated situations cannot be stated this simply.
ALLOWANCE AND ISSUE OF PATENT
If, on examination of the application,
or at a later stage
during the reconsideration of the application,
the patent
application is found to be allowable, a notice
of allowance
will be sent to the applicant, or to applicant's
attorney or
agent, and a fee for issuing the patent is due
within three
months from the date of the notice.
The issue fee is due within three months
after a written
notice of allowance is mailed to the applicant.
If timely
payment is not made the application will be regarded
as
abandoned. See current fee schedule.
A provision is made in the statute whereby
the
Commissioner may accept the fee late, on a showing
of
unavoidable delay. When the issue fee is paid,
the patent
issues as soon as possible after the date of payment,
dependent
upon the volume of printing on hand. The patent
grant then is
delivered or mailed on the day of its grant, or
as soon
thereafter as possible, to the inventor's attorney
or agent if
there is one of record, otherwise directly to
the inventor. On
the date of the grant, the patent file becomes
open to the
public. Printed copies of the specification and
drawing are
available on the same date.
In case the publication of an invention
by the granting of
a patent would be detrimental to the national
defense, the
patent law gives the Commissioner the power to
withhold the
grant of the patent and to order the invention
kept secret for
such period of time as the national interest requires.
NATURE OF PATENT AND PATENT RIGHTS
The patent is issued in the name of the
United States
under the seal of the Patent and Trademark Office,
and is
either signed by the Commissioner of Patents and
Trademarks or
has his name written thereon and attested by an
Office
official. The patent contains a grant to the patentee
and a
printed copy of the specification and drawing
is annexed to the
patent and forms a part of it. The grant confers
"the right to
exclude others from making, using or selling the
invention
throughout the United States" and its territories
and
possessions for the term of 17 years subject to
the payment of
maintenance fees as provided by law.
The exact nature of the right conferred
must be carefully
distinguished, and the key is in the words "right
to exclude"
in the phrase just quoted. The patent does not
grant the right
to make, use, or sell the invention but only grants
the
exclusive nature of the right. Any person is ordinarily
free to
make, use, or sell anything he pleases, and a
grant from the
Government is not necessary. The patent only grants
the right
to exclude others from making, using, or selling
the invention.
Since the patent does not grant the right to make,
use, or sell
the invention, the patentee's own right to do
so is dependent
upon the rights of others and whatever general
laws might be
applicable. A patentee, merely because he or she
has received a
patent for an invention, is not thereby authorized
to make, use
or sell the invention if doing so would violate
any law. An
inventor of a new automobile who has obtained
a patent thereon
would not be entitled to use the patented automobile
in
violation of the laws of a State requiring a license,
nor may a
patentee sell an article the sale of which may
be forbidden by
a law, merely because a patent has been obtained.
Neither may a
patentee make, use or sell his/her own invention
if doing so
would infringe the prior rights of others. A patentee
may not
violate the Federal antitrust laws, such as by
resale price
agreements or entering into combination in restraints
of trade,
or the pure food and drug laws, by virtue of having
a patent.
Ordinarily there is nothing which prohibits a
patentee from
making, using, or selling his/her own invention,
unless he/she
thereby infringes another's patent which is still
in force.
Since the essence of the right granted
by a patent is the
right to exclude others from commercial exploitation
of the
invention, the patentee is the only one who may
make, use, or
sell the invention. Others may not do so without
authorization
from the patentee. The patentee may manufacture
and sell the
invention or may. license, that is, give authorization
to
others to do so.
The term of a patent is 17 years. A maintenance
fee is due
3 1/2, 7 1/2 and 11 1/2 years after the original
grant for all
patents issuing from the applications filed on
and after
December 12, 1980. The maintenance fee must be
paid at the
stipulated times to maintain the patent in force.
After the
patent has expired anyone may make, use, or sell
the invention
without permission of the patentee, provided that
matter
covered by other unexpired patents is not used.
The terms may
not be extended except by special act of Congress
except for
certain pharmaceuticals.
MAINTENANCE FEES
All utility patents which issue from applications
filed on
and after December 12, 1980 are subject to the
payment of
maintenance fees which must be paid to maintain
the patent in
force. These fees are due at 3 1/2, 7 1/2 and
11 1/2 years from
the date the patent is granted and can be paid
without a
surcharge during the "window-period"
which is the six month
period preceding each due date, e.g., 3 years
to 3 years and
six months, etc. See fee schedule for a list of
maintenance
fees.
Failure to pay the current maintenance
fee on time may
result in expiration of the patent. A six month
grace period is
provided when the maintenance fee may be paid
with a surcharge.
The grace period is the six month period immediately
following
the due date. The Patent and Trademark Office
does not mail
notices to patent owners that maintenance fees
are due. If,
however, the maintenance fee is not paid on time,
efforts are
made to remind the responsible party that the
maintenance fee
may be paid during the grace period with a surcharge.
Patents relating to some pharmaceutical
inventions may be
extended by the Commissioner for up to five years
to compensate
for marketing delays due to Federal premarketing
regulatory
procedures. Patents relating to all other types
of inventions
can only be extended by enactment of special Federal
legislation.
CORRECTION OF PATENTS
Once the patent is granted, it is outside
the jurisdiction
of the Patent and Trademark Office except in a
few respects.
The Office may issue without charge a
certificate
correcting a clerical error it has made in the
patent when the
printed patent does not correspond to the record
in the Office.
These are mostly corrections of typographical
errors made in
printing.
Some minor errors of a typographical nature
made by the
applicant may be corrected by a certificate of
correction for
which a charge is made.
The patentee may disclaim one or more
claims of this
patent by filing in the Office a disclaimer as
provided by the
statute.
When the patent is defective in certain
respects, the law
provides that the patentee may apply for a reissue
patent. This
is a patent granted to replace the original and
is granted only
for the balance of the unexpired term. However,
the nature of
the changes that can be made by means of the reissue
are rather
limited; new matter cannot be added.
Any person may file a request for reexamination
of a
patent, along with the required fee, on the basis
of prior art
consisting of patents or printed publications.
At the
conclusion of the reexamination proceedings, a
certificate
setting forth the results of the reexamination
proceeding is
issued.
ASSIGNMENTS AND LICENSES
A patent is personal property and may
be sold to others or
mortgaged; it may be bequeathed by a will, and
it may pass to
the heirs of deceased patentee. The patent law
provides for the
transfer or sale of a patent, or of an application
for patent,
by an instrument in writing. Such an instrument
is referred to
as an assignment and may transfer the entire interest
in the
patent. The assignee, when the patent is assigned
to him or
her, becomes the owner of the patent and has the
same rights
that the original patentee had.
The statute also provides for the assignment
of a part
interest, that is, a half interest, a fourth interest,
etc., in
a patent. There may also be a grant which conveys
the same
character of interest as an assignment but only
for a
particularly specified part of the United States.
A mortgage of patent property passes ownership
thereof to
the mortgagee or lender until the mortgage has
been satisfied
and a retransfer from the mortgagee back to the
mortgagor, the
borrower, is made. A conditional assignment also
passes
ownership of the patent and is regarded as absolute
until
canceled by the parties or by the decree of a
competent court.
An assignment, grant, or conveyance of
any patent or
application for patent should be acknowledged
before a notary
public or officer authorized to administer oaths
or perform
notarial acts. The certificate of such acknowledgment
constitutes prima facie evidence of the execution
of the
assignment, grant, or conveyance.
Recording of Assignments
The Office records assignments, grants,
and similar
instruments sent to it for recording, and the
recording serves
as notice. If an assignment, grant, or conveyance
of a patent
or an interest in a patent (or an application
for patent) is
not recorded in the Office within three months
from its date,
it is void against a subsequent purchaser for
a valuable
consideration without notice, unless it is recorded
prior to
the subsequent purchase.
An instrument relating to a patent should
identify the
patent by number and date (the name of the inventor
and title
of the invention as stated in the patent should
also be given).
An instrument relating to an application should
identify the
application by its serial number and date of filing,
and the
name of the inventor and title of the invention
as stated in
the application should also be given. Sometimes
an assignment
of an application is executed at the same time
that the
application is prepared and before it has been
filed in the
Office. Such assignment should adequately identify
the
application, as by its date of execution and name
of the
inventor and title of the invention, so that there
can be no
mistake as to the application intended.
If an application has been assigned and
the assignment is
recorded, on or before the date the issue fee
is paid, the
patent will be issued to the assignee as owner.
If the
assignment is of a part interest only, the patent
will be
issued to the inventor and assignee as joint owners.
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