Keith L. Jenkins, Registered Patent Attorney, LLC


The following is provided for informational purposes only and should not be taken as legal advice.  Consult a patent attorney in person for legal advice.

What is a patent?
    A patent is a a Government grant of time-limited monopoly rights to an invention or discovery.  A patent empowers the owner to exclude others from making, using, selling, or offering for sale the invention claimed in the patent.  A patent is personal property and may be sold, leased, or otherwise transfered as personal property. 

What is an invention?
   An invention is a process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof that the inventor has actually or constructively reduced to practice.  Cultivated plants may also be patented.  Design patents, which cover only the external appearance of an article of manufacture, are also available. 

What is "reduction to practice"?
   An invention is actually reduced to practice if the inventor has made a physical embodiment of the invention.  An invention is constructively reduced to practice if the inventor can describe to a person of ordinary skill in the art how to make and use the invention, to a degree of detail that would enable the person of ordinary skill in the art to make and use the invention without undue experimentation.  Generally, constructive reduction to practice is as effective as actual reduction to practice for patent purposes.  However, perpetual motion machines and other devices that appear to violate the laws of physics must be actually reduced to practice.

How does an inventor obtain a patent?
    The inventor, or someone to whom the inventor has transferred rights in the invention or to whom the inventor has a legal obligation to transfer the invention, must file a patent application with the United States Patent and Trademark Office (USPTO) and prosecute the application to final resolution.  The invention must be novel (no one has done exactly what is claimed before) and non-obvious to a person of ordinary skill in the art. 

What are the steps in the patent application process?
    First, it is wise to have a professional patent search performed.  The search should identify prior art that is similar to the new invention being considered for application.  Sometimes, the same invention is found, already patented or applied for.  More often, prior art is found that has some similarities and some differences from the new invention.  Finding this prior art is important, because it enables the patent attorney to write the new application in a way that does not infringe on the prior art.  Searches do not guarantee that all prior art will be found.
    Second, if the search indicates a possibility of success, a patent application is drafted by the patent attorney and, after some review cycles with the client, is ready to file in the USPTO. 
   Third, the patent application is filed in the USPTO along with the appropriate Government fees.  The applicant for patent has "patent pending" status as of the date of filing an acceptable application.  Filing an original patent application also reserves your right to file the patent application in foreign countries.
    Fourth, within six weeks, the USPTO issues an official filing receipt, showing that the application was acceptable, providing a foreign filing license (in most cases), and recording an official filing date.  This completes the application process.

What are the steps in patent prosecution?
   Within a few years, depending on the type of application, a patent examiner in the USPTO will issue a first "office action" regarding the patent application.  The office action will explain all rejections and objections that the examiner has to the application, and will usually reject all claims.  "Objections" are concerned with what the examiner regards as technical flaws in the application, and are generally easy to fix.  "Rejections" are concerned with what the examiner regards as substantial obstacles to patentability.  Sometimes the examiner is correct, and the orignal claims have to be amended to avoid the rejection.  Sometimes the examiner is not correct, and an argument or "traverse" is made by the patent attorney.  There may be multiple office actions in one application.  If and when the examiner allows some or all of the claims, the applicant can accept the allowed claims and have a patent issue.
    There are many avenues through patent prosecution, the above being the most simple. 

What are the steps in patent issuance?
   When the examiner issues a Notice of Allowance and Notice of Fees Due, the applicant has 3 months to pay the issue and publication fees, as required, to convert the allowed patent application into an issued patent.  The patent usually is published within 3 months of issue fee payment.

What is a provisional patent application?
    A provisional patent application is a placeholder application filed with the USPTO.  A provisional patent application NEVER becomes a patent.  A provisional patent application provides the applicant with "patent pending" status and a priority date, and preserves international and domestic filing rights for one year.  Anytime within that one year, the applicant may file a non-provisional utility (regular) patent application that has the benefit of the same priority date as the provisional patent application for subject matter that is in the provisional patent application.  There is no such thing as a "provisional patent".  

What is "first to invent"?
    In the beginning, the US patent system  accorded priority of invention to the person who is the first inventor and who was diligent in getting to the patent office after inventing.  This system of priority determination was called "first to invent" and only arose when two separate applications claim the same invention.   Meanwhile, the rest of the world used a "first to file" method of determining priority: the first-filed application in the patent office wins.  On March 16, 2013, the US adopted a "first to file" method of determining priority of invention.  This  makes it important to get the application filed quickly, once the invention is complete. 

What is "Accelerated Examination"?
The USPTO has two approaches to assuring the applicant of a decision on his application within one year, known as "accelerated examination" and "Track 1".  Both approaches involve significant additional costs, but have the potential of providing enforceable rights at the front end of product life.  With the rate that some technologies obsolesce, i.e., electronics, this can be a critical advantage.  Whether the additional cost is worthwhile for a particular case is a business decision that the applicant must make.

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