Patenting Activities

Patent activities are controlled by federal law.

All patent activities in the U.S. are governed by laws embodied in USC 35. Additional information about how these activities should be conducted is found in Title 37 of Code of Federal Regulations, and in the Manual for Patent Examining Procedures, or MPEP. These works are often very complex, which is why a patent attorney or patent agent is often necessary for successful patent activities.

Prior Art Search

Inventors, or their counsel, start the patent process by making sure their invention is patentable. Sections 102 and 103 of Title 35 U.S.C provide that an invention may be patentable if it is novel and non-obvious. This means that the invention is new, and that it would not be obvious to one reasonably skilled in the art. Conducting a prior art search means looking at other patents, patent applications and other publications to determine if the invention satisfies the criteria of Sections 102 and 103 of U.S.C. 35.

Drafting Specifications

Drafting the specification of a patent application means disclosing everything that is reasonably necessary for one skilled in the field to make and use the invention. This specification is written in a very stylized form, and includes any number of drawings or flow charts that show how the invention is constructed or how it is used.

Drafting Claims

Carefully drafted patent claims are essential to the success of a patent application. Just as real property is defined in terms of metes and bounds, intellectual property is defined using claim language. Drafting claims requires a knowledge of the regulations and a sense how best to draft a claim to make it allowable by the patent office. Understanding how comparable claims have been litigated also helps when drafting claims.

Office Actions

A patent examiner may approve, reject or object to individuals' claims in a patent application. If he objects or rejects a claim, the examiner must explain why, in an official document called an Office Action. The attorney or agent then responds to the Office Action, either by appealing the rejection or requesting reconsideration. They can explain why they felt the patent examiner was wrong, or can amend the claims of the application, if needed.

Paying Fees

If a patent application is allowed, the attorney must pay an issue fee and a publication fee. Additional fees are due 3 1/2, 7 1/2 and 11 1/2 years after issuance. As long as the fees are paid, the inventor can prevent anyone else from making or using the invention for the duration of the patent term.

References

• USPTO: Maintain Your Patent
• USPTO: 35 U.S.C. 102
• USPTO: 35 U.S.C. 103