A patent is a temporary grant of exclusive rights over an invention. The right a patent holder has is the right to exclude others from practicing the claimed invention. Patent rights are intangible.
The purpose of the entire system is to foster innovation. Granting a temporary exclusive right to an invention incentivizes the inventor to make their invention publicly known, which then allows others to experiment and possibly find other ways to utilize the new technology. Without this incentive, most inventors would do their best to keep the details of their inventions to themselves as trade secrets.
There are four types of applications that can be filed in the US: provisionals, non-provisionals, designs, and plant applications. Provisionals and non-provisionals are both utility applications, claiming structure and function. Harkening back to the days before there were provisionals, the non-provisional applications are sometimes still referred to simply as utilities. Design patents are directed to the ornamental, non-functional appearance of a thing. Plant patents are directed to non-sexually propagated plants.
Each of these patent types are discussed in more detail in the section: Types of patents.
The term can be a bit misleading since many people think of prosecution as instituting and conducting legal proceedings against someone on a criminal charge.
But the term ‘prosecution’ means: continuation of a course of action with a view to its completion. It comes from the Latin prosequi– to pursue, and refers to the process of applying for and obtaining a granted patent from the United States Patent and Trademark Office (USPTO).
The initial steps are to see if the proposed invention is likely to be patentable. This is done through a search through existing records for what is known as prior art. While the term prior art might seem confusing, if you think of the term ‘state-of-the-art’, it refers to what is currently known about a field of technology. Prior art just means all the things known about the technological field prior to your invention.
If the invention is likely to be patentable, a patent application can be filed with the US Patent and Trademark Office (USPTO).
The USPTO will examine the application by searching for relevant prior art, and either allow the claims or return a first office action explaining any prior art or other problems the examiner has with granting the application. The patent attorney or agent will then respond to the office action by amending the claims, or arguing that the claims are different than the prior art. If the examiner allows the claims, you will be given a notice of allowance, and then asked to pay the requisite fees, after which your patent will be issued.
If the claims are rejected a second time in a final office action, you can file a request for continued examination, and pay additional fees to continue the examination process. Alternatively, you can decide to stop any further prosecution and abandon the application, or you may appeal the decision through the Patent Trial and Appeal Board (PTAB). If the PTAB upholds the examiner’s final rejection, you can appeal the PTAB decision in Federal Court.
The United States Patent and Trademark Office is the official government body that oversees the granting of patents in the US. There are thousands of examiners, each trained in a specialized field of technology, that will review patent applications and either allow or reject the claims. It is important to remember that the examiners are not enemies of patents. They exist in order to grant patents. Most of the pushback comes from competing interests. Patent attorneys are seeking as broad a patent as possible- a patent that covers as much territory as possible, whereas the Patent Office tries to reduce the scope of the claims so that innovation can be fostered.
The USPTO also has specialized appeal courts and procedures that are much more cost-effective than trying to litigate issues through the federal courts.
A potential invention must meet three tests. The invention must be new, useful, and non-obvious. Those aspects are covered in more detail in the Patent Prosecution section- What kinds of inventions are patentable?
Patent applications include a title, priority statements, the field of invention, background description, a summary of the invention, a brief description of the drawings, and a detailed description, the claims, an abstract, and any drawings necessary.
This is a document written by the patent examiner explaining why the patent application has been rejected. Applications can be rejected for a number of reasons. They can be rejected because the application was filed in a wrong form, or on substantive grounds. The patent process is essentially a negotiation. Since attorneys will try and get the broadest claims, and the patent system is best served by NOT granting the broadest claims, the patent office will usually reject the initial application by arguing to narrow the scope of the claims.
You can read more about first office actions here: https://www.uspto.gov/web/offices/pac/mpep/s2660.html
This is your answer to an office action issued by the USPTO. Interviews with the examiners may be requested to clarify any points you haven’t understood or that you disagree with. The response is where the application can be resubmitted with appropriate amendments.
This means the application has been rejected twice, with the examiner maintaining that the application is not allowable. Any response to a final office action should either be to meet the requirements necessary to make the application allowable or take an action to keep the examination going. Be aware that a final office action doesn’t mean your application will never be allowed.
After a final office action rejecting the application, you can file a Request for Continued Examination (RCE), and pay additional fees to continue the process. This will give you another two office actions to get the application allowed.
Yes. You can appeal through the Patent Trial and Appeal Board (PTAB), where the examiner’s decision will be reviewed by a board of administrative judges. You will file an appeal brief listing why the examiner was wrong. The examiner will review the appeal and answer. The PTAB will then issue a decision.
If that fails, you can always appeal the PTAB decision in Federal Court.
This is the notice that your application has been allowed. All that is left is to pay the remaining fees and your patent will be issued.
Evidence exists of something like patent rights as far back as 500BC in ancient Greece.
In the Middle Ages, the English crown was granting ‘Letters Patent’ to inventors who petitioned and were approved. The term Letters patent is the English form of the Latin literae patentes, or ‘letters that lie open’. This is because the letter was open to all, as opposed to the usual sealed letters written to specific persons.
The earliest authenticated instance was a grant given to John Kempe in 1331. By 1450, Venice was systematically granting patents.
Importantly, the English patent system evolved to recognize that intellectual property rights were instrumental in stimulating invention. This development laid the legal foundation on which the industrial revolution was built. However, the patent system was at times abused as a money-raising venue by the government, granting monopoly rights over all kinds of known industries. In response, the courts began to limit granting monopolies only on new inventions.
The courts continued to refine the patent system through the years and during the reign of Queen Anne, patent applicants were required to supply a complete set of principles of operation of the invention for public access. Towards the end of the 18th century, the granting of patent rights came to be viewed as an intellectual property right, as opposed to an economic privilege obtained through payment.