This article provides a brief introduction to the U.S. patent system. It covers various stages involved in obtaining a U.S. patent including filing of a patent application, publication of the application, substantive examination of the application, and grant of the application. This article will also identify the documents necessary for submission to the United States Patent and Trademark Office (“USPTO”) and a time that will take to receive a patent from the USPTO. Finally, the article provides a brief but to the point guidance on how to draft applications directed toward computer and software innovations in view of the recent case laws.
The United States patent system was established by the U.S. Constitution (Article 1, Section 8). The laws governing the patent system are described in Statutes (35 USC) issued by our congress, procedures for obtaining patents, termed Rules of Practice, are found in Regulations (37 CFR) published by the USPTO (United States Patent and Trademark Office), and detailed examination practice is set forth in detail in a manual (MPEP), written for examiners by the USPTO, but available to the public. These materials, together with court cases that interpret our laws, are fundamental to patent practice in the United States.
U.S. patents are available for technology that is useful, new and unobvious over prior art. This includes computer and software inventions, if not performing something abstract such as processing mathematical algorithms or performing activities that could otherwise be performed by humans. Generally, inventions implemented by a computer that could be done by mind or hand, even if inefficient to do so, are not patentable because considered too abstract.
A U.S. patent, once issued, is enforceable for a term of 20 years from the date of filing. The term may be extended in some cases where the USPTO has caused delays in processing, but term is not renewable. Ordinarily, a patent will issue in from between 18 months to three years or more from filing, depending on complexity of prosecution, examiner backlog and examination strategy.
A U.S. patent application requires, in addition to a filing fee, a written description of the invention including any needed drawings, claims and a signed declaration. The application may be based on, and use the same description and claims (translated into English) as, an earlier patent application filed in a country outside of the U.S. less than one year previously. An assignment of patent rights to a company, if the company owns the invention, usually accompanies the application as a part of the declaration. The application will normally be filed in the name of the company as the applicant, although the inventors must be identified in the filing papers. Information on the application is provided to the USPTO in an Application Data Sheet (ADS) that will accompany the application. These formalities are all handled by your patent agent and attorneys in the U.S.
Care must be taken in the application to ensure that the invention is thoroughly described, said to require enough technical detail to enable a person skilled in the technology to which the application pertains to make and use the invention. The application will normally contain up to 20 claims, which are covered by the application filing fee, although a greater number of claims is permitted at increased fee.
If the U.S. application is based on an earlier filed non-U.S. application, the original non-U.S. application, translated into English, is often used to prepare the U.S. application, at least for initial filing. The U.S. application may include disclosure and claims that extend beyond what was disclosed in the original non-U.S. application. However, the non-U.S. priority filing date will apply only to material that was presented in the non-U.S. application.
An important component of the application filing papers is an information disclosure statement (IDS), which lists all prior art known to the applicant that may be relevant to patentability. The prior art is simply listed without comment. The IDS should be presented with the original application filing, if prior art is known at the time of filing, and must be updated promptly during prosecution as new prior art becomes known. This often occurs as prior art surfaces during processing of the earlier or later filed non-U.S. application.
After the application is filed, it will be evaluated by an administrator for classification of the invention claimed in the application. From there the application is forwarded to an appropriate examination group for assignment to an examiner who is selected based on the examiner’s technical specialty and existing workload. If no special status is applied to the application, such as by an applicant’s petition for expedited handling, or for some other reason, the application will be taken up in the order in which it is filed. Meanwhile, the application will be automatically published 18 months from the U.S. filing date, or the filing date of the earlier filed non-U.S. application assuming one exists.
The examiner or an administrator at the USPTO will make an initial review of the application to confirm that formal requirements have been met. The examiner may issue a “restriction requirement” if the application is found to claim more than one examinable invention. If so, examination of only one invention which you will select is made; the remaining inventions must be handled in “divisional applications” filed with additional filing fees at any time until the current application completes.
The examiner will next carry out a search of prior art based on the claims of the application. The examiner ordinarily will issue an “office action,” often with an initial rejection based on prior art, or based on claim indefiniteness, disclosure shortcomings or failure to comply with the formal requirements.
The office action must be responded to within three months, although up to an additional three months of time can be obtained for response by payment of a fee. The response must address all issues raised in the office action. The disclosure or drawings may be revised for better form, although no technical material may be added. The claims may be amended. Furthermore, the claims may be canceled and new claims may be added. The 20 claim limitation may be exceed by payment of an additional claim fee.
An important component of the response is the “remarks,” which is a written statement explaining how the response has successfully addressed the rejections, with particular emphasis on how the invention, as now claimed, distinguishes over the prior art. You will work closely with your patent practitioner to craft any necessary claim amendments, and develop a strong technical argument supporting patentability of the claims over the prior art. Care must be taken during this time to draft a strategic response because anything said becomes a part of the public record and can be used to interpret the fair scope of the claims which ultimately issue.
The examiner, taking the response into consideration, may issue an allowance of the application for passage to issuance, or may issue a second office action if the response is found not to be persuasive. Alternatively, the second office action may be issued because, based on further searching, the examiner has uncovered new prior art addressing the points made in the response. This second office action often is made “final,” meaning that no further amendments considered substantive may be made. Further prosecution at this point will require either an appeal of the rejection or filing of a “continuation application,” requiring payment of another filing fee. There is no limit to the number of continuation applications that can be filed, although the 20 year term of any patent that ultimately issues, measured from the date of original application filing, or from the priority date if any, to date of issuance of the continuation, will usually be shortened.
Appeal of a final rejection may be made to the USPTO Board of Appeals, which will carry out an independent assessment on patentability based on the developed record. Appeal from an adverse decision by the Board may be made using the U.S. court system up to the Supreme Court.
Upon allowance of the application, an issue fee must be paid. The patent will issue within several weeks from payment. After issuance, maintenance fees, increasing in amount, must be paid at 3.5, 7.5 and 14.5 years from issuance.
Particular considerations must be made for applications on inventions relating to computer-implemented and software inventions. How the USPTO and courts handle such applications is still in flux. Accordingly, many applications on computer implementations and software have been rejected, and patents found invalid, because computer and software implemented inventions often fall into the category of “abstract.” Thus, care must be taken to characterize such inventions as being in a non-abstract technical field. Improving on a technology outside software or ordinary computer implementation, or doing more than performing an abstract function using more than standard computer components, is not considered “abstract.” A patentable invention may be an improvement to a computer itself, for example by improving data processing speed, reducing memory requirements or performing improved functionality in some other way. A successful application in this field thus often will describe the invention as a solution to a specific technical problem involving the computer itself or to a technical improvement to some other environment. The disclosure and claims of the application should be presented in this manner, when possible. Other examples of patentable inventions in this field have been identified by courts, and are evolving. We are aware of the latest laws and can guide you.