Page 13 - Intellectual Property Disputes

The Patent Application Process

In support of a utility patent application, an inventor will attempt to demonstrate to the U.S. Patent and
Trademark Office (USPTO) that his or her invention has each of the following attributes:

• It is useful.

• It is new.

• It is not obvious.

The applicant is required to file with the USPTO a set of formal papers, including a written patent
application describing the invention, and pay a fee. The patent application description must include the
specifications, the claims, and any necessary drawings.

Section 112 of the Patent Statute states that "the specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the applicant regards as his
invention." fn 9 The claims of a patent are the numbered paragraphs found at the end of a patent
application, usually preceded by the phrase "I (we) claim" or "What is claimed is." These claims define
the boundaries of the patent right, just as a deed defines the boundaries of real estate. fn 10

Upon receiving a patent application, the USPTO assigns it to a patent examiner for review. fn 11 The
examiner, who generally has expertise or training in the relevant technical field, reviews the patent
application to determine whether the inventor has met the requirements for issuance of a patent. In
addition to reviewing the application for indications of utility and form, the examiner ordinarily
conducts a search for patents or other published literature (referred to as prior art) that preceded the
patent application. The objective of this search is to determine whether the claimed invention is new and
non-obvious in view of the prior art.

In most cases, a patent application is pending with the USPTO between one and three years. This
extended review period is the result of the large volume of patent applications filed and the labor-
intensive examination process. This process often involves extended communications among the
USPTO, applicants, and their attorneys or agents.

Under the Patent Statute, a patent application can be based either on (a) an existing invention or (b) an
existing idea of an inventor, even if the inventor has not physically built or tested the idea to see whether
it works. A patent is granted for a term beginning on the date on which the patent is issued and ending
20 years from the date on which the patent application was filed in the United States or, if the
application contains a specific reference to an earlier filed application or applications under 35 USC 120,
121, or 365(c), from the date on which the earliest such application was filed. fn 12

fn 9 35 USC 112.

fn 10 Corning Glass Works v. Sumitomo Elec. USA, Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989).

fn 11 The U.S. Patent and Trademark Office (USPTO) maintains the confidentiality of pending patent applications under 35 USC 122.

fn 12 35 USC 154.

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