ROBERT E. MALM, Ph.D

ATTORNEY AT LAW

CLAIMCRAFTED™ PATENT APPLICATIONS

The patenting process begins with the inventor's patent attorney preparing and filing a patent application in the patent office.

The cornerstone of the patent application is a specification and drawings. As set forth in §1.71 of the Patent Rules:

(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.

According to §1.75 of the Rules:

(a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.

The requirement for drawings is set forth in §1.81 of the Rules.

(a) The applicant for a patent is required to furnish a drawing of his or her invention where necessary for the understanding of the subject matter sought to be patented.

It is the task of the patent attorney to prepare the specification including the claims and drawings. He will be considerably assisted in this undertaking if the inventor supplies written material and sketches in accordance with the Rules quoted above. When the specification and drawings are completed, the patent attorney will send them to the inventor for review. It is important that the inventor reviews these materials with care since he is required to submit a declaration to the patent office to the effect that he has reviewed and understands the contents of the specification, including the claims.

After the inventor has reviewed the specification and drawings, the patent attorney files this material together with an assertion of "small entity" status (if appropriate), and the appropriate filing fee.

The filing of the application with the patent office marks the beginning of the so-called prosecution phase. The first question to be answered by the examiner at the patent office to whom the application has been assigned is:

Is the invention a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof?

Most of us would probably have some difficulty envisioning inventions that do not fall within the categories of process, machine, article of manufacture, or composition of matter. In fact, the Supreme Court has acknowledged that this language encompasses "anything under the sun that is made by man."

Laws of nature and natural phenomena are not "made by man" and indeed, the Supreme Court has identified these as being unpatentable. The Supreme Court has also identified "abstract ideas" unaccompanied by practical applications as being unpatentable even though "abstract ideas" typically are a creative output of man. Generally speaking, however, the subject matter of inventions is seldom an obstacle to patentability.

A refusal of a patent based on the invention not being "useful" is also possible, particularly if the invention seems to violate the laws of nature or seems to be beyond the state of the art. However, patent applications for such inventions will seldom reach the patent office if the inventor's patent attorney is reasonably knowledgeable about the technology of interest.

The preeminent reason for refusing a patent is that the invention is not "new". The examiner lays the groundwork for determining whether an invention is "new" or not by searching patent and technology databases for "prior art" pertaining to the subject matter of the invention. If the examiner finds prior art which he believes may impact the decision as to the "newness" of the invention, he signals his concern to the applicant for patent by issuing an "office action" in which one or more claims are rejected based on the prior art.

The patent attorney then examines the patent and/or technology documents referenced by the examiner in his office action and responds to the office action either by arguing that the attributes of the invention specified in the rejected claims are different from those described in the prior art or by amending the claims so that such an argument can be made.

The exchange of office actions and responses to office actions continues until the examiner issues his "final" office action whereupon the patent attorney, after consultation with the inventor, must either appeal or cancel each rejected claim. Appeal is usually avoided by canceling the rejected claims thereby placing the application in condition for issuance of a patent. After payment of a fee, the inventor obtains his patent.

© 2002 Robert Malm