6. What percentage of patent applications result in a patent being issued?

About 65% of all patent applications result in an issued patent. The rest of them (35%) has to be abandoned due to lack of finance, rejection many times by examiner, a dropped market demand …

7. What is the first step in obtaining a patent?

The first step should be to ensure that the invention is formally documented. The United States has a 'first to invent' patent system, as opposed to most other countries who have a 'first to file' system. In the U.S. if two inventors try to obtain patent protection on the same basic invention, it is the one who can prove he/she was the first to conceive the invention who will obtain the patent. Therefore, an inventor should keep a notebook or other written document (Invention Disclosure) of what the invention is, when it was invented, basically how it works, how it can be used, why it is useful, diagrams and sketches, etc., and have the document witnessed and dated under the words 'WITNESSED AND UNDERSTOOD' by two reliable friends who can understand the principles of the invention. The inventor can also submit the invention disclosure to the PTO Document Disclosure Program, where it will be retained for up to two years pending the submission of a patent application.

8. What is a patent search?

The inventor can pay a patent search company to search previously issued U.S. patents/pending applications to see if the invention already exists. Foreign patents may also be searched, however the cost can increase considerably. If the search is successful, and indeed the invention does already exist, the inventor is then spared the expense of trying to obtain a patent on something which is not patentable. On the other hand, if the search does not uncover any previous patent/pending application which contains the features of the invention, it does not guarantee that a patent may be obtained. It takes a long time (months or years) to successfully prosecute the application, and requires amendment to the claims to avoid the applied prior arts by USPTO examiners. Then, the application may be issued as a patent.

9. What are the parts of a patent application?

A patent application is a document which presents the inventor's case for obtaining a patent. Applications are exceedingly stylized and must have an exact content prepared in accordance with exact format requirements. If they do not, the USPTO may refuse to examine the application. The basic parts of a patent application are:

(1) the disclosure which describes in detail all the features of the invention,

(2) the claims which set forth in legal language what is patented, and (3) the drawings which show the invention as described in the disclosure and claims. A typical application will consist of 10-20 pages of text and 5-10 sheets of drawings.

10. What are claims?

Claims are the most important part of a patent. They are the legal words in the patent which specifically describe what is patented, much as a legal property description defines the boundaries of real property. The drawings and disclosure of a patent only exist to support the claims. A typical patent application contains about twenty claims. The PTO charges an additional per claim fee to examine over twenty claims, and over three independent claims.

11. Do all patents provide the same level of protection?

Definitely not! If a patent has broad claims (claims with few limitations), it is more difficult for a potential infringer to circumvent, and is therefore a strong patent. Conversely, if a patent has narrow claims (claims with many limitations), it is easier for a potential infringer to make minor design changes to circumvent the patent, and is therefore a weak patent. In the patent application process, the USPTO Examiner will argue for narrow claims, while the inventor (or attorney/agent) will naturally argue for broad claims. Generally speaking, the fewer features the broader scope of the claim. This is because it contains fewer words and therefore fewer limitations.

12. What does 'Patent Pending' mean?

Sometimes inventors may wish to market their inventions without waiting for the patent to issue. The term patent pending may be marked upon a product as soon as, but never before, the patent application is submitted to the USPTO. This term serves as a warning to others that a patent on the invention may be issued shortly. However, until the patent actually issues, another party can make, use, and sell the invention. Once the patent issues, the actual patent number replaces the patent pending marking.

13. On what basis can the PTO reject an application?

The USPTO Examiner will search through issued patents (prior art), and attempt to find one or more primary patents which contain as many of the features of the invention as possible. The Examiner may search either domestic or foreign patents, or on rare occasions other documents such as a technical journals (IEEE…). If the Examiner finds a single issued patent that contains all of the features of the invention, he/she will reject the application on the grounds that it lacks novelty. That is, the invention already exists and is therefore not patentable. If the Examiner cannot find a single patent which contains all the features of the invention, he/she will then look for a secondary patent or patents which contain the missing features. If the Examiner can combine a primary patent and one or more secondary patents such that in total they have all the features of the invention, he/she will reject the application on the grounds that it is obvious. In other words, it would have been obvious to a skilled person to combine the features of the primary and secondary prior art and thereby result in the invention. An obviousness rejection is oftentimes subjective and is therefore usually more difficult to overcome than a novelty rejection. Then, the inventor (attorney/agent) has to argue to overcome the Examiner’s rejections.

14. What are amendments?

An amendment is a change to a patent application, made by the patent attorney or agent, which modifies the application to get around the Examiner's rejections. Most often the claims will be adjusted to add invention feature limitations which distinguish the invention from the prior art cited by the Examiner. Sometimes this process requires a second amendment. It is important to note that once an application is submitted no new material may be added. For example, if after application submission, the inventor discovers a new refinement which greatly improves the performance of the invention, this feature may not be added to the present application. Rather, a new application is required.

15. What is a Notice of Allowance?

Great news! A Notice of Allowance is issued by the USPTO if one or more of the independent claims of the application are allowed. This means that once the issue fee is paid (within three months), a patent will be issued.

16. Other than prior art, what can prevent a patent from being obtained?

Several occurrences can prevent a patent from being obtained. In the U.S., if an invention is exposed, such as at a trade show, in a magazine or other printed publication, sold, offered for sale, used in public, or the like, then the inventor only has one year from the time of exposure to submit a patent application. If an application is not filed within the one year grace period, and depending upon the exact circumstances of the exposure, it may not be possible to obtain a patent on the invention. For example, if a sample of the invention is sold at a trade show, the inventor must submit an application within one year or a patent can never be obtained. Another requirement for obtaining a patent is that the inventor must make a complete disclosure of the invention. That is, the inventor cannot withhold or otherwise keep secret any pertinent information regarding the invention. If this is not done, either the patent will not be allowed, or worse, after issue may be found invalid.

17. What about foreign filing?

A U.S. patent only prevents others from making, using, or selling the invention within the United States. If patent protection in other countries is also desired, then applications should be filed in those countries as well. This should be done within one year of the United States filing in order to maintain the U.S. filing date. Also, it is very important to note that almost all foreign countries do not have a one year grace period within which a patent may be filed after disclosure of the invention. Therefore, if an inventor intends to file in one or more foreign countries, it is mandatory the invention be kept secret until an application is filed. If not, a foreign patent can never be obtained.

18. Once issued, is a patent a done deal?

In the vast majority of cases the answer is yes. However, in a very few instances the validity of an issued patent is still being challenged in the courts and the patent is subsequently found to be invalid. As this is an exceedingly expensive process, it most frequently occurs in disagreements between large corporations.

19. 35 U.S.C. 101 Inventions patentable. – US Patent Laws:

35 U.S.C. 101 Inventions patentable:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. § 102. Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless —

• (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
• (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
• (c) he has abandoned the invention, or
• (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
• (e) the invention was described in—
  • (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States was published under Article 21(2)(a) of such treaty in the English language; or
  • (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a); or
• (f) he did not himself invent the subject matter sought to be patented, or
• (g)
  • (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or
  • (2) before such person’s invention thereof,the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

35 U.S.C. § 103. Conditions for patentability; non-obvious subject matter.

• (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
• (b)
  • (1)Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if
    • (A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
    • (B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.
  • (2) A patent issued on a process under para-graph (1)-(1)-
    • (A) shall also contain the claims to the composition of matter used in or made by that process, or
    • (B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
  • (3) For purposes of paragraph (1), the term “biotechnological process” means
    • (A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to
      • (i) express an exogenous nucleotide sequence,
      • (ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
      • (iii) express a specific physiological characteristic not naturally associated with said organism;
    • (B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
    • (C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).
• (c) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.