10 steps every innovator needs to know about the pathway to patentship - MPEP at 1000 feet - read it in 1 sitting
Before you launch the sequence of steps patenting your novel, non-obvious, and “ah-ha” invention, the best way to start is by stating the obvious. The framework for utility patenting is surprisingly straight forward, but each of the steps is not only complex, they inextricably linked from one to the next…and once you start, the sequence is fraught with potholes.
In Part 1/Section2 of my Utility Patenting for IP SAVVYS book entitled “Getting the Patent: From trade secret to drafting, filing, prosecution, and allowance”, I cover the fundamentals of the steps in what I call "your pathway to patentship".
You will find it an easy read. It’s presented in "non-legalese", all from the inventor point of view. Read it here in one sitting because you owe it to yourself to fact-check your own understanding of your beliefs about what you will be doing during this pursuit.
-->>Part1/Section2 is included here at the bottom of this blog post. Scroll down to read the rest and find Section2 as the very last part of this post.
Among the fundamentals of compliance with MPEP in the preparation of your draft patent application, I cover 10 critical aspects in a 1000 foot helicopter view of the landscape you will be navigating. Below, you’ll find my explanations on (1) your idea as a trade secret and takes you into (2) drafting basics (3) your Doc PAK for ultimately filing (4) the choice you need to make about the type of application you will file (5) what the sequence of prosecution will look like (6) how to sort out your global filing options (7) the domino theory of formal prosecution (8) what and what not to do with the examiner at the PTO in the clinches of examination on merits (9) in what way this interleaves with international prosecution and (10) what to do once you are allowed and issued and how to deal with maintenance and defense.
Once you take the time to scroll down to the bottom of this post and read this section of my book (over your soup and sandwich:)), come back here and click this link to get a look at my complete book synopsis . It includes the outline of Part2/Changing your Utility Patenting Conversation With The Schwartz Method(TSM).
You’re also going to love that my book is accompanied by an on-line/self-paced utility patenting course “Intellectual Property BoostCamp (IP-BC)”. It’s the only combination book and course that teaches TSM (The Schwartz Method) for patent drafting. I designed and delivered the course in LEVELS (tied to your role and tasking in the patent effort) so everyone on the patenting team can take the LEVEL tied to their patent role and tasking. If you and your team are serious about utility patenting, you will want to get going with the course LEVEL aligned with your patent role and tasking. If you do go ahead with TSM and become one of your teams Utility Patenting Champions, the course offers every member a way to get into the IP-Zone and play their part in the utility patenting gambit.
If you’re as serious about the utility patenting gambit as I was, you will further benefit from the basic turning point I’m offering…In simple terms: If you’re talking with a professional patent counsel that has spent 10,000 hours understanding the complex domain of utility patenting, you need to bring a Howitzer to the front battle lines. It’s one of the only ways to have the fire power to have intelligent conversations at each point in the 10 step process detailed above. The only way to do that is to know enough about the ins and outs of each of those steps yourself. In this way you will be able to ask the right questions at each turn down the patenting corridor of uncertainty. When you do, you will know the specific and substantive work you really need an expert to do for you, what to expect, and how much it should cost in both time and money.
Maybe most importantly, you will be able to read and understand the claim(s) in your proposed final draft patent application. That will lead to the most important result of all…a patent that publishes with a clean file wrapper.
Take Schwartz with you on your shoulder and benefit from filing first, right-first-time. When you do, you’ll learn to avoid FATAL OFFICE ACTION REJECTIONS (FOARS) before filing. Do this to avoid being forced into abandonment for lack of traversing objections for patentability, novelty, non-obviousness, antecedent reference, ambiguity, and definiteness. (The 6 Rules #101,102,103,111,112,and 113).
Read Part1/Section2 of Utility Patenting for IP SAVVYS right here:
2. Getting the patent: From trade secret to drafting, filing, prosecution, and allowance
2.1 Your idea is a trade secret until it isn’t: Trade secrets
Now that you know what a patent (application) looks like along with the sequence of events from ideation and invention capture through the stages of publishing, let’s focus on the development of a utility-compliant patent application as a trade secret and the form of patent you convert it to.
Trade secrets are not registered or filed. Instead, they are maintained by their owners using protocols that mark trade secrets as confidential and secret, where limits are put on access. Trade secret protection ends once the secret is publicly disclosed.
When you first molded your idea into a concrete form, you probably began thinking about constructing a patent application for it. You were entertaining the legal goal of getting a monopoly right for the claims in that patent if and when it published.
The Flash Of Genius – coming out of the FOG
I liken the process of invention to a flash of genius (FOG). Think of it as coming out of the FOG as you perfect your P-E for the object of your invention. More on this in my blog on FOG (https://www.ipboostcamp as a member you can access my complete blog). In every situation, when the idea is nascent and in an early form of representation, it is a trade secret. No one knows about it except for you and your cohorts.
Typically, when people talk about trade secrets, they have a more general definition. The description includes tangible and/or intangible information. Critically, the owner of that information seeks to prevent competitors (or the public) from learning about it in order to enjoy a competitive advantage in the marketplace. In order to keep it (think the formula for colored glass), the information must be treated in a way that can reasonably be expected to keep it private, except in cases of improper acquisition or theft.
A lot of trade secrets revolve around things like customer lists, workflow methods, social marketing parameters etc. Here I focus solely on your invention. Some of your secrets may pass through both your business filter and patentability filters, emerging as targets for patenting. Not all secrets warrant patents. Look at your formulas and algorithms (including computer algorithms), patterns, devices, ideas, processes, lists, recipes, strategies, internal systems for processing information, business or advertising strategies, and manufacturing techniques. If they cannot be readily figured out (reverse engineered) by anyone deconstructing the end product or outcome, they can remain secrets. It doesn’t necessarily mean, however, that they are targets for patenting.
The date of the first instance of your invention is referred to as the date of conception. It is important, even in proceedings after the Leahy-Smith America Invents Act (AIA) tied to post-issuance petitions, ownership, and royalties. As promised, I will defer the tactics and strategies for patents until after the fundamental concepts are developed, so more on that later. For now, understand that your patentable idea is a secret unless or until you act in a way that makes it public domain.
To be clear, compared to the date of conception, the filing date of your invention is the date when you hit the patent office whether with either a provisional (reference the one-year rule, discussed later) or a non-provisional patent application. The AIA makes the United States a first-to-file country. Even though the United States is no longer a first-to-invent country, I will cover some cases in ex parte proceedings where it may be helpful to have a proven and documented date of conception. Since it is often difficult to reconstruct this date as time passes, when you use Schwartz’s Invention Disclosure Patent Application Workbook (IDPAW) diligently, you will always have both the conception date as well as the filing date on record. Be sure to get confirmation of the IDPAW P-E version entries by a cohort when you are archive each iteration as taught in IP-BC’s the Schwartz Method. All references to the IP-BC course can be followed at the course website https://www.ipboostcamp.com .
Now, let’s put this in the context of patentable matter. Your invention (as opposed to a customer list or a process formulation for colored glass), from the date of its conception up until a patent on it is published, is a (trade) secret if you take the proper care and precautions not to disclose it publicly. Even after filing, if you decide not to file internationally, and indicate so in your filing packet, your application will not be published until it is allowed. If you don’t so indicate, then it will qualify for filing globally, and whether you ultimately do or don’t, after eighteen months it will automatically be published, along with all the claims in your specification (re: harmonization with global patent practices). Otherwise, it will remain a trade secret unless and until it is allowed and published. Keep in mind that since the United States is a first-to-file (instead of a first-to-invent) country, if a third party independently invents your idea using their own inventive process, and they file a patent on it before you (i.e., first), and successfully prosecute it to completion, they can get the monopoly rights for that idea, even though you might have conceived of it first.
2.2 Drafting basics
Drafting is the way you constructively turn your invention description into a legal document that can be examined on its merits for the award of a utility patent. It is a slippery slope since there can be many stages in converting your idea into a formal non-provisional utility patent application.
For this reason, I separate out the heavy lifting of the “engineering science” of drafting into Part 2. In Part 1, I include a discussion about drafting as a step in the sequence of events so the entire conversion process can be explored and understood. In Part 2, I explain why drafting is not an abstract art to be practiced only by IP shamans. There I detail what drafting is really all about and how to use the Schwartz Method to get an SCA patent application into play.
This book and my course hold a single purpose in using the Schwartz Method: to integrate the development of the patent application into the product development life cycle. As such, there are steps along the way when your invention will appear more and more like a patentable object, and each version of the story you tell about it approaches the best, right-first-time patent application you can file conterminously with the release of the product embodied by the claims in that patent application.
When we work through the fundamentals of what a patent is, a simple idea will help us separate the invention and its merits from the patent document itself and its merits. If you were the creator of a new story you wanted to publish in a book, you would craft your creative vision into a readable form that you would seek to have edited and published. If your story was truly original and a publisher agreed to turn it into a readable book and market it, then readership would determine if you made it to the NY Times bestseller list. If you copied the idea from someone, you would be stopped at the pass or found guilty of fraud after the fact.
Explaining patent construction benefits from a return to the metaphor of publishing an epic novel. Your idea might or might not make it to the NY Times bestseller list—in our case, making it through the corridor of patenting uncertainty to be published as an allowed patent. Its successful transition will be determined by its originality as well as its business model and commercial value. I make a concerted effort to distinguish between the draft of your object of invention as a utility patent application (i.e., this section) and the crafting of the formal patent application from the draft on your object of invention (later sections, esp. “Drafting guidelines”). The pathway for turning your idea into a patent must turn on the continual refocusing and iteration of your idea into a P-E worthy of patenting, keeping the fuzzy line between the two crisply separated. This separation will allow us insight and better choices of which doors to open down the corridor, with whom, and when.
2.3 Preparation of the DOC PAK and filing in your home country
There are state changes in converting your idea to a patent. The state will change from provisional to non-provisional if you start with a provisional first. In either case, you convert your invention into a patent by getting a patent application drafted (the complete section on drafting is in Part 2). Then a document packet (DOC PAK) is prepared, and it is filed. Once you convert to a non-provisional the pending patent application must be prosecuted to issue. In summary, on filing your application is in one of two states. It is either a provisional patent application or a non-provisional patent application. Each uses a different combination of documents required for filing.
You will find that for each filing choice for your patent application there is a different DOC PAK. That’s the term I use for the set of documents required for setting up your patent application and getting it filed. I do not cover the details of what’s in a completed DOC PAK here. I do provide a sample with the minimal set of forms for a provisional in IP-BC. Getting a DOC PAK prepared and ready for filing is simple and straightforward.
Patent attorneys as well as patent agents will typically use their paralegals or administrative assistants to prepare the documents that must accompany a patent application filing. In all fairness to the sequence of steps in your IP hunt on the pathway to patentship, this is the easiest, and you can make sure all of the records are prepared and sent to counsel, so they just have to review them and not create them. This will save you money, and when you need to review your package before it’s filed, it’s going to look like something you’re familiar with and the error checks you make before actual filing will be easier. If errors are found in these papers, they will be immediately flagged at the patent office, your application will be held, and you will be given an explanation and a short interval to perfect the papers. Don’t rack up wasted patent charges from counsel here. With the right preparation, your filing will be recorded, and you will get a recording date (which documents your filing date) in due course with no other rigmarole. Get these papers right the first time—it really is the easiest and most fun part of getting through the first ring of fire.
2.4 Patent choice (what to file): provisional or non-provisional
Of the two available application forms—provisional and non-provisional—the simpler one is a US provisional application. The provisional application is one way applicants seek an early filing date. Provisional applications are not examined and therefore never issue. This type of application requires completion of basic information including the invention title and the names of the inventor(s). The forms are submitted together with a required filing fee and the substantive patent application document. Provisional applications will include the detailed description of the invention and related figures. A provisional application may be filed without claims (more on this later). The filing date you get starts your one-year rule for that filing. I provide a sample of these forms in IP-BC/ADVANCED. All of these forms can be downloaded from the US Patent Office. When you submit, you can send a hard copy using express mail, but today the most practical approach is to open an account and file everything electronically.
You will find that the US non-provisional application has a more complex set of forms that require all the information required for the provisional application, as well as assignee, applicant, claim(s), claim count, additional documents like the chain of ownership, and an optional information disclosure statement (IDS), all with associated fees. Do not be intimidated by these documents. You have all of this information—just fill it in. No strategy is involved in filling out the forms. Strategy is involved in picking your type of filing, however. Non-provisional applications have strict MPEP requirements for the format and content. The non-provisional application, aka the utility patent application, if allowed, will publish and issue as a utility patent. If you filed a non-provisional application without having a provisional application on file, then the filing date is the filing date. If it publishes, that is the date it gets—there is no need for the one-year rule.
Currently a provisional application filing fee is $280, and a non-provisional application filing fee is $1,720. In the end, the actual fees will depend on number of claims, and this is all a straightforward parameter on the first page of the form for the filing packet.
One of the most important timing issues will be related to your game plan for international filing. Again, I cover this in more detail in Part 2. For now, just remember that in nearly every country, there is a requirement to maintain novelty for that patent application before filing there, meaning the international application must be filed in the designated country or countries before any public disclosure is made anywhere.
The one-year rule applies when using the provisional patent application. This means you have one year from the date of filing of a provisional application on your invention to convert it into a non-provisional application. As long as you keep the invention covered by the claims (if any) confidential, you will not breach your right to file in Paris Convention countries with your US Patent Office filing date.
Typically, if you use the Schwartz Method and file your provisional application right the first time, you can flip it from a provisional application into a non-provisional application without adding new information or changing the scope of the claim(s). As you will see, you’re always better off to have at least one claim in your provisional application. Anyone who doesn’t have a claim probably has not flushed out their P-E, and that is a recipe for disaster. When using a provisional application, if you don’t abandon it, the date you flip it to a non-provisional application is when the clock starts for examination on its merits.
During pendency, for either a provisional or a non-provisional application, you have a key right to place the term “patent pending” on the product or service covered in that application. The mark is valid while your application is pending and hasn’t expired or been abandoned. Since a provisional patent application does not require that a claim be submitted with it, this gets to be a grey area. Suffice it to say, you want to stay clear of any misrepresentation in using “patent pending.” Further, for all filing and prosecution processes, if you lie to the patent office, you risk being cited for fraud with some hefty fines and reprisals. In any system of democracy, there are laws for crimes and punishments, and the field of utility patenting is no different. When you decide to patent, and you have a patent application on file, then it’s not only your right but also your obligation to place “patent pending” on it when it’s marketed in any way. The reason for this is to ensure others know you are defining your territory, because if they willfully infringe and you successfully stop them, their penalties could be tripled. If they don’t know they are stepping on your grounds, then your options for damages will be curtailed. If you don’t include a claim in your provisional, you can still say patent pending however I advise doing this with caution so as not to overreach in your offensive maneuver.
2.5 Prosecution choice: Normal, Priority, Accelerated, Patent Prosecution Highway, and Special Petitions
There are a number of formalities for filing, and each will impact how your prosecution proceeds. When it comes to the choice of how to file, you will want to be aware of all of the ways to file. Here I list their basic features. For any of these, the simple objective is to move your patent application forward in the queue so it can be put on the desk of the examiner in your art group for examination on its merits. Here are basic elements of the filing choices and how they affect prosecution. In Part 2, I cover more on the prosecution request tactics and strategies.
Normal Examination (NE)
Pay your fee based on the number of independent and dependent claims in your non-provisional application and get in line. Waiting times can exceed one or two years depending on the art group you filed in.
Accelerated examination (AE)
If you have no more than three independent and twenty total claims during pendency and you pay an additional fee, you can accelerate the examination of your patent application. I mention some fees here. You must go to the US Patent Office website to check the current fees at the time you proceed. For example, the current fee is $140 for a large entity or $70 for a small entity. The request cannot be made with the filing of a request for continued examination (RCE). If you have to file an RCE, the filing of the RCE during accelerated examination (AE) does not terminate your AE status. If your petition is granted, the US Patent Office will advance you out of turn and commence examination. Accelerated examination has the most stringent requirements, and you are going to have to do most if not all of the work the examiner would do, ahead of time and with filing. Basically, you will need to prepare and file a much more robust form of IDS with a pre-examination search document and an AE support document. If the documents are incomplete, you will not be granted the petition. Your patent must be filed using the figure item numbers in the claim, and you must refer to every piece of art element and claim using that art in the IDS with their item numbers. The pre-examination search document must also include the search logic used. The support document must provide a detailed analysis of how your pending claims are distinguished from the closest prior art you identified using the respective item numbers. See Part 2 on filing tactics and strategy to assess and compare this to a prioritized examination (PE).
Prioritized Examination (PE)
For applications with no more than four independent and a total of thirty claims during pendency, the procedure offers expedited review of a patent application. With PE, you will get a final disposition within twelve months of your initial filing date. This procedure does not mandate a pre-examination search or the stringent document requirements. To do this, you must make your request at the time of filing of your initial application, or if and when seeking to continue prosecution after a final rejection, with your RCE. The fees should always be checked in advance. The patent office is going to have to do a lot more work and much faster, so you are going to have to pay for it. For large entities (500 employees or more), the current fee is $4,000. Small entities (500 employees or fewer) get a discounted fee of $2,000. Start-ups typically qualify as small entities unless they are owned by a large entity or have an exclusive license of a patent from a large entity. For the fee, the US Patent Office’s goal is to provide the final disposition within twelve months of the date on which the prioritized status was requested compared to two to four years for regular examination. A final disposition may be a notice of allowance, a final rejection, or a notice of abandonment. To keep to the schedule, you will have only three months to respond to any office action, and you cannot ask for an extension of time. If you miss a deadline, you can file an extension, but you will be returned to normal prosecution. If you get to a final rejection and decide to file an RCE to continue prosecution, PE ends, and you are back to normal prosecution.
Patent Prosecution Highway (PPH)
This form of prosecution can be requested if there is an allowed claim in a corresponding foreign application first, and the examiner in the United States has not yet issued a first office action on the merits. The foreign patent office report can be used in the US Patent Office as the first step in getting a US allowance for that claim. Check the fee.
Special Petitions (SP)
Petitions to make special can also come into play. A petition to make special can be filed to take your application out of turn. This can be done if (1) at least one of the inventors is over age sixty-five, (2) a request is made by the head of a government agency, (3) the patent relates to the environment, (4) the patent relates to the development of energy, or (5) the patent relates to counterterrorism.
2.6 Filing globally: International filing considerations
If filing globally, you are opting for a downstream sequence of events when you will be prosecuting your patent application at the patent offices in the foreign countries in which you have elected to pursue your monopoly rights. When you have executed a non-provisional patent application in your home country, there is a procedure to use the same application in elected countries. The foreign patent applications will be handled in each country, and where required, translation into the language of that country will be part of that process along with the applicable fees. This will all be handled by registered patent agents or patent attorneys in each country. You will want to take advantage of the Paris Convention for filing in target European geographies. You can opt for these any time during the first year in which you filed in your home country. Typically, these elections are made conterminously with the filing of the applications in your home country (here the United States) by filling in the appropriate form selections. Since the United States is a Paris Convention member, US applicants file first in the United States and then within one year they file in the other foreign countries of their choice. Subsequently, there will be what is called the national phase, which will occur within two to three years from when your initial filing was recorded—that is, your priority date. If you’re not careful in paring your patent application down to one invention and tightening up your patent to make it the shortest and most expressly scoped it can be, you are going to be in for a very expensive ride abroad.
The prosecution phase in foreign countries requires preparing and submitting any of your traversals to objections, related arguments, and, undesirably, any amendments in response to any foreign office action to the foreign agent either you or your patent counsel is in league with to file the actual foreign reply. It can get complicated very quickly.
A Paris Cooperation Treaty (PCT) application requires much of the same information as a US non-provisional application, including further variations in the filing packet such as which countries you are filing in, all of which are required before filing. It gets the filing date of the non-provisional application in your country of origin. If it publishes in a designated country, its filing date is assigned the one on your US application. The acts as an international framework for filing patent applications with access to at least 148 countries. The examination with the PCT process does not result in the grant of one, single international patent. Its purpose is to simplify the process of filing foreign applications, to defer the expenses associated with applying for patent protection in the foreign countries you select, and to provide an international patentability search report. With a PCT filing, the filing of each non-provisional application at the national stage is deferred for each country you select by about thirty months from your earliest priority date. Just know you will have to translate your patent application into the native language of each country you select unless they use or accept English. If you don’t use the Schwartz Method to ensure your application is tight (the shortest application under the circumstances) and you do file globally, be prepared to dig deep for translation costs.
You will need to comply with all of the formal format and structure points for the non-provisional application as well as for the PCT application. Use my sample DOC PAK to understand how this is set up along with my checklist to make sure you’ve got everything. Remember that the US Patent and Trademark Office forms site is the only source you need for all of the current forms and fees, along with each variation required for each type of filing.
You may be told that attempting to identify the proper forms and complete them correctly for filing is stressful and not recommended. It is actually easier than filing taxes. You will want to garner the expertise of experienced filers when deciding when and how to file, especially if you are filing globally. Remember the need as well to preserve absolute novelty if you seek to avoid becoming your own prior art.
Since the monopoly rights will be extended to a filer in each country where his or her patent is allowed, the choice of where to file should be linked to the geographies where you believe you will have your best potential sales. Just realize that if you pick one country over another, then a competitor can exercise your patent claims in the countries you don’t pick, with impunity.
2.7 Prosecution
In this section, I place prosecution in its natural sequence as an integral step in the conversion of an idea into a patent. I reserve the heavy lifting on prosecution for Part 2 as it is integrally tied to the drafting work covered there. I share key insights on how to make the prosecution part of the process as smooth as possible. Here I explain the basic back-and-forth that occurs with patent office rejections in order to expose the risks. In Part 2, I expand on the use of the Schwartz Method for avoiding FOARs before filing.
Domino sequence, moving from preparation to filing and prosecution
A good way to think about what is happening when moving from preparation to filing and prosecution is to think in terms of a set of dominos in a line. The idea is to tip the first domino over and have the entire sequence of events follow in like falling dominos. If you get stopped with a fatal office action rejection (FOAR), then you will not reach notice of allowance (NOA). The key notion in IP SAVVYS is to make sure you derisk from FOARS before filing. More on this later.
Discussing prosecution will benefit from keeping the before, during, and after time division in mind. The before step is getting the patent application in order, completing all documents, and setting up for payment of all required fees so the application can be filed and recorded. Once recorded, it will be examined in its proper art class in due course. A patent application will sit on the examiner’s desk—depending on the rate of queuing in the art unit and the rate of examination of the examiner the art unit is assigned to—for as long as it takes unless you do one of the accelerated filing procedures.
Remember that patent applications in the United States will publish at eighteen months from their earliest priority date unless you don’t plan to file globally and request non-publication. Any filed foreign applications will publish in eighteen months. It is entirely possible that your patent application along with all of its claims will publish before prosecution begins, and anyone can have a look at what you’ve got.
The term patent prosecution refers to the sequence of events that occurs after filing a non-provisional patent application that is in condition for examination on its merits. Remember that provisional patent applications sit before prosecution starts. They are not examined, so they never enter the prosecution phase. When a non-provisional patent application is finally examined on its merits, the during phase of patent prosecution has begun. This is a dynamic interval in which the examiner will seek a finding on the allowability of your claims, during which time you will have the right to traverse any of his or her objections in order to secure a properly scoped allowance.
From the time your patent application is filed with the US Patent Office, it can take on order of one year for examination, then one to two years for prosecution (or longer), depending on how it goes, meaning it could be upward of three years before your patent rights are granted.
Unless you abandon your application for some reason, you are locked into prosecuting your patent application once it’s filed. This sequence of events is one of the riskiest parts of the pathway to patentship, in terms of weakening the perceived quality of the application, as well as holding the greatest risks for budget busting. Prosecution will test the mettle of even the savviest IP hunters. Without doubt, this phase is the one planted with the most minefields, and since an issued patent will become a public record, every aspect of your dialogue with the examiner during prosecution will be captured and published in what is called the file wrapper. When that compilation publishes with your issued patent and is discoverable for any purpose by anyone, if you messed up during prosecution, your mistakes will be on show for all to ponder. Rest assured, the Schwartz Method is designed to de-risk your patent application so that if you have an allowable patent claim, it will publish cleanly.
2.8 In the clinches of prosecution with the examiner
Your prosecution will occur within the specific art units of your technology. There are different pending intervals for each art unit, and examiners work at different paces. The job of the examiner during prosecution is to assess patentability. Remember that this includes eligibility as well as novelty and nonobviousness. For eligibility, the examiner applies the current “rules on allowable matter.” For novelty and nonobviousness, the examiner performs his or her “mythical person” search in order to establish whether relevant prior art applies.
As a general rule, it is essential to take the iterative exchange with the examiner in the most constructive way possible, even if you get initial rejections on points you consider completely bogus. Try to see the examiner’s exchange as a thousand points of light—guidance through the morass of prior art and claim scope. This is the only way you as an applicant are informed by the examiner about the “patent worthiness” of your application. The patent office issues patent office actions, and the applicant responds. This goes on for however long it takes.
At the end of the day, in examination, the examiner will only consider what is claimed in your invention on the date of your filing and compare that to any aspect of the prior art found in order to determine if your stuff is obvious to someone skilled in the art.
Typically, an interview is requested if there is a sticking point, and the applicant believes a direct explanation will facilitate the case. Any inventor is permitted to be the lead in handling this phase, including the right to request and secure a direct interview with the examiner, as well as to petition for a higher review if the examiner finds against the claimed invention and gives a final rejection.
During this process, applicants (as inventors) can represent themselves—if they know what they’re doing. If and when an interview is requested, usually the examiner will grant it and give the applicant notice of the time and date. He or she will conduct the discussion with the applicant or an appointed power. The parties end the interview with an agreement on what was discussed and decided, and the examiner confirms by replying with details of the outcome. That paper will also become part of the file wrapper. European Patent Office interview procedures have the same objective (more on this in the section on the points of guidance on alternative ways to handle risk situations during prosecution).
The nature of an examiner’s investigation on merit is a little broader. What I mean is that an examiner can throw any aspect of any reference at your patent application. In the case of another patent, the examiner can even use the detailed description to determine your novelty or obviousness, even if the claims in that application cover something else. Basically, the examiner can do anything he or she wants with prior art in order to undermine your claims. The way the examiner does this is to state a determination that the art (or combination) “teaches in the direction” of one or more of your claims.
If eligible, you will receive the first of what I call a fatal office action rejection (FOAR), if and when the examiner is not convinced you are novel and unobvious. You have the right to argue this. This is called traversing the rejection, and you may do this in your reply to that action. This is the examiner’s shot across the bow or, worse, the uppercut as a first knockout punch in the slugfest that will ensue. If you haven’t done your homework with the Schwartz Method, you may find yourself in a world of hurt. There are a variety of FOARs to consider, and I cover them in Part 2 of the drafting section. The rejections can appear inscrutable unless and until you fully understand what it means to draft an airtight utility patent.
Some of the other rejections based on patent compliance might be combined in a single office action, citing multiple rejections. On the issue of eligibility and nonobviousness, it’s worth summarizing. When the question of patentability and obviousness is on the table, you must traverse it first. When rejections are made based on obviousness, they are typically made first and can use either one very compelling piece of prior art, or, at the examiner’s discretion, the combination of a plurality of prior art references (prior patents, published applications and uses, etc.) that “teach” your novelty—that is, the essential aspects claimed in your patent application for your invention. In a traversal reply, made within a predetermined time, the responder restates an accurate summary of everything the examiner said in order to reply to each objection separately, line by line, referring to the examiner’s points, whether in sequence or in a combination. The objective is to help the examiner see why the rejection(s) was/were baseless. All language must remain positive, and no statement that undermines the filing should be made, either accidently or intentionally.
The formation of a response to an office action follows a very simple format and is very much like a natural dialogue as in any debate. The format is designed to be read by the world, so its single purpose is to establish clarity on what is being separated out, found relevant, and either acceptable or not without any ambiguity for any party to the reading. It is essential to echo the examiner’s points in sequence and to respond to each one with a focused traversal.
Typically, in the traversal, the applicant gently shows the examiner the error of their ways by identifying supporting pointers from the applicant’s patent specifications (figures, description, identification of the delightful/unexpected behavior, and utility) and showing how the applicant’s claimed invention “teaches away” from the cited art or combination of art. It’s possible to argue in designing such a response that it would not have been obvious to combine the two or more cited cases, using the nonobvious angle in reverse. Commercial arguments can rely on the notion that no prior solution held as much economic sway as the one now seeking patent protection.
The simple rule of thumb is to include all potential prior art, whether individually compelling or in combination, in your IDS and write your patent application to clearly patent over all of it before filing. Look to the section in Part 2 on prosecution for insight on how to change this part of the conversation.
During prosecution, the interaction is metered by a clock. In reality, it’s a one-way street. The examiner can take as much time as needed to create his or her office action. If the action is a rejection and it’s not traversed, it will lead to intentional abandonment. And any response from the applicant must be timely made. The office action will stipulate the interval, typically one to three months. Thirty days will apply to technicalities that are easy to correct. Substantive rejections will be permitted a three-month response. If you do give up during prosecution (i.e., do not respond in time to a rejection and do not petition to extend the time for your reply), that is called intentional abandonment. In the preferred situation, the examiner will send a notice of allowance that confirms the patent is in condition for publishing, identifying allowable matter, and pointing out the supporting claim.
Why is this such a cumbersome and painful sequence of events? For one, it is rare that an examiner will identify “matter not shown (i.e., allowable matter)” on the initial examination and therefore not offer allowable notice when first office actions are completed (read that as a rejection). Sometimes the rejection is based on an easily correctable technicality. If it is based on a single piece of art, that’s a hard pill to swallow. If it’s based on a combination of other pieces of art (i.e., two or more), you may stand a better chance of traversing the rejection. Clearly, if it takes three pieces of prior art to unhook your claimed scope—the probability of you successfully traversing the rejection(s) goes up dramatically.
2.9 International prosecution
It is useful to note that if you file under the PCT, your application will be prosecuted separately by the EPO. You can actually ask that it be prosecuted first. One reason for doing that is that the EPO has a reputation for conducting more complete searches, therefore giving you a more productive prosecution. I will point out here (covered in more detail in the drafting section) that, if you choose expedited filing, you will have to place numbers for all of the elements of your invention into the claim (not only in the detailed description). For European applications, this is required. It is the standard for foreign applications. There is a requirement for using the numbers of any element of the object of invention in the claim itself. For now, just know that prosecution in a foreign office can occur before it occurs in your home country, but most certainly will continue in parallel at some point during prosecution for a global monopoly right.
2.10 Allowed, issued, term, maintenance, and defense
After you have an allowed patent, it can be used even more effectively (marking “patented” as compared to “patent pending”) to create a barrier to entry for a competitor, to serve as the basis of a contract or revenue-generating license, or to in some other way contribute to the value of a business—typically considered an intangible asset (check with your accountant on how to treat patents as assets, especially related to expenses and depreciation). When a potential investor or acquiring company sees how to further your or their own business model for commercially exploiting the patent rights, the asset can more readily be ascribed a tangible business value.
Granted utility patents have a maximum term of seventeen years from the date of issue or twenty years from the date of filing (for patent applications filed after June 8, 1995), as long as the required maintenance fees are paid at three and a half, seven and a half, and eleven and a half years following the grant. You get to keep your monopoly during the valid period as long as you have not committed fraud at the patent office and have policed your rights if an interloper seeks to practice any embodiment and markets a product that “reads on an issued claim in your patent.” If you licensed them, that’s one thing, but if they are operating without your authorization, then you have to deal with it.
If a competitor does use or sell an object of invention covered by your patent, it is your obligation to defend your rights, or you risk losing them. When and how to do this is a delicate dance and can hold great opportunity as well as risk. The use of cease and desist letters applies here, as do declaratory judgments filed by potential defendants. Damages can depend on a number of factors such as if and when an infringer knew they were infringing, whether they did so willfully, and the economic impact of the market conflict. These issues will be highlighted in the sections on business considerations, threats/costs, and patent tactics and strategies.
