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referred to as "patent prosecution." This process is carried out before
the United States Patent and Trademark Office and can take several
years depending upon the invention..
In the United States Patent and Trademark Office, examiners with
technical backgrounds conduct a substantive review of an application
in order to determine whether a patent should be granted. This
review will include a search for relevant prior art. Unlike trademark
practice, only registered patent attorneys or agents, or the inventors
themselves, can normally file and prosecute patent applications in the
Patent and Trademark Office.
While an inventor is free to apply for a patent himself, and there are
many manuals and treatises available to assist in this endeavor. We
strongly urge anyone interested in obtaining a patent to obtain the
assistance of a qualified patent attorney. Our patent practice group
has experience prosecuting applications in a wide variety of technical
areas, including all types of electronics and electrical systems,
computer architectures and networking, software applications, medical
devices, semiconductors, x-ray technology, motors and other
mechanical devices. Moreover, we are well aware of legal pitfalls and
doctrines and will work hard to ensure that you will obtain the
broadest protection possible.
After an application has been filed, it usually takes the U.S. Patent and
Trademark Office between approximately one and two years to
consider the application. In some instances, however, accelerated
examination may be requested.
Although the examiner's review sometimes results in an immediate
notice of allowance, in the vast majority of cases the examiner's review
results in an initial rejection. The rejection is typically based on either
a lack of novelty (35 U.S.C. 102) or obviousness (35 U.S.C. 103).
Alternatively or additionally, the claims be objected to as unclear
and/or non-enabled.
These rejections can be overcome in most applications by a skilled
and knowledgeable patent attorney. Therefore, an inventor should
not despair too much when the application is initially rejected. One
responds to a rejection by amending the claims and/or by arguing that
the examiner's rejection is ill-founded. This response may result in a
notice of allowance or another rejection. There may be several
iterations of this process, and one may appeal from a final rejection by
the examiner. It is important that a patent attorney handle the
prosecution of a patent application, as well as its drafting, since it is all
too easy to lose valuable patent coverage by amending the claims, or
even by arguing that the rejection is ill-founded.
After an application is allowed by the U.S. Patent and Trademark
Office, the patent is issued upon payment of the issue fee. The
prosecution history (called the "file wrapper"), including the rejections
and the responses, is made available to the public at the same time.
Three maintenance fees are required during the life of a utility patent,
which for applications filed after June 7, 1995 is twenty years from the
earliest effective filing date. Failure to pay a maintenance fee results in
the expiration of the patent. These fees also usually increase annually.
These materials have been prepared for informational purposes only and are not legal advice. This
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relationship. Internet subscribers and online readers should not act upon this information without
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