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Patents – An Overview of the Application Process

Frequently, the creator of an innovative new product or process may seek patent rights in order to exclude others from practicing the new product or process. The typical steps involved in the process of applying for a patent include:

  1. performing a search;
  2. preparing and filingĀ  a patent application; and
  3. responding to rejections raised by the patent office.

A search is not required by law before submitting a patent application, but it may be prudent to do so. The search can help determine whether a patent application should be filed. Moreover, if a patent application is filed, locating prior and related literature can help the inventor and patent attorney focus on the key features of the invention. The search sources can vary, but may include a general internet search, United States patent records, European patent records, Japanese patent records, commercial patent databases, industry databases, and trade journals.

After the search report is reviewed and discussed, a decision may be made to proceed with a patent application. Additional details for the invention may then be gathered. The inventor and patent attorney will work together to collection sufficient data in order to illustrate the invention, describe how to make and use the invention, and disclose the best manner of practicing the invention. From all of the disclosure, drawings, a specification, and claims will be included in a patent application filed with the patent office.

In time, about one to three years after filing, the patent office will review the submitted patent application for compliance with patent law. The patent office will perform its own patent search, as well as review the application for other compliance issues. Common issues raised by the patent offices include:

  • Ineligible subject matter – An invention’s subject matter must be products or processes made by man. Impermissible subject matter includes laws of nature and abstract ideas. Recent controversial and developing categories of subject matter include business method patents (in which some software may fall) and “gene” patents.
  • Lack of novelty – An invention must not currently exist in order to be patentable. In other words, it must not already be publicly known. If a reference document contains all of the features of the claimed invention, the invention lacks novelty and the patent office will issue an anticipation rejection.
  • Obviousness – Not only must the invention be novel, it also must be nonobvious. That is to say that the invention should not be obvious to a person having ordinary skill in the field of technology of the patent application reviewing reasonably related references. If it is obvious, the patent office will reject the patent application.

The patent applicant and attorney need to address the rejections raised by the patent examiner. If successful in addressing those rejections, a patent will issue and the inventor may then exclude others from practicing the new product or process.

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