Process of Obtaining a Patent

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Process of Patent Application and Analysis of Patent Examiner's Processes and Methods By: Allen Wang

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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

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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 technical field 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.

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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

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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.

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Response to Rejection And 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

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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

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Request for Continuing Examination (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.”

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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: District Courts 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

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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.

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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

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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

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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

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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

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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

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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

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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 EAST Database

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Works Cited Bellis, Mary. "Guide To Patenting And USPTO Patent Applications." About.com: Inventors. 2009. About.com, Web. 15 Nov 2009. <http://inventors.about.com/od/differenttypesofpatents/a/patent_pending.htm>.   "Laws, Regulations, Policies & Procedures" United States Patent and Trademark Office. 2009. USA.gov, Web. 15 Nov 2009. <http://www.uspto.gov/patents/process/index.jsp>.   "Patent." Wikipedia. 2009. Wikimedia Foundation, Inc., Web. 15 Nov 2009. <http://en.wikipedia.org/wiki/Patent>.   "Patent." LII/ Legal Information Institute. 2009. Cornell University Law School, Web. 15 Nov 2009. <http://topics.law.cornell.edu/wex/Patent>.   "Patent Flowchart." Inventor Basics. 2009. inventerbasics.com, Web. 15 Nov 2009. <http://www.inventorbasics.com/Patent%20Process.htm>.   "Patents Forms." United States Patent and Trademark Office. 2009. USA.gov, Web. 15 Nov 2009. <http://www.uspto.gov/patents/process/index.jsp>.   "the patent invention process, visually." BAY AREA INTELLECTURAL PROPERTY GROUP, LLC. 2009. Bay Area Intellectual Property Group, LLC., Web. 15 Nov 2009. <http://www.bayareaip.com/IPinfo/Patents/overview.htm>.   "Patent Law Career." Patent Bar Study. 2009. Intellectual Properties Enterprises, Inc., Web. 15 Nov 2009. <http://www.patentbarstudy.com/career/patentattorneysalary.html>.   "Patent Law in the United States." Welcome to Bitlaw. 2009. Daniel A. Tysver, Web. 15 Nov 2009. <http://www.bitlaw.com/patent/index.html>.   "Patents Process." United States Patent and Trademark Office. 2009. USA.gov, Web. 15 Nov 2009. <http://www.uspto.gov/patents/process/index.jsp>.   "Patent Process." Lawyers.com. 2009. LexisNexis, a division of Reed Elsevier Inc., Web. 15 Nov 2009. <http://intellectual-property.lawyers.com/patents/Patent-Process.html>. Schechter, Roger E. Intellectual Property: The Law of Copyrights, Patents and Trademarks (Hornbook Series Student Edition) Intellectual Property: The Law of Copyrights, Patents and Trademarks. Student ed. Oklahoma City: West Company, 2003. Print. Hornbook.   UC Television. "Intellectual Property: How to Review a Patent Application." 24 April 2008. Online video clip. YouTube. Accessed on 6 April 2009. "Understanding "Patentese"—A Patent Glossary." JOM. 1997. The Minerals, Metals & Materials Society, Web. 15 Nov 2009. <http://www.tms.org/pubs/journals/jom/matters/matters-9609.html>.   Wang, Dr. Jin Cheng. Personal interview. 9 Nov. 2009.   "Why Patent an Innovation." The Law Office of Joan I. Norek. 2009. Joan I. Norek, The Law Office of Joan I. Norek, Web. 15 Nov 2009. <http://www.noreklaw.com/why_patent_it.htm>.   "Why Patent an Innovation." Basic Patent Facts. 02 June 2007. Patent Search Information Site, Web. 15 Nov 2009. <http://www.patent-search-information.com/patent-facts.html>. Storwick, Robert. "Patent Facts." Patent-it. 20 Oct 1995. Robert M. Storwick, Web. 15 Nov 2009. <http://www.patent-search-information.com/patent-facts.html>.   "Why Patent My Invention and Other Patent Information." morebusiness.com. 17 Dec 2001. Khera Communications, Inc., Web. 15 Nov 2009. <http://www.morebusiness.com/running_your_business/marketing/d1007343402.brc>.

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