Slide 1: Process of Patent Application
Analysis of Patent Examiner's
Processes and Methods By: Allen Wang Slide 2: Application Examination Allowance Non-Final Rejection Patent Response to Rejection and Request for Reconsideration Final Rejection Request for Continuing Exam Abandonment Appeal to BPAI then Courts 0 3 0 6+1/30 6+1/30 (After Examination) 6-12 0 0 Key
Number = # in Months it takes Click on a Step for More Info 6-24 1/30 6-12 months 0 Slide 3: Application The Steps in Applying for a Patent is the Following:
First of all, you must first search the Patent Full-Text and Image Database (EAST and WEST patent database) to see if your idea has already been patented: This can be done on this website: http://uspto.gov/
Second of all, obviously, you must first write a patent. (Click on the I-Icon for Steps to do this)
Lastly, you must apply for a patent using the Electronic Filing System (EFS-Web) as a Registered eFiler or Unregistered eFiler.
You must wait a while for the examiner to oversee your patent. (~few months to a few years) title
background information and prior art
description of how your invention addresses a technical problem
list of figures
detailed description of your invention
one example of intended use
a sequence listing if relevant ~ Breakthroughs and innovations in science and technology continually inspire applicants to file for patent applications. The steps in filling the patent is located below. Slide 4: Examination The Examiner first must receive the patent (~few months-few years to get to him/her)
Following this, the examiner must first review the patent application.
The examiner looks first for errors in basic format as well as whether it follows rules and legal requirements. If not, a non-final rejection is necessary
If it is correct, inventions are examined from a technical standpoint. (for process, Click I-icon)
A patent examiner will search for prior art in earlier publications, technical literature, and databases of patents to make sure that the application is novel (for databases info., Click I-icon)
He/she must prove each of the claims are already taught, or some of them by studying the Prior Arts found, and comparing them to the applicant’s claims in the patent
Makes a decision whether the claim is already taught in the prior arts
Communicates decision to the patent applicants For more details, Click on this icon Slide 5: Non-Final Rejection The claim subject matter is anticipated or taught by the prior art (stature 102) or is obvious over a combination of the prior art (stature 103).
If the claimed subject matter is not statutory, that is the subject matter does not fall into the four categories: machine, manufacture, product, and process (stature 101)
It is a law of nature, an abstract idea, such as plants, the earth, etc.
The claimed subject matter is not based on the applicant’s specification (stature 112) Reasons for Rejection Choices Afterwards The applicant must make a choice of whether to respond to rejection and request for consideration or to abandon the case. Slide 6: Response to Rejection
Request for Reconsideration The attorney or applicant can respond to the non-final rejection by amending the claim subject matter, that is to further limit the scope of the subject matter or persuasively traverse the examiner’s decision
By doing so, the applicant is requesting for reconsideration on the subject matter, and wishes for the continuation of the case.
If this is so, then the examiner receives the revision and must review it for further actions Slide 8: Final Rejection Office action after non-final rejection
If the attorney amend the claim the examiner still has to make a decision based on the available prior art to see if the claimed subject matter are still anticipated or taught by the prior art
If so, make a final rejection
If not, further search for new prior art pertaining to the amended subject matter is necessarily
The examiner make a final rejection based on the new prior art
If the attorney does NOT amend the claim by requesting for reconsideration, the examiner must consider the arguments if they are persuasive
If the arguments are persuasive, the examiner thoroughly updates searches for prior arts.
If there are no relevant prior arts, allow and issue for patent
If arguments are NOT persuasive, make a final rejection Slide 9: Request for
(RCE) After the final rejection, the applicant may request for continuing examination. However, the applicant’s case must be very well done in order to do this because the applicant was rejected twice by the patent examiner.
This is the only option the applicant will have if the applicant does NOT want to leave the case and does NOT want to go to the courts.
There is an additional fee for this to happen
According to the USPTO.gov, “Section 4403 of the “American Inventors Protection Act of 1999” amends 35 U.S.C. § 132 to provide, at the request of the applicant, for continued examination of an application for a fee, without requiring the applicant to file a continuing application under 37 CFR 1.53(b)…a procedure under which an applicant may obtain continued examination of an application by filing a submission and paying a specified fee, even if the application is under a final rejection, appeal, or a notice of allowance.” Slide 10: This occurs after the primary examiner rejects the applicant both times as a result of it’s conventional essence
However, appealing to the BPAI and the Courts is risky and time consuming, so the applicant must be resolute in his/her decision and confident that his/her innovation or intuition is novel and original.
There are three court systems you go through, if the courts deny allowance for your patent:
Courts of Appeals (Circuit Courts)
The Supreme Court
You go from the lowest levels of courts, the district courts, to the intermediate level courts, the courts of appeals (consisting of 12 regional courts) and finally the supreme court. Appeal to Board of Patent Appeals and Interferences
(BPAI) and Courts Slide 11: Abandonment This occurs either after the non-final rejection or the final rejection or the rejection from the courts.
Ultimately, abandonment epitomizes the realization that the patent on the invention has already been thought of before.
The applicant does not wish to continue the case, and withdraw their patent from examination
The applicant gives up
This means you do not get the patent, and the cycle ends. Slide 12: Allowance The Patent Examiner sees that the applicant’s invention or intuition is original, and grants the applicant the patent.
This leads to getting the actual patent on your product, process, compound, etc.
This is a great feat for in the past few years, the rejection has risen whilst the allowance rate dropped dramatically
Getting an allowance on the patent is a great feat. Click on i-Icon for graph of the decrease of allowance rate Slide 13: Patent The applicant receives the Patent.
The applicant gets a set of exclusive rights granted by our national government
The applicant now has a legal documentation for the verification of his/her original technological achievement Slide 14: Begin on a new page by stating the title of your invention. Make it short, precise and specific. Aim to give it a title that can be found by people using a few key words during a patent searching.
Write a broad statement that gives the technical field related to your invention.
Offer background information that people will need to: understand, search for, or examine, your invention.
Discuss the problems that inventors have faced in this area and how they have attempted to solve them. This is often called giving the prior art. Prior art is the published body of knowledge that relates to your invention.
State how your invention solves one or several of these problems.
List the drawings giving the figure number and a brief description of what the drawings illustrate. Refer to drawings throughout the detailed description.
Describe your intellectual property in detail. For an apparatus or product, describe each part, how they fit together and how they work together. For a process, describe each step, what you start with, what you need to do to make the change, and the end result. For a compound include the chemical formula, the structure and the process which could be used to make the compound.
Give an example of an intended use for your invention.
Provide the sequence listing of your compound. Steps in Creating a Patent Slide 15: Examination: More Info. For What a Primary Examiner Basically Does Looking for Info. On EAST Database? Click on the Detective… The Examiner first studies the Application
She/he looks for the basic usage or meaning of the patent, looking at the diagrams, detailed description, and claims, which must be in the Application (if not, the patent should’ve been stamped with the non-final rejection)
After finding the meaning of the invention or the basic functions of it, the examiner will look into the EAST Database for Prior Arts (which is patents that are already granted) for patents that describe similar functions.
Again, the Examiner must know what the patent is about so she/he can type in key words to find them.
Finally, when the Examiner feels she/he has enough evidence to prove the claims of the inventions to not be novel, then the Examiner marks the patent as a non-final rejection and writes statements proving to invalidity of the claims.
If the Examiner is unable to do so, the patent is allowed. Click on this Detective for the Symbols of the EAST Database Slide 16: reviewing patent applications to determine if they comply with basic format, rules and legal requirements;
determining the scope of the invention claimed by the inventor;
searching for relevant technologies to compare similar prior inventions with the invention claimed in the patent application; and
communicating findings as to the patentability of an applicant's invention via a written action to inventors/patent practitioners. Basic Job of a
Primary Examiner Slide 17: EAST Database E.A.S.T is an acronym for: Examiner Assisted Search Tool
Knowledge on on-line database and Boolean logic experience must be available in order to use it.
Text searching using indexes and the use of the browser screen for rapid patent retrieval. One of the most helpful tools used by Patent Examiners to find relating patents
Basically a database with A LOT of Prior Arts: which is patents that are already granted
Even simpler words: Where all the inventions that are filed are. For Symbols used in EAST Database: Click on I-icon Slide 18: Adj3 means 3 words in adjacent of each other
Near4 means in the neighborhood of 4 words
Visual$8 is a wildcard match: could be either; visualization, visual, visualize, etc.
And/or means the logical meaning of “OR” and “AND”
() Is the logical element as a group
###/$.ccls Class searches are the following
$ means wildcard for subclass
@ad means application date
Ring$1tone could mean ring tone or ring_tone
Same means words appear in same paragraph
With means words appearing in a same sentence Symbols Used in
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