The process of applying for a patent, also known as patent prosecution, begins when the inventor, on his own or through his agent or attorney, files an application with the Patent Office for “examination.” The application includes essentially the same things that a patent would include-a specification describing the invention in detail, drawings, and claims.1 The Patent Office assigns the application to a patent examiner who has expert knowledge in the field of the invention. Because the Patent Office requires a filing fee, an issue fee, and various other fees, obtaining a patent can easily cost several thousand dollars, exclusive of any fees paid to a patent attorney or agent.2
The patent examiner searches for prior-art patents already granted on similar inventions to determine whether the invention claimed in the application is new and nonobvious.3 The examiner also reviews the application to determine whether it meets the other requirements of a valid patent, such as having claims that are sufficiently definite.4 After reviewing the application and searching for prior art, the examiner prepares a written Office Action to tell the applicant which claims are “allowed” or rejected and to explain any problems with the application. In many cases the examiner will
1 As discussed below, a provisional application may omit the claims.
2 Reduced fees are available to individuals and “small entities” (see MPEP § 509.02), but
the costs are still considerable. A current fee schedule can be obtained by calling the
General Information Services Division at (800) 786–9199 or by visiting the PTO Web site
3See Section 8.9.
4See Section 8.5.