Patent Law Essentials: A Concise Guide

By Alan L. Durham | Go to book overview

CHAPTER 5
Patent Prosecution

5.1 EXAMINATION

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
at http://www.uspto.gov.

3See Section 8.9.

4See Section 8.5.

-31-

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Patent Law Essentials: A Concise Guide
Table of contents

Table of contents

  • Title Page i
  • Contents iii
  • Preface vii
  • Chapter 1 - Overview 1
  • Chapter 2 - Patents Distinguished from Other Rights 9
  • Chapter 3 - Reading a Patent 15
  • Chapter 4 - Patentable Subject Matter 23
  • Chapter 5 - Patent Prosecution 31
  • Chapter 6 - Ownership and Other Rights 43
  • Chapter 7 - Interpreting Patent Claims 51
  • Chapter 8 - Conditions of Patentability 67
  • Chapter 9 - Enforceability Defenses 127
  • Chapter 10 - Infringement 135
  • Chapter 11 - Patent Litigation 171
  • Chapter 12 - Special Topics 195
  • Note on Sources 211
  • Appendix A - Sample Utility Patents 213
  • Appendix B - Sample Design Patents 231
  • Index 249
  • About the Author 255
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