SCIENCE COUNTER IP

Your Gate to the Universe of IP

Examining Patent Applications and Claimed Inventions

Once a patent application is filed with a patent office (e.g., USPTO), it will have to go through one or more examination processes by examiner/s before a patent can be issued to an applicant. The examiner is going to allow the claimed invention/s or reject the claimed inventions. Similar to the to the job of the attorney (see here ) the Examiner has to, at least, investigate the text of the claimed invention in view of what is, or what was, known by the time of filing the application, and secondly make sure the claimed invention as a whole and/or one or more of the elements of claimed invention is novel in view prior art.

EXAMINATION CHALLENGES

Common issues that come up during examination of potential patents.

Access to thorough knowledge in relevant field of patent search

An examiner can be challenged by competing businesses. They will argue that their company invented it before, or that their competitor’s alleged invention doesn’t deserve a patent because it is not sufficiently inventive. These businesses can launch a legal opposition to the patent, which senior patent examiners must oversee.

Third Party Challenging Validity of Patent

In most jurisdictions, there are ways for third parties to challenge the validity of an allowed or issued patent at the national patent office: opposition proceedings. It is also possible to challenge the validity of a patent in court. In either case, the challenging party tries to prove that the patent should never have been granted. There are several grounds for challenges: such as the standard reasons for rejection or that fraud was committed during prosecution regarding listing of inventors, representations about when discoveries were made, etc

Challenges finding the same reference of truth between all patent searches

Patent infringement occurs when a third party, without authorization from the patentee, makes, uses, or sells a patented invention. Patents, however, are enforced on a national basis. The making of an item in China, for example, that would infringe a US patent, would not constitute infringement under US patent law unless the item were imported into the US.

Limitation in time and human brain processing power

Patents can generally only be enforced through civil lawsuits (for example, for a US patent, by an action for patent infringement in a United States federal district court), although some countries (such as France and Austria) have criminal penalties for wanton infringement

Patent History

  • The first statutory patent system is generally seen as the Venetian Patent Statute of 1474. Patents were systematically granted in Venice as of 1474, where they issued a decree by which new and inventive devices had to be communicated to the Republic to obtain legal protection against potential infringers.
  • The English patent system evolved from its early medieval origins into the first modern patent system that recognized intellectual property in order to stimulate invention. It became the foundation for patent law in countries with a common law heritage, including the United States, New Zealand and Australia.

    • TYPES OF PATENTS

    patents patents patents.

    Utility

    A long, technical document that teaches the public how to use a new machine, process, or system. The kinds of inventions protected by utility patents are defined by Congress. New technologies like genetic engineering and internet-delivered software are challenging the boundaries of what kinds of inventions can receive utility patent protection.

    Provisional patent

    United States law allows inventors to file a less formal document that proves the inventor was in possession of the invention and had adequately figured out how to make the invention work. Once that is on file, the invention is patent pending. If, however, the inventor fails to file a formal utility patent within a year from filing the provisional patent, he or she will lose this filing date. Any public disclosures made relying on that provisional patent application will now count as public disclosures to the United States Patent and Trademark Office (USPTO).

    Design patent

    This patent offers protection for an ornamental design on a useful item. The shape of a bottle or the design of a shoe, for example, can be protected by a design patent. The document itself is almost entirely made of pictures or drawings of the design on the useful item. Design patents are notoriously difficult to search simply because there are very few words used in a design patent. In recent years, software companies have used design patents to protect elements of user interfaces and even the shape of touchscreen devices.

    Plant patent

    A plant patent protects new kinds of plants produced by cuttings or other nonsexual means. Plant patents generally do not cover genetically modified organisms and focus more on conventional horticulture

    Patent Examiner History

    The first U.S. Congress began the federal patent system but saw no need for a patent office. The Patent Act of 1790 required the secretary of state, the secretary of war, and the attorney general to consider each application. The examiner was inserted into the patent system to chart a middle ground between granting patents only to those able to satisfy the secretary of state that an invention was sufficiently important and handing them out to all comers.

  • Charles Keller was appointed the first full -time patent examiner and granted Sen. John Ruggles of Maine patent No. 1 titled 'Locomotive steam - engine for rail and other roads '

    • How do they conduct their research?

  • A Patent Examiner's most important duty is to find Prior Art. They must look through a lot of patents and academic or technical literature using IT tools (I.e. Google Patents, USPTO Database etc. )
  • Examiners use keyword searches to either narrow a search in a specific patent class; or broaden a search by, for example, not limiting the key words to any specific class. This is why you may get prior art in a rejection that is not in your particular field, but may be applicable to your invention.
  • Examiners have a limited amount of time to review patents. There are a couple factors that determine how long. How difficult is the technology? Also, the longer you've worked at the office the less time you get per application

    • What are the decision making factors?

  • If a patent can’t be granted for an invention, you must provide the applicant with reasoned objections in a clear and concise way, so that they have the opportunity to try to overcome them. Making such judgements relies on being thorough in your research and knowing the applicable patent law.
  • It's up to the patent office to establish the best case for why it's not patentable. The applicant then needs to put forth his or her best case as to why the office is wrong. Examiners assess the contrary evidence put forth in the applicant's response to the office action to make a decision.