Patent Application Process

A U.S. patent application is usually arranged as follows:

  • Title of the Application
  • Reference to Related Applications
  • Background of the Invention
  • Field of the Invention
  • Description of Prior Art
  • Summary of the Inventions
  • Brief Description of the Drawings
  • Description of the Preferred Embodiment(s)
  • Claims
  • Abstract of the Disclosure

The Title indicates very briefly what the nature of the invention to which the patent application is directed.

The Reference to Related Applications means the serial numbers and filing dates of earlier applications of which the present application is a continuation application, a divisional application or a continuation-in-part application.

The Background of the Invention includes a general description of the field of the invention, and a description of the prior art over which the present invention is an improvement.

The Summary of the Invention generally includes the objects of the invention, and a brief description of the invention.

The application usually includes drawings of the preferred embodiments of the invention, and the Brief Description of the Drawings is usually a one sentence description of each of the respective drawings.

The Description of the Preferred Embodiment(s) is a detailed description of the product shown in the drawings, and for a chemically-related case often includes examples of the invention. Likewise, if the invention is a method or process, this description explains the various steps of the method.

The Claims are the most important part of the application, and they set forth in one phrase the definition of the invention. There are usually more than one claim in an application, and the claims often define the invention in broad terms and narrow terms. There is always at least one independent claim, and there can be dependent claims which include a reference to a parent claim, and constitute an addition to and/or further define a recitation of the parent claim. Under present U.S. patent practice, there must be "support" in the application for each term recited in the claims. If a claim is to cover a variety of elements or components, each element or component should be set forth in the application. This aspect of U.S. patent applications differ from the patent practice of other countries, which tends to make U.S. patent applications more detailed than corresponding foreign applications. A good patent attorney is able to prepare claims which are of broad scope, but no so broad as to "read on" prior art which could invalidate the claim if challenged.

The Abstract is a summary of the disclosure in the application, and is limited to 150 words.


Valuable Subject Matter
A patent grants to the patent holder the right to exclude others from practicing the patent invention. Patents can protect inventions for products or processes. Articles of manufacture and manufacturing processes are the subjects of most patent applications. There is a constantly developing issue of patent law as to whether business method patents are issuable on business methods which do not yield a concrete result, and exactly which can be a concrete result. Likewise, there is a long standing development of patent law on the patentability of inventions using computer software. Patent applications for chemicals often have sufficient examples to demonstrate the features of the inventive chemicals.

Patentability Analysis
Inventions are patentable if they are novel and nonobvious, assuming the invention has patentable subject matter. An invention is novel if it is not anticipated by the prior art, that is, that the invention has been disclosed in a publication to which the public has access, which usually includes the disclosure of an issued patent, a published patent application, articles in magazines, technical journals, etc. Even if an invention is not "anticipated" as discussed above, it is not patentable if it would have been obvious from the prior art to one skilled in the art. This basically means that the invention cannot have been disclosed in several publications in the same or similar fields in which the invention is located, but according to recent cases, the field of the invention is not as confined as to prevent "common sense" teachings for technical fields other than those of the invention.

In order to determine whether an invention is patentable over the prior art, a patent search is usually conducted before a patent application is prepared. The inventor or inventors should be encouraged to disclose to the patent attorney any potential prior art of which the inventor or inventors are aware. An invention cannot be patented in the United States if it has been in use or in sale in the United States more than one year before a patent application is filed.

Date of Prior Art
Prior art must predate the date of the invention. This generally means that the publication date of the prior art must be prior to the filing date of the patent application. If a patent application has not yet been filed, the publication date generally must predate the conception date of the invention, provided the inventor was diligent in reducing the invention to practice

Once a patent application has been filed, the patent examiner conducts a search to find prior art which either anticipates the application or renders it obvious. The U.S. patents are valid prior art references if their filing date precedes the filing date of the application. It is the publication date of foreign patents or applications which must be compared with the filing date of the application being examined. A prior U.S. patent of the same inventor cannot be used as a reference unless its filing date is more than one year prior to the filing date of the application being examined.

Examination of the Patent Application
The patent examiner conducts a patentability search to determine if the claimed invention is patentable. If the examiner finds that the prior art renders the claimed invention unpatentable, an office action is issued rejecting the claim(s) and setting forth reasons for the rejection. The applicant's attorney has a limited amount of time to amend the claims and/or set forth arguments as to why the claims should be allowable. The examiner may then allow one or more of the claims or issue a final rejection. If a final rejection is issued, the applicant's attorney may file an appeal, file a continuing application with amended claims or abandon the application.

An applicant for a U.S. patent must file with his or her new application, an oath or declaration that the applicant is the inventor, and pay a filing fee. This filing fee presently includes a filing fee per se and search fee. This government fee is a minimum of $1,000, which can increase according to the number of claims. The official filing fee and other fees are reduced for small entities, i.e. those with less than 500 employees. The inventive entity also has a duty of candor to advise the United States Patent and Trademark Office (USPTO) of prior art which could affect the patentability of the claims, and should file an information disclosure statement setting forth the foregoing relevant prior art. If the patent application is to be assigned to a business such as a corporation (oftentimes the employer of the inventor(s)), or to another person, an assignment document must be signed and dated, and filed with the appropriate fee (presently $40.00) at the assignment branch of the USPTO.

U.S. Patent Applications Based on Foreign Applications
U.S. patent applications can be written to describe and define an invention made in the United States, or can be based on a corresponding foreign application. If it is based on a foreign application, the U.S. application must be filed within one year of the filing date of the foreign application, and have the same inventive entity. Sometimes the foreign application does not conform to U.S. patent practice, and the foreign application must be amended or have a preliminary amendment filed. The U.S. application must be in the English language, and the foreign application must be translated to English. Oftentimes, the claims of the foreign application must be rewritten to conform to U.S. practice. The inventor is required to sign an oath or declaration that the inventive entity is the true inventor, and provide a power of attorney to the U.S. attorney who will be filing the application, as is required for domestic patent applications.

Patent Applications with More Than One Invention
Sometimes a patent application claims more than one invention, or discloses fewer inventions than are actually claimed. Where more than one invention is claimed, the patent examiner issues a "restriction requirement" and the applicant must elect the claims directed to only one invention to be prosecuted in the application. Then, before the application issues as a patent or is abandoned, the applicant has the opportunity to file a divisional application on the non-examined claims and pay a new filing fee. Likewise, if the application discloses but does not claim a second or other inventions, the applicant has the opportunity to file a continuation application before the pending application issues or goes abandoned, and pay another filing fee.