A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or her assignees for a limited period of time, in exchange for the public disclosure of the invention. An invention is a solution to a specific technological problem, and may be a product or a process. The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims that define the invention. These claims must meet relevant patentability requirements, such as novelty and non-obviousness. The exclusive right granted to a patentee in most countries is the right to prevent others from making, using, selling, or distributing the patented invention without permission.
Under the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights, patents should be available in WTO member states for any invention, in all fields of technology,and the term of protection available should be a minimum of twenty years. Nevertheless, there are variations on what is patentable subject matter from country to country.
The US patent system is authorized by Article One, Section 8(8) of the U.S. Constitution which states:
"The Congress shall have power...To promote the progress of science and useful arts, by securing for limited times to authors and inventors the
exclusive right to their respective writings and discoveries;"
In the U.S., a patent is a right to exclude others from making, using, selling, offering for sale, exporting components to be assembled into an infringing device outside the U.S., importing the product of a patented process practiced outside the U.S., inducing others to infringe, offering a product specially adapted for practice of the patent, and a few other very carefully defined categories. The distinctions between what patent rights include are complex. For example, merely thinking about an invention or drawing a diagram is not an infringement. Likewise, research for "purely philosophical" inquiry is not an infringement. Sometimes, this analysis can be much more sophisticated and difficult: i.e., research directed to commercial purposes may be an infringement—but may not be when the research is directed toward obtaining approval of the Food and Drug Administration for introduction of a generic version of a patented drug. Under current U.S. law, the term of patent is 20 years from the earliest claimed filing date (which can be extended via Patent Term Adjustment and Patent Term Extension). For applications filed before June 8, 1995, the term is either 17 years from the issue date or 20 years from the earliest claimed domestic priority date, whichever is longer.
A patent application is a request pending at the USPTO or a foreign patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention (the patent specification), together with official forms and correspondence relating to the application. The term patent application is also used to refer to the process of applying for a patent, or to the patent specification itself
In order to obtain the grant of a patent, a person, either legal or natural, must file an application at a patent office with jurisdiction to grant a patent in the geographic area over which coverage is required. This will often be a national patent office but could be a regional body, such as the European Patent Office. Once the patent specification complies with the laws of the office concerned, a patent may be granted for the invention described and claimed by the specification.
Patent Application - National applications
National applications are generally filed at a national patent office, such as the USPTO, to obtain a patent in the country of that office. The application may either be filed directly at that office, or may result from a regional application or from an international application under the Patent Cooperation Treaty (PCT), once it enters the national phase.
Patent Application - Regional applications
A regional patent application is one which may have effect in a range of countries. The European Patent Office (EPO) is an example of a Regional patent office. The EPO grants patents which can take effect in some or all countries contracting to the European Patent Convention (EPC), following a single application process. Filing and prosecuting an application at a regional granting office is advantageous as it allows patents in a number of countries to be obtained without having to prosecute applications in all of those countries. The cost and complexity of obtaining protection is therefore reduced.
Patent Application - International applications (under the Patent Cooperation Treaty)
The Patent Cooperation Treaty (PCT) is operated by World Intellectual Property Organization (WIPO) and provides a centralised application process, but patents are not granted under the treaty. The PCT system enables an applicant to file a single patent application in a single language. The application, called an international application, can, at a later date, lead to the grant of a patent in any of the states contracting to the PCT. WIPO, or more precisely the International Bureau of WIPO, performs many of the formalities of a patent application in a centralised manner, therefore avoiding the need to repeat the steps in all countries in which a patent may ultimately be granted. The WIPO coordinates searches performed by any one of the International Searching Authorities (ISA), publishes the international applications and coordinates preliminary examination performed by any one of the International Preliminary Examination Authorities (IPEA). Steps such as naming inventors and applicants, and filing certified copies of priority documents can also be done centrally, and need not be repeated. The main advantage of proceeding via the PCT route is that the option of obtaining patents in a wide range of countries is retained, while the cost of a large number of applications is deferred. In most countries, if a national application succeeds, damages can be claimed from the date of the international application's publication.
Patent Application - Non-provisional patent application
A standard patent application is a patent application containing all of the necessary parts (e.g. a written description of the invention and claims) that are required for the grant of a patent. A standard patent may or may not result in the grant of a patent depending upon the outcome of an examination by the patent office it is filed in. In the U.S., a standard patent application is referred to as a non-provisional application.
Patent Application - Provisional patent application
Provisional patent applications can be filed at many patent offices, such as the USPTO in the U.S. A provisional application provides an opportunity to place an application on file to obtain a filing date (thereby securing a priority date), but without the expense and complexity of a standard patent application. The disclosure in a provisional application may, within a limited time (one year in the U.S.), be incorporated into a standard patent application if a patent is to be pursued. Otherwise, the provisional application expires. No enforceable rights can be obtained solely through the filing of a provisional application.
Patent Application - Continuing patent application
Under United States patent law, a continuing patent application is a patent application which follows, and claims priority to, an earlier filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part application. While continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention. A "continuation application" is a patent application filed by an applicant who wants to pursue additional claims to an invention disclosed in an earlier application of the applicant (the "parent" application) that has not yet been issued or abandoned. The continuation uses the same specification as the pending parent application, claims the priority based on the filing date of the parent, and must name at least one of the inventors named in the parent application. This type of application is useful when a patent examiner allowed some, but rejected other claims in an application, or where an applicant may not have exhausted all useful ways of claiming different embodiments of the invention. During the prosecution of a continuation application, the applicant may not add additional disclosure to the specification. If the inventor needs to supplement the disclosure of the earlier parent application, he must file a continuation-in-part application.
Patent Application - Divisional patent application
A divisional application also claims priority based on the filing date of the parent application, but differs from a continuation application in that a divisional application claims a distinct or independent invention "carved out" of the parent application. A divisional application must share at least one of the inventors named in the parent application. A divisional application is often filed after the examiner issued a "restriction requirement", because a patent can only claim a single invention (cf. unity of invention).
Patent Application - Continuation-in-part
A "continuation-in-part" application ("CIP" or "CIP application"), claiming priority based on the filing date of the parent application, is one in which the applicant adds subject matter not disclosed in the parent, but repeats substantial portion of the parent's specification, and shares at least one inventor with the parent application. The CIP application is a convenient way to claim enhancements developed after the parent application was filed. It is the successor to the earlier "additional improvement" patents mentioned above.
Patent Application - Reissue
If an issued patent is found to be defective, then the patent owner can surrender the patent and refile the original application to correct the defect. One such defect occurs when the issued patent fails to claim the full scope of the disclosed invention. Thus, an inventor can submit the patent application again with broader claims and attempt to get the full coverage he is entitled to. The inventor is not, however, allowed to add new features to the invention.
A reissue application which attempts to get broader coverage than the originally issued patent must be filed within two years from the grant date of the said originally issued patent.
Patent Application - Request for continued examination
A request for continued examination (RCE) is a request by an inventor for continued prosecution after the patent office has issued a "final" rejection. An RCE is not considered a continuing patent application - rather, prosecution of the pending application is reopened. The inventor pays an additional filing fee and continues to argue his case with the patent examiner.
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application. The claims are of the utmost importance both during prosecution and litigation. A patent is a right to exclude others from making, using, selling or offering for sale the subject matter defined by the claims. In order to exclude someone from using a patented invention in a court, the patent owner, or patentee, needs to demonstrate that what the other person is using falls within the scope of a claim of the patent. Therefore, it is more valuable to obtain claims that include the minimal set of limitations that differentiate an invention over what came before, i.e. the so-called prior art. On the other hand, the fewer the limitations in a claim, the more likely it is that the claim will cover or "read on" what came before and be rejected during examination or found to be invalid at a later time for lack of
In the United States, a practitioner may either be a patent attorney or patent agent. Both patent attorneys and patent agents have the same license to practice and represent clients before the United States Patent and Trademark Office (USPTO). Both patent agents and patent attorneys may prepare, file, and prosecute patent applications. Patent agents and patent attorneys may also provide patentability opinions, as noted by the U.S. Supreme Court in Sperry v. Florida. However, the USPTO Rules of Ethics and Professionalism, effective as of September 15, 2008, specifically clarifies that patent agents may not provide an "opinion of validity of another party's patent when the client is contemplating litigation and not seeking reexamination" because such activity "could not be reasonably necessary and incident to the preparation and prosecution" of a client's patent.
Patent attorneys must also be admitted to the practice of law in at least one state or territory of the U.S. or in the District of Columbia. In the time since the USPTO issued the first patent in 1790, approximately 68,000 citizens have passed the USPTO registration examination, allowing them to register to prosecute patent applications (This total does not include current patent examiners, who are not allowed to serve as patent attorneys or agents and thus do not appear on the list of enrolled practitioners). Today, roughly 40,000 people are on the list of registered patent attorneys and agents, with about 30,000 of them also licensed to practice law. Of the states, California has the most patent attorneys (and agents), followed by New York and Texas. Per capita, Delaware has more patent attorneys (and agents) than any state (not including DC). Both Patent Attorneys and Patent Agents are generally required to have a technical degree (such as engineering, chemistry or physics) and must take and pass the USPTO registration examination (officially titled Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office). Since patent attorneys are admitted to practice law in a state or territory, they can additionally provide legal services outside the Patent Office if practicing within the jurisdiction they are admitted to practice or if the law of the jurisdiction otherwise permits them to practice although not admitted in that jurisdiction. These legal services include advising a client on matters relating to the licensing of the invention; whether to appeal a decision by the Patent Office to a court; whether to sue for infringement; whether someone is infringing upon the claims of a client's issued patent; and conversely, whether a client is infringing the claims of someone else's issued patent. Patent agents cannot provide legal services of this nature, nor can they represent clients before the Trademark Office part of the USPTO. To register as a patent agent or patent attorney, one must pass the USPTO registration examination. A candidate must also possess "good moral character and reputation" (37 CFR 11.7). If practicing outside the United States, a patent agent or patent attorney must be a U.S. citizen.
The process of "negotiating" or "arguing" with a patent office for the grant of a patent, and interaction with a patent office with regard to a patent after its grant, is known as patent prosecution. Patent prosecution is distinct from patent litigation which relates to legal proceedings for infringement of a patent after it is granted. In the typical case, a patent examiner will examine patent claims and amendments in an original patent application for two rounds of "office actions" before ending examination. However, often two office actions are not enough to resolve all of the issues in the patent prosecution. Therefore, it is common to think of a continuation application as though the applicant is merely purchasing more examination time from the patent examiner.
Information Disclosure Statement - IDS
An information disclosure statement (IDS) refers to a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during the patent prosecution process. There is a duty on all patent applicants to disclose prior art or background information that may be relevant to the patentability of the applicant's invention, as established by the United States Code title 35 and related sections of 37 CFR and the Manual of Patent Examining Procedure (MPEP). If a patent applicant knowingly or intentionally fails to submit prior art to the USPTO, then any patent that later issues from the patent application may be declared unenforceable. Furthermore, the duty to submit such relevant information to the USPTO lies not only on the applicant or inventor, but also on any patent attorney or other legal staff employed by the applicant. Per the USPTO Manual of Patent Examining Procedure, art listed on an IDS, on its own, is not automatically considered prior art: "Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims."
Note: The above content has been edited, curated, and derived by IDP Patent Services from Wikipedia and other public domain sources for the purpose of presenting a condensed overview of terms used throughout this website.