A patent application is a request filed before a patent office in which an applicant applies for a patent for an invention.
As a matter of public policy, the text contained in a patent application is required to sufficiently reveal how an invention works to justify the grant of the patent. A patent application is examined in most jurisdictions.
In most countries, the first to file a patent application for the invention is presumed to be the owner of the rights to the invention. The date of filing and the content of the first application for an invention largely determine forever the potential validity and value of that patent, and the ability to file for similar patents in other countries.
Preparation before filing the application
An inventor may draft and file his or her own application, but it is often done by an authorized representative (a patent attorney or registered patent agent). A set of inventors meets with an attorney or patent agent who will draft the application, and they discuss the details of the invention and how best to proceed. The drafter may suggest a preliminary search of related inventions or other "prior art" that could limit the scope of the patent claims and thus the value of the patent. A formalized specification and any necessary drawings are made by collaboration. Finally, if required by the type of application, claims are drafted.
The application is then filed (using paper, fax or electronic means), along with various fees and administrative documents and references. Depending upon the mode of filing, and if all necessary parts are received and acceptable, a filing receipt is generated with an application number and sent to the applicant or his representative. The applicant may then mark its invention with the "patent pending" on the invention, if desired. Supplemental documents and fees are often filed later than the original application, but prior to publication or substantive examination of the application (if filed in a jurisdiction requiring examination).
Filing of the application
An application must be filed in any country in which patent protection is desired. An international application can reserve the right to file national applications later in designated or elected countries. As a practical matter, it is important to file an initial application before anyone else invents, describes, uses, applies for a patent, or patents the invention anywhere.
There are statutory limitations on the latest date by which an initial application must be filed. Among these is the requirement of strict novelty, which requires filing of an application prior to any public use or disclosure of the invention. In the United States, an inventor has a grace period of one year from the date of public use, disclosure, or sale of the invention to file the first application, although the unprotected use or disclosure may have already destroyed the opportunity for obtaining a patent elsewhere. Some Asian countries have adopted a similar 6-month grace period.
Because of the tension between the need for early publication of important developments and the requirement of strict novelty, there have been some proposals for relaxing or modifying the principle of strict novelty in the last few years.
Types of applications
There are several different kinds of applications, depending upon what type of new and useful subject matter is disclosed, how the applicant desires to protect the invention, and whether the applicant has other related applications pending. The major types in U.S. practice are the provisional, design, plant and (most of all) "utility" applications. After the initial application is filed, there may be additional applications made for various procedural reasons, including the continuation, continuation-in-part and divisional. Here are the basic differences between the major types:
- Provisional: an inexpensive application requiring full disclosure, but does not require claims to an invention. Expires in 12 months if not supplemented with other filings, usually a Utility application or an international application. No limit to number of provisionals to file. Often used to reserve a date of filing priority for the invention.
- Design: cover new ornamental designs for an "article of manufacture."
- Plant: protects discoveries of distinct asexually produced plants or newly discovered seedlings;
- "Utility" Application: This type of application is the most common and is used for claiming subject matter in the categories of machines, processes and articles of manufacture. Also known as "national" application or "non-provisional" application.
It is quite common for a company to file multiple applications (including different types) for the same product, intending to cover various inventive aspects, such as the appearance, operation, production, and use of a product.
Content of an application
Regulations require strict adherence to form when drafting a patent application. Among other requirements, it must be on acceptable paper (correct size, color, shape, texture), have correct page numbering, margins, spacing, and typing in an acceptable font and language. A national application must usually be submitted in the native language, or be accompanied by an accurate translation into an acceptable language.
A "complete" application, for the purpose of receiving a filing date, must include (as a minimum) the required specification, drawing, and at least one claim. An acceptable specification must include a clear and concise description of the invention and how to make and use it. A drawing (which must also be put into a standardized form) should facilitate understanding of the invention or its operation. Finally, at least one claim must clearly identify the inventive elements for which the inventor asserts protection. Claiming practices vary widely from one country to another.
Each section of the specification should have an uppercase heading. The preferred arrangement of the required sections in a specification of a US application is:
- the title,
- cross references,
- government license rights (if any),
- background (field of invention and prior state of the art),
- a summary of the invention,
- description of the drawings,
- detailed description of the invention,
- claims, and
- an abstract of the disclosure.
The specific contents and sequence of sections in design and plant patent applications are rather different. A provisional application should follow a similar format, but is not required to be of any particular form. In fact, some provisional applications are little more than an engineering specification with a cover sheet and power of attorney.
By definition, a patent application discloses intellectual property of the inventors. When an application is published or a patent issued, anything in the application file that derived its value from being a trade secret becomes public knowledge. Similarly, any of the applicant's unpublished or abandoned applications referenced by a published application or issued patent are also open to the public. The dilemma is that an applicant's secrets may be revealed, but cannot be protected until and unless a patent is issued.
For anyone tempted to withhold information intentionally when filing an application, it is important to note that it is nearly impossible to add new information about the invention to a patent application once it has been initially filed. If the missing information is later deemed essential to the disclosure, the omission from the original may have far-reaching legal implications; beyond the ultimate dismissal of the application.
All provisional, national and international applications filed in the USPTO are reviewed for issues of national security and a secrecy order may be imposed, prohibiting publication, allowance, or international transmittal.
The patent office receiving an incomplete application will typically notify the applicant of the deficiency and permit some period in which it may be corrected. The time period does not apply to missing parts that are essential to a filing date; if those parts are not filed in the patent office before midnight, there will be a later filing date on the application. In particular, the USPTO requires prompt submission of the inventors' signed oath and declaration and the filing fees (with late penalty). Failure to file the required missing parts will result in the application becoming abandoned and marked for disposal.
Later filings of supplemental parts in an application
The original application date and its contents at that time are critical elements in the value of a patent and whether a patent may be granted and enforced. However, some administrative documents, fees and amendments can be submitted at a later date. As part of prosecution of the application, amendments to claims and abstracts can be filed up until the time a patent is issued.
Other later documents that may be filed prior to examination of the application include: preliminary amendments to claims, formalized drawings, formalized specification (e.g., on the correct size of paper), itemized information disclosure statements with copies of prior art documents, power of attorney, and change of correspondence address.
Note that an assignment of ownership of an invention and its relevant applications may be filed with the original package, but is not strictly speaking part of the application to be examined. Therefore, later filing of an assignment should be made to the appropriate recordation branch, rather than the examination branch.
A patent examination is the process by which a patent office determines whether a patent application meets the requirements for granting the exclusive rights conveyed with a patent. The process widely differs from country to country.
In a jurisdiction that performs a "substantive examination", a search of prior art is usually made and the claimed invention is compared with the relevant prior art. After initial examination, an application is frequently "rejected" for alleged lack of patentability on one or more grounds. An applicant then has a limited time in which to "respond" to the rejection with arguments, evidence, and possibly amendments to claims. An applicant may also decide to file a different or additional application (such as a continuation-in-part in the United States), depending upon the grounds of rejection. An examiner may also object to the application for failure to comply with standards of form and procedure, and the applicant must generally make the required corrections within a specified time. Once all objections and rejections have been overcome, the applicant is notified that the patent is "allowed" and will be "issued" upon payment of the issue fee. After payment of the fee, the patent is put into final form and issued and "published" on a specific date.
If the examiner makes a "final rejection" of an application after further examination in view of a response by the applicant, the file will become abandoned unless the applicant timely files an appeal or a continuation.
An international application may also be the basis for an international search by an "international searching authority" (ISA) and for an international preliminary examination by an "international preliminary examination authority" (IPEA) from which a report is generated.
Other related patent office filings
- A request for re-examination is an application for reconsideration of an issued patent in light of additional evidence of the prior art.
- A refile (or substitute) application is merely a resubmission of an application (provisional or other) that previously went abandoned, and derives no benefit from the abandoned file.
- An application for Statutory invention registration is not an application for a patent.
- An international application is not an application for a patent, but rather a request to reserve the right to subsequently file a national application in one or more designated countries.
- A petition to make special is a request for expedited handling of an application, based upon certain special circumstances that may permit .
An applicant may file either a national or international (PCT) application, or both. The national application is generally as described above, and each country has different regulations and requirements for pursuing an application in its patent offices. With minor additions, a national application can also meet the requirements of form for filing a PCT application. An international application will not, by itself, result in a national application in any country, but reserves the applicant's right to later file national applications in designated countries.
A PCT application is required to include the name of an applicant, a description of the invention, one or more claims, any required drawings, and a designation of one or more countries, along with some indication that the applicant desires international treatment for the application.
Note that if an invention was made in the United States, a license from the USPTO (or six-month waiting period after an application is filed in the USPTO) is required before filing of a foreign patent application, or registration of a utility model or industrial design.
- Changing the specification, drawings, or preliminary amendments of an application after the inventors have signed the oath and prior to filing the application is generally fraudulent.
- A non-registered attorney or agent may work on an application under supervision of someone registered, but should not deal directly with clients or the patent office. Similarly, just because someone is a registered patent attorney does not mean that person knows much about patents, applications, or the current rules.
- Every person substantively involved in the filing or prosecution of an application has a duty to disclose to the patent office any "information material to patentability" of claims, if such person is associated with the inventor or other owner of the application.
Access to application files
Only authorized personnel may have access to the information in or about unpublished applications. Outside of the patent office this usually includes only the applicant's attorney or agent, but applicants may also extend permission to others, such potential investors who wish to examine the official records.
History of application process
Under eariler statutes, a U.S. inventor was required to send a model of the invention to the USPTO. Many patent offices continually modernize their practices to keep up with modern technology, for example, permitting applications to be filed electronically or with CD-ROM references, rather than typewritten on paper.
Management of application load
The USPTO provides periodic statistics regarding the number of applications filed and the status of applications in each internal office handling specific types of technology. An applicant may review such weekly data in the Official Gazette for an estimate of how long it may take to have an application examined.
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