The process for
obtaining a patent is commonly referred to as
"patent prosecution." An inventor
must file an application in the U.S. Patent and
Trademark Office (PTO) less than one year after
the first open disclosure or sale of the
invention. The application must
include a specification, which describes and
clearly claims the invention, drawings (if
necessary), a model (if necessary), and an oath
or declaration of the inventor. 35
U.S.C § 111 et seq. A
patent examiner (PTO attorney) conducts an
examination of the application (37 C.F.R. § 1.1 et
seq.) by searching the prior art and
determining whether the invention satisfies the
legal requirements of patentability. If
the patent examiner allows the claims, the PTO
will issue the patent. There is a
two-year average time from patent filing to
issue.
The
six primary legal requirements of patentability
are:
(1)
Patentable Subject Matter. In
order to be patented, an invention must fall
within one of the categories of patentable
subject matter. Patentable subject
matter is defined as any "process, machine,
manufacture, or composition of matter," which
includes mechanical, electrical and chemical
technologies and processes. 35
U.S.C. § 101. Phenomena of nature,
mental processes and abstract intellectual
concepts are unpatentable subject matter.
(2) Utility. For
an invention to have utility, it must be useful. 35
U.S.C. § 101. Most inventions
easily meet this requirement, but things like
perpetual motion machines or drugs without known
uses may fail.
(3)
Novelty. The
invention must be new and original as compared
to previously known items. 35
U.S.C. § 102.
(4) Nonobviousness. Even
though an invention may be new or novel under 35
U.S.C. § 102, it will not
receive a patent if it is an obvious or trivial
modification of previously known items. 35
U.S.C. § 103.
(5)
Disclosure. Patent
applications must sufficiently disclose the
invention to enable a person skilled in the art
to make and practice (use) the invention. 35
U.S.C. § 112. Further, the patent
application must disclose the "best mode" of
carrying out the invention. Withholding
information because it is a trade secret may be
fatal to a patent.
(6)
Precise Claiming. The
patent application must include one or more
"claims." Claims are
"word-pictures" that define the legal boundaries
of the invention. The claims of
the patent are examined to determine the scope
of the patent's protection and are the most
important part of the patent application.
The term of a patent
is generally 20 years from the filing date. The
patent owner must pay maintenance fees at
certain times during the life of the patent. If
these fees are not paid on time, the patent
expires.
A patent
application may be filed pro se, that
is, by the inventor without an attorney. However,
due to the complex legal issues involved,
consulting a patent attorney is highly
recommended. Before visiting an
attorney, the inventor should complete the
Patent Questionnaire attached as part of this
program. The average cost of
preparing and filing an original utility patent
application on an invention of minimal
complexity is approximately $3500, and
additional charges are likely to be incurred
after filing. AIPLA 1995 Economic
Survey.
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