Contents
Functions of the Patent and Trademark Office
Purpose of this booklet
What is a patent?
Patent laws
What can be patented
Novelty and other conditions for obtaining a patent
The United States Patent and Trademark Office
Publications of the Patent and Trademark Office
General information and correspondence
Library, search room searches
Attorneys and agents
Disclosure Document
Who may apply for a patent
Application for patent
Oath or declaration, signature
Filing Fees
Specification (description and claims)
Drawing
Models, exhibits, specimens
Examination of applications and proceedings in the Patent and
Trademark Office
Amendments to application
Time for response and abandonment
Appeal to the Board of Patent Appeals and Interferences and to
the courts
Interferences
Allowances and issue of patent
Nature of patent and patent rights
Maintenance Fees
Correction of patents
Assignments and licenses
Infringement of patents
Patent marking and "patent pending"
Design patents
Plant patents
Treaties and foreign patents
Foreign applicants for United States patents
Fees and payment
Answers to questions frequently asked
FUNCTIONS OF THE PATENT AND TRADEMARK OFFICE
The Patent and Trademark Office is an agency of the U.S.
Department of Commerce.
The role of the Patent and Trademark Office is to provide
patent protection for inventions and to register trademarks. It
serves the interest of inventors and businesses with respect to
their inventions and corporate, product, and service
identifications. It also advises and assists the bureaus and
offices of the Department of Commerce and other agencies of the
Government in matters involving "intellectual property" such as
patents, trademarks and semiconductor mask works. Through the
preservation, classification, and dissemination of patent
information, the Office aids and encourages innovation and the
scientific and technical advancement of the Nation.
In discharging its duties, the Patent and Trademark Office
examines applications and grants patents on inventions when
applicants are entitled to them; it publishes and disseminates
patent information, records assignments of patents, maintains
search files of U.S. and foreign patents and a search room for
public use in examining issued patents and records. It supplies
copies of patents and official records to the public. Similar
functions are performed relating to trademarks.
PURPOSE OF THIS BOOKLET
The purpose of this booklet is to give the reader some
general information about patents and the operations of the
Patent and Trademark Office. (A similar booklet is available on
the subject of trademarks.) It attempts to answer many of the
questions commonly asked of the Patent and Trademark Office but
is not intended to be a comprehensive textbook on patent law or
a guide for the patent lawyer. Consequently, many details are
omitted and complications have been avoided as much as
possible. It is hoped that this pamphlet will be useful to
inventors and prospective applicants for patents, to students,
and to others who may be interested in patents by giving them a
brief general introduction to the subject.
Because of the large amount of mail received by the Patent
and Trademark Office, a copy of this pamphlet, with particular
sections marked when appropriate, may be used by the Patent and
Trademark Office to reply to inquiries and is intended as a
courtesy reply.
Additional information may be obtained from the
publications listed on pages 6 and 7. The Patent and Trademark
Office does not publish any textbooks on patent law, but a
number of such works for the specialist and for the general
reader have been published by private concerns.
WHAT IS A PATENT?
A patent for an invention is a grant of a property right
by the Government to the inventor (or his heirs or assigns),
acting through the Patent and Trademark Office. The term of the
patent is 17 years from the date the patent is granted, subject
to the payment of maintenance fees.
The right conferred by the patent grant extends throughout
the United States and its territories and possessions.
The right conferred by the patent grant is, in the
language of the statute and of the grant itself, "the right to
exclude others from making, using, or selling" the invention.
What is granted is not the right to make, use, or sell, but the
right to exclude others from making, using, or selling the
invention.
Most of the statements in the preceding paragraphs will be
explained in greater detail in later sections.
Some persons occasionally confuse patents, copyrights, and
trademarks. Although there may be some resemblance in the
rights of these three kinds of intellectual property, they are
different and serve different purposes.
Copyrights
A copyright protects the writings of an author against
copying. Literary, dramatic, musical and artistic works are
included within the protection of the copyright law, which in
some instances also confers performing and recording rights.
The copyright goes to the form of expression rather than to the
subject matter of the writing. A description of a machine could
be copyrighted as a writing, but this would only prevent others
from copying the description; it would not prevent others from
writing a description of their own or from making and using the
machine. Copyrights are registered in the Copyright Office in
the Library of Congress. Information concerning copyrights may
be obtained from the Register of Copyrights, Library of
Congress, Washington, D.C. 20559. (Telephone 202/479-0700)
Trademarks
A trademark relates to any word, name, symbol or device
which is used in trade with goods to indicate the source or
origin of the goods and to distinguish them from the goods of
others. Trademark rights may be used to prevent others from
using a confusingly similar mark but not to prevent others from
making the same goods or from selling them under a non-
confusing mark. Similar rights may be acquired in marks used in
the sale or advertising of services (service marks). Trademarks
and service marks which are used in interstate or foreign
commerce may be registered in the Patent and Trademark Office.
The procedure relating to the registration of trademarks and
some general information concerning trademarks is given in a
pamphlet called Basic Facts About Trademarks.
PATENT LAWS
The Constitution of the United States gives Congress the
power to enact laws relating to patents. in Article I, section
8, which reads "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." Under this power Congress
has from time to time enacted various laws relating to patents.
The first patent law was enacted in 1790. The law now in effect
is a general revision which was enacted July 19, 1952, and
which came into effect January 1, 1953. It is codified in Title
35, United States Code.
The patent law specifies the subject matter for which a
patent may be obtained and the conditions for patentability.
The law establishes the Patent and Trademark Office for
administering the law relating to the granting of patents, and
contains various other provisions relating to patents.
WHAT CAN BE PATENTED
The patent law specifies the general field of subject
matter that can be patented and the conditions under which a
patent may be obtained.
In the language of the statute, any person who "invents
or discovers any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvements
thereof, may obtain a patent," subject to the conditions and
requirements of the law. By the word "process" is meant a
process or method, and new processes, primarily industrial or
technical processes, may be patented. The term "machine" used
in the statute needs no explanation. The term "manufacture"
refers to articles which are made, and includes all
manufactured articles. The term "composition of matter" relates
to chemical compositions and may include mixtures of ingredients
as well as new chemical compounds. These classes of subject
matter taken together include practically everything which is
made by man and the process for making them.
The Atomic Energy Act of 1954 excludes the patenting of
inventions useful solely in the utilization of special nuclear
material or atomic energy for atomic weapons.
The patent law specifies that the subject matter must be
"useful." The term "useful" in this connection refers to the
condition that the subject matter has a useful purpose and also
includes operativeness, that is, a machine which will not
operate to perform the intended purpose would not be called
useful, and therefore would not be granted a patent.
Interpretations of the statute by the courts have defined
the limits of the field of subject matter which can be
patented, thus it has been held that methods of doing business
and printed matter cannot be patented.
In the case of mixtures of ingredients, such as medicines,
a patent cannot be granted unless there is more to the mixture
than the effect of its components. (So called patent medicines
are ordinarily not patented, the phrase "patent medicine" in
this connection does not have the meaning that the medicine is
patented.) A patent cannot be obtained upon a mere idea or
suggestion. The patent is granted upon the new machine,
manufacture, etc., as has been said, and not upon the idea or
suggestion of the new machine. A complete description of the
actual machine or other subject matter sought to be patented is
required.
NOVELTY AND OTHER CONDITIONS FOR OBTAINING A PATENT
In order for an invention to be patentable it must be new
as defined in the patent law, which provides that an invention
cannot be patented if--
"(a) The invention was known or used by others in this
country, or patented or described in a printed publication
in this or a foreign country, before the invention thereof
by the applicant for patent, or
"(b) The invention was patented or described in a printed
publication in this or a foreign country or in public use
or on sale in this country more than one year prior to the
application for patent in the United States...."
If the invention has been described in a printed
publication anywhere in the world, or if it has been in public
use or on sale in this country before the date that the
applicant made his invention, a patent cannot be obtained. If
the invention has been described in a printed publication
anywhere, or has been in public use or on sale in this country
more than one year before the date on which an application for
patent is filed in this country, a valid patent cannot be
obtained. In this connection it is immaterial when the
invention was made, or whether the printed publication or
public use was by the inventor himself or by someone else. If
the inventor describes the invention in a printed publication
or uses the invention publicly, or places it on sale, he must
apply for a patent before one year has gone by, otherwise any
right to a patent will be lost.
Even if the subject matter sought to be patented is not
exactly shown by the prior art, and involves one or more
differences over the most nearly similar thing already known, a
patent may still be refused if the differences would be
obvious. The subject matter sought to be patented must be
sufficiently different from what has been used or described
before so that it may be said to be unobvious to a person
having ordinary skill in the area of technology related to the
invention. For example, the substitution of one material for
another, or changes in size, are ordinarily not patentable.
THE UNITED STATES PATENT AND TRADEMARK OFFICE
Congress established the United States Patent and
Trademark Office to issue patents on behalf of the Government.
The Patent and Trademark Office as a distinct bureau may be
said to date from the year 1802 when a separate official in the
Department of State who became known as "Superintendent of
Patents" was placed in charge of patents. The revision of the
patent laws enacted in 1836 reorganized the Patent and
Trademark Office and designated the official in charge as
Commissioner of Patents and Trademarks. The Patent and
Trademark Office remained in the Department of State until 1849
when it was transferred to the Department of Interior. In 1925
it was transferred to the Department of Commerce where it is
today.
The Patent and Trademark Office administers the patent
laws as they relate to the granting of patents for inventions,
and performs other duties relating to patents. It examines
applications for patents to determine if the applicants are
entitled to patents under the law and grants the patents when
they are so entitled; it publishes issued patents and various
publications concerning patents, records assignments of
patents, maintains a search room for the use of the public to
examine issued patents and records, supplies copies of records
and other papers, and the like. Similar functions are performed
with respect to the registration of trademarks. The Patent
and Trademark Office has no jurisdiction over questions of
infringement and the enforcement of patents, nor over matters
relating to the promotion or utilization of patents or
inventions.
The head of the Office is the Assistant Secretary and
Commissioner of Patents and Trademarks and his staff includes
the Deputy Assistant Secretary and Deputy Commissioner, several
assistant commissioners, and other officials. As head of the
Office, the Commissioner superintends or performs all duties
respecting the granting and issuing of patents and the
registration of trademarks; exercises general supervision over
the entire work of the Patent and Trademark Office; prescribes
the rules, subject to the approval of the Secretary of
Commerce, for the conduct of proceedings in the Patent and
Trademark Office and for recognition of attorneys and agents;
decides various questions brought before him by petition as
prescribed by the rules, and performs other duties necessary
and required for the administration of the Patent and Trademark
Office.
The work of examining applications for patents is divided
among a number of examining groups, each group having
jurisdiction over certain assigned fields of technology. Each
group is headed by a group director and staffed by a number of
examiners. The examiners review applications for patents and
determine whether patents can be granted. An appeal can be
taken to the Board of Patent Appeals and Interferences from
their decisions refusing to grant a patent and a review by the
Commissioner of Patents and Trademarks may be had on other
matters by petition. The examiners also identify applications
that claim the same invention and initiate proceedings, known
as interferences, to determine who was the first inventor.
In addition to the examining groups, other offices perform
various services, such as receiving and distributing mail,
receiving new applications, handling sales of printed copies of
patents, making copies of records, inspecting drawings, and
recording assignments.
At present, the Patent and Trademark Office has about
4,400 employees, of whom about half are examiners and others
with technical and legal training. Patent applications are
received at the rate of over 170,000 per year. The Patent and
Trademark Office receives over five million pieces of mail each
year.
PUBLICATIONS OF THE PATENT AND TRADEMARK OFFICE
Patents--The specification and accompanying drawings of
all patents are published on the same day they are granted and
printed copies are sold to the public by the Patent and
Trademark Office. Over 5,000,000 patents have been issued.
Printed copies of any patent, identified by its patent
number, may be purchased from the Patent and Trademark Office.
See fee schedule.
Future patents classified in subclasses containing subject
matter of interest may be obtained, as they issue, by
prepayment of a deposit and a service charge. For the cost of
such subscription service, a separate inquiry should be sent to
the Patent and Trademark Office.
Official Gazette of the United States Patent and Trademark
Office. -- The Official Gazette of the United States Patent and
Trademark Office is the official journal relating to patents
and trademarks. It has been published weekly since January 1872
(replacing the old "Patent Office Reports"), and is now issued
each Tuesday in two parts, one describing patents and the other
trademarks. h contains a claim and a selected figure of the
drawings of each patent granted on that day; notices of patent
and trademark suits; indexes of patents and patentees, list of
patents available for license or sale; and much general
information such as orders, notices, changes in rules, changes
in classification, etc. The Official Gazette is sold on
subscription and by single copies by the Superintendent of
Documents, U.S. Government Printing Office, Washington, D.C.
20402.
The illustrations and claims of the patents are arranged
in the Official Gazette according to the Patent and Trademark
Office classification of subject matter, permitting ready
reference to patents in any particular field. Street addresses
of patentees and a geographical index of residents of inventors
are included. Copies of the Official Gazette may be found in
public libraries of larger cities.
Index of Patents. -- This annual index to the Official
Gazette is currently in two volumes, one an index of patentees
and the other an index by subject matter of the patents. Sold
by Superintendent of Documents.
Index of Trademarks. -- An annual index of registrants of
trademarks. Sold by Superintendent of Documents.
Manual of Classification. -- A looseleaf book containing a
list of all the classes and subclasses of inventions in the
Patent and Trademark Office classification systems, a subject
matter index, and other information relating to classification.
Substitute pages are issued from time to time. Annual
subscription includes the basic manual and substitute pages.
Sold by Superintendent of Documents.
Classification Definitions -- Contains the changes in
classification of patents as well as definitions of new and
revised classes and subclasses. Sold by Patent and Trademark
Office.
Title 37 Code of Federal Regulations. -- Includes rules of
practice for Patents, Trademarks and Copyrights. Available from
the Superintendent of Documents.
Basic Facts about Trademarks -- Contains general
information for the layman about applications for, and
registration of, trademarks and service marks. Copies may be
purchased from Superintendent of Documents.
Directory of Registered Patent Attorneys and Agents
Arranged by States and Countries -- An alphabetical and
geographical listing of patent attorneys and agents registered
to practice before the U.S. Patent and Trademark Office. Sold
by Superintendent of Documents.
Manual of Patent Examining Procedure -- A loose-leaf
manual which serves primarily as a detailed reference work on
patent examining practice and procedure for the Patent and
Trademark Office's Examining Corps. Subscriptions service
includes basic manual, quarterly revisions, and change notices.
Sold by Superintendent of Documents.
The Story of the United States Patent Office. -- A
chronological account of the development of the U.S. Patent and
Trademark Office and patent system and of inventions which had
unusual impact on the American economy and society. Sold by
Superintendent of Documents.
GENERAL INFORMATION AND CORRESPONDENCE
All business with the Patent and Trademark Office should
be transacted by writing to "COMMISSIONER OF PATENTS AND
TRADEMARKS, WASHINGTON, D.C. 20231." Correspondents should be
sure to include their full return addresses, including Zip
Codes.
The principal location of the office is Crystal Plaza 3,
2021 Jefferson Davis highway, Arlington, Virginia. The personal
attendance of applicants at the Office is unnecessary.
Applicants and attorneys are required to conduct their
business with decorum and courtesy. Papers presented in
violation of this requirement will be returned.
Separate letters (but not necessarily in separate
envelopes) should be written in relation to each distinct
subject of inquiry, such as assignments, payments, orders for
printed copies of patents, orders for copies of records,
requests for other services, etc. None of these should be
included with letters responding to Office actions in
applications (see page 19).
When a letter concerns a patent application, the
correspondent must include the serial number, filing date and
Group Art Unit number. When a letter concerns a patent, it must
include the name of the patentee, the title of the invention,
the patent number and the date of issue.
An order for a copy of an assignment must give the book
and page or reel and frame of the record, as well as the name
of the inventor; otherwise, an additional charge is made for
the time consumed in making the search for the assignment.
Applications for patents are not open to the public, and
no information concerning them is released except on written
authority of the applicant, his assignee, or his attorney, or
when necessary to the conduct of the business of the Office.
Patents and related records, including records of any
decisions, the records of assignments other than those relating
to assignments of patent applications, books, and other records
and papers in the Office are open to the public. They may be
inspected in the Patent and Trademark Office Search Room or
copies may be ordered.
The Office cannot respond to inquiries concerning the
novelty and patentability of an invention in advance of the
filing of an application; give advice as to possible
infringement of a patent; advise of the propriety of filing an
application; respond to inquiries as to whether or to whom any
alleged invention has been patented; act as an expounder of the
patent law or as counselor for individuals, except in deciding
questions arising before it in regularly filed cases.
Information of a general nature may be furnished either
directly or by supplying or calling attention to an appropriate
publication.
LIBRARY, SEARCH ROOM SEARCHES AND PATENT AND TRADEMARK
DEPOSITORY LIBRARIES
The Scientific and Technical Information Center of the
Patent and Trademark Office at Crystal Plaza 3, 2021 Jefferson
Davis Highway, Arlington, Va., has available for public use
over 120,000 volumes of scientific and technical books in
various languages, about 90,000 bound volumes of periodicals
devoted to science and technology, the official journals of 77
foreign patent organizations, and over 12 million foreign
patents.
A Search Room is provided where the public may search and
examine United States patents granted since 1836. Patents are
arranged according to the Patent and Trademark Office
classification system of over 400 classes and over 120,000
subclasses. By searching in these classified patents, it is
possible to determine, before actually filing an application,
whether an invention has been anticipated by a United States
patent, and it is also possible to obtain the information
contained in patents relating to any field of endeavor. The
Search Room contains a set of United States patents arranged in
numerical order and a complete set of the Official Gazette.
A Files Information Room also is maintained where the
public may inspect the records and files of issued patents and
other open records.
Applicants, their attorneys or agents, and the general
public are not entitled to use the records and files in the
examiners' rooms.
The Search Room is open from 8 a.m. to 8 p.m. Monday
through Friday except on Federal holidays.
Since a patent is not always granted when an application
is filed, many inventors attempt to make their own
investigation before applying for a patent. This may be done in
the Search Room of the Patent and Trademark Office, and
libraries, located throughout the U.S., which have been
designated as Patent and Trademark Depository Libraries (PTDL).
Patent attorneys or agents may be employed to make a so-called
preliminary search through the prior United States patents to
discover if the particular device or one similar to it has been
shown in some prior patent. This search is not always as
complete as that made by the Patent and Trademark Office during
the examination of an application, but only serves, as its name
indicates a preliminary purpose. For this reason, the Patent
and Trademark Office examiner may, and often does, reject
claims in an application on the basis of prior patents or
publications not found in the preliminary search.
Those who cannot come to the Search Room may order from
the Patent and Trademark Office copies of lists of original
patents or of cross-referenced patents contained in the
subclasses comprising the field of search, or may inspect and
obtain copies of the patents at a Patent and Trademark
Depository Library. The Patent and Trademark Depository
Libraries (PTDLs) receive current issues of U.S. Patents and
maintain collections of earlier issued patents and trademark
information. The scope of these collections varies from library
to library, ranging from patents of only recent years to all or
most of the patents issued since 1790.
These patent collections are open to public use. Each of
the Patent and Trademark Depository Libraries, in addition,
offers the publications of the U.S. Patent Classification
System (e.g., The Manual of Classification, Index to the U.S.
Patent Classification, Classification Definitions, etc.) and
other patent documents and forms, and provides technical staff
assistance in their use to aid the public in gaining effective
access to information contained in patents. The collections are
organized in patent number sequence.
Available in all PTDLs is the Classification And Search
Support Information System (CASSIS), computer data base. With
various modes, it permits the effective identification of
appropriate classifications to search, provides numbers of
patents assigned to a classification to permit finding the
patents in a numerical file of patents, provides the current
classification(s) of all patents, permits word searching on
classification titles, abstracts, the Index provides certain
bibliographic information on more recently issued patents.
Facilities for making paper copies from either microfilm
in readerprinters or from the bound volumes in paper-to-paper
copies are generally provided for a fee.
Due to variations in the scope of patent collections among
the Patent and Trademark Depository Libraries and in their
hours of service to the public, anyone contemplating the use of
the patents at a particular library is advised to contact that
library, in advance, about its collection and hours, so as to
avert possible inconvience.
State Name of Library
Alabama Auburn University Libraries
Birmingham Public Library
Alaska Anchorage: Z. J. Loussac Public
Library
Arizona Tempe: Noble Library, Arizona State
University
Arkansas Little Rock: Arkansas State
University
California Los Angeles City Library
Sacramento: California State Library
San Diego Public Library
Sunnyvale Patent Clearinghouse
Colorado Denver Public Library
Connecticut New Haven: Science Park Library
Delaware Newark: University of Delaware
Library
District of Columbia Washington: Howard University
Libraries
Florida Fort Lauderdale: Broward County Main
Library
Miami-Dade Public Library
Orlando: University of Central
Florida Libraries
Tampa: Tampa Campus Library,
University of South Florida
Georgia Atlanta: Price Gilbert Memorial
Library, Georgia Institute of
Technology
Hawaii Honolulu: Hawaii State Public
Library System
Idaho Moscow: University of Idaho Library
Illinois Chicago Public Library
Springfield: Illinois State Library
Indiana Indianapolis-Marion County Public
Library
West Lafayette: Siegesmund
Engineering Laboratory, Purdue
University
Iowa Des Moines: State Library of Iowa
Kansas Wichita: Ablah Library, Wichita
State University
Kentucky Louisville Free Public Library
Louisiana Baton Rouge: Troy H. Middleton
Library, Louisiana State
University
Maryland College Park: Engineering and
Physical Sciences Library,
University of Maryland
Massachusetts Amherst: Physical Sciences Library,
University of Massachusetts
Boston Public Library
Michigan Ann Arbor: Engineering Library,
University of Michigan
Big Rapids: Abigail S. Timme
Library, Ferris State
University
Detroit Public Library
Minnesota Minneapolis Public Library and
Information Center
Mississippi Jackson: Mississippi Library
Commission
Missouri Kansas City: Linda Hall Library
St. Louis Public Library
Montana Butte: Montana College of Mineral
Science and Technology Library
Nebraska Lincoln: Engineering Library,
University of Nebraska-Lincoln
Nevada Reno: University of Nevada-Reno
Library
New Hampshire Durham: University of New Hampshire
Library
New Jersey Newark Public Library
Piscataway: Library of Science and
Medicine, Rutgers University
New Mexico Albuquerque: University of New
Mexico General Library
New York Albany: New York State Library
Buffalo and Erie County Public
Library
New York Public Library (The
Research Libraries)
North Carolina Raleigh: D. H. Hill Library, North
Carolina State University
North Dakota Grand Forks: Chester Fritz Library,
University of North Dakota
Ohio Cincinnati and Hamilton County,
Public Library of
Cleveland Public Library
Columbus: Ohio State University
Libraries
Toledo/Lucas County Public Library
Oklahoma Stillwater Oklahoma State University
Center for International Trade
Development
Oregon Salem: Oregon State Library
Pennsylvania Philadelphia: The Free Library of
Pittsburgh: Carnegie Library of
University Park: Pattee Library,
Pennsylvania State University
Rhode Island Providence Public Library
South Carolina Charleston: Medical University of
South Carolina Library
Clemson University Libraries
Tennessee Memphis and Shelby County Public
Library and Information Center
Nashville: Stevenson Science
Library, Vanderbilt University
Texas Austin: McKinney Engineering
Library, University of Texas at
Austin
College Station: Sterling C. Evans
Library, Texas A & M University
Dallas Public Library
Houston: The Fondren Library, Rice
University
Utah Salt Lake City: Marriott Library,
University of Utah
Virginia Richmond: James Branch Cabell
Library, Virginia Commonwealth
University
Washington Seattle: Engineering Library,
University of Washington
West Virginia Morgantown: Evansdale Library, West
Virginia University
Wisconsin Madison: Kurt F. Wendt Library,
University of Wisconsin-Madison
Milwaukee Public Library
ATTORNEYS AND AGENTS
The preparation of an application for patent and the
conducting of the proceedings in the Patent and Trademark
Office to obtain the patent is an undertaking requiring the
knowledge of patent law and Patent and Trademark Office
practice as well as knowledge of the scientific or technical
matters involved in the particular invention.
Inventors may prepare their own applications and file them
in the Patent and Trademark Office and conduct the proceedings
themselves, but unless they are familiar with these matters or
study them in detail, they may get into considerable
difficulty. While a patent may be obtained in many cases by
persons not skilled in this work, there would be no assurance
that the patent obtained would adequately protect the
particular invention.
Most inventors employ the services of registered patent
attorneys or patent agents. The law gives the Patent and
Trademark Office the power to make rules and regulations
governing conduct and the recognition of patent attorneys and
agents to practice before the Patent and Trademark Office.
Persons who are not recognized by the Patent and Trademark
Office for this practice are not permitted by law to represent
inventors before the Patent and Trademark Office. The Patent
and Trademark Office maintains a register of attorneys and
agents. To be admitted to this register, a person must comply
with the regulations prescribed by the Office, which require a
showing that the person is of good moral character
and of good repute and that he/she has the legal and scientific
and technical qualifications necessary to render applicants for
patents a valuable service. Certain of these qualifications
must be demonstrated by the passing of an examination. Those
admitted to the examination must have a college degree in
engineering or physical science or the equivalent of such a
degree. The Patent and Trademark Office registers both
attorneys at law and persons who are not attorneys at law. The
former persons are now referred to as "patent attorneys" and
the latter persons are referred to as "patent agents." Insofar
as the work of preparing an application for patent and
conducting the prosecution in the Patent and Trademark Office
is concerned, patent agents are usually just as well qualified
as patent attorneys, although patent agents cannot conduct
patent litigation in the courts or perform various services
which the local jurisdiction considers as practicing law. For
example, a patent agent could not draw up a contract relating
to a patent, such as an assignment or a license, if the State
in which he resides considers drawing contracts as practicing
law.
Some individuals and organizations that are not registered
advertise their services in the fields of patent searching and
invention marketing and development. Such individuals and
organizations cannot represent inventors before the Patent and
Trademark Office. They. are not subject to Patent and Trademark
Office discipline, and the Office cannot assist inventors in
dealing with them.
The Patent and Trademark Office cannot recommend any
particular attorney or agent, or aid in the selection of an
attorney or agent, as by stating, in response to inquiry that a
named patent attorney, agent, or firm, is "reliable" or
"capable." The Patent and Trademark Office publishes a
directory of all registered patent attorneys and agents who
have indicated their availability to accept new clients,
arranged by states, cities, and foreign countries. The
Directory must be purchased from the Government Printing
Office.
The telephone directories of most large cities have, in
the classified section, a heading for patent attorney's under
which those in that area are listed. Many large cities have
associations of patent attorneys.
In employing a patent attorney or agent, the inventor
executes a power of attorney or authorization of agent which
must be filed in the Patent and Trademark Office and is usually
a part of the application papers. When an attorney has been
appointed, the Office does not communicate with the inventor
directly but conducts the correspondence with the attorney
since he/she is acting for the inventor thereafter, although
the inventor is free to contact the Patent and Trademark Office
concerning the status of his/her application. The inventor may
remove the attorney or agent by revoking the power of
authorization.
The Patent and Trademark Office has the power to disbar,
or suspend from practicing before it, persons guilty of gross
misconduct, etc., but this can only be done after a full
hearing with the presentation of clear and convincing evidence
concerning the misconduct. The Patent and Trademark Office will
receive and, in appropriate cases, act upon complaints against
attorneys and agents. The fees charged to inventors by patent
attorneys and agents for their professional services are not
subject to regulation by the Patent and Trademark Office.
Definite evidence of overcharging may afford basis for Patent
and Trademark Office action, but the Office rarely intervenes
in disputes concerning fees.
DISCLOSURE DOCUMENT
One of the services provided for inventors is the
acceptance and preservation for a two-year period of papers
disclosing an invention. This disclosure is accepted as
evidence of the dates of conception of the invention.
It will be retained for two years at which time it will be
destroyed unless it is referred to in a separate letter in a
related patent application.
A fee must accompany the disclosure. See current fee
schedule. The disclosure is limited to written matter or
drawings on paper or other thin, flexible material, such as
linen or plastic drafting material, having dimensions or being
folded to dimensions not to exceed 8-1/2 x 13 inches (21.6 by
33.0 cm). Photographs are acceptable. Each page should be
numbered. Text and drawings should be of such quality as to
permit reproduction.
The disclosure must be accompanied by a stamped,
self-addressed envelope and a duplicate copy also signed by the
inventor. The papers will be stamped with an identifying number
and returned with the reminder that the Disclosure Document may
be relied upon only as evidence of the date of conception and
that an application must be filed in order to provide patent
protection.
WHO MAY APPLY FOR A PATENT
According to the law, only the inventor may apply for a
patent, with certain exceptions. If a person who is not the
inventor should apply for a patent, the patent, if it were
obtained, would be invalid. The person applying in such a case
who falsely states that he/she is the inventor would also be
subject to criminal penalties. If the inventor is dead, the
application may be made by legal representatives, that is, the
administrator or executor of the estate. If the inventor is
insane, the application for patent may be made by a guardian.
If an inventor refuses to apply for a patent or cannot be
found, a joint inventor or a person having a proprietary
interest in the invention may apply on behalf of the missing
inventor.
If two or more persons make an invention jointly, they
apply for a patent as joint inventors. A person who makes a
financial contribution is not a joint inventor and cannot be
joined in the application as an inventor. It is possible to
correct an innocent mistake in erroneously omitting an inventor
or erroneously naming a person as an inventor.
Officers and employees of the Patent and Trademark Office
are prohibited by law from applying for a patent or acquiring,
directly or indirectly, except by inheritance or bequest, any
patent or any right or interest in any patent.
APPLICATION FOR PATENT
An application for a patent is made to the Commissioner of
Patents and Trademarks and includes:
(1) A written document which comprises a specification
(description and claims), and an oath or declaration;
(2) A drawing in those cases in which a drawing is necessary;
(3) The filing fee. See fee schedule.
The specification and oath or declaration must be legibly
written or printed in permanent ink on one side of the paper.
The Office prefers typewriting on letter or legal size 8 to 8
1/2 by 10 1/2 to 13 inches, (20.3 to 21.6 by 26.7 to 33.0 cm) 1
1/2 or double spaced with margins of 1 inch (2.54 cm) on the
left-hand side and at the top. If the papers filed are not
correctly, legibly, and clearly written, the Patent and
Trademark Office may require typewritten or printed papers.
The application for patent is not forwarded for
examination until all its required parts, complying with the
rules relating thereto, are received. If the papers and parts
are incomplete, or so defective that they cannot be accepted as
a complete application for examination, the applicant will be
notified about the deficiencies and be given a time period in
which to remedy them. A surcharge may be required. If the
applicant does not respond within the prescribed time period.
The application will be returned or otherwise disposed of. The
filing fee may be refunded when an application is refused
acceptance as incomplete; however, a handling fee will be
charged.
It is desirable that all parts of the complete application
be deposited in the Office together; otherwise each part must
be signed and a letter must accompany each part, accurately and
clearly connecting it with the other parts of the application.
All applications are numbered in serial order, and the
applicant is informed of the serial number and filing date of
the application by a filing receipt. The filing date of the
application is the date on which the names of the inventors, a
specification (including claims) and any required drawings are
received in the Patent and Trademark Office; or the date on
which the last part completing the application are received in
the case of a previously incomplete or defective application.
Oath or Declaration, Signature
The oath or declaration of the applicant is required by
law. The inventor must make an oath or declaration that he she
believes himself herself to be the original and first inventor
of the subject matter of the application, and he she must make
various other allegations required by law and various
allegations required by the Patent and Trademark Office rules.
The oath must be sworn to by the inventor before a notary
public or other officer authorized to administer oaths. A
declaration may be used in lieu of an oath as part of the
original application for a patent involving designs, plants,
and other patentable inventions; for reissue patents; when
claiming matter originally shown or described but not
originally claimed; or when filing a divisional or continuing
application. A declaration does not need to be notarized.
The application, oath or declaration must be signed by the
inventor in person, or by the person entitled by law to make
application on the inventor's behalf. A full first or middle
name of each inventor without abbreviation and a middle or
first initial, if any, is required. The postoffice address of
the inventor is also required.
Blank forms for applications or certain other papers are
not supplied by the Patent and Trademark Office.
The papers in a complete application will not be returned
for any purpose whatever, nor will the filing fee be returned.
If applicants have not preserved copies of the papers, the
Office will furnish copies for a fee.
Filing Fees*
The filing fee of an application, except in design and
plant cases, consists of a basic fee and additional fees. The
basic fee entitles applicant to present twenty (20) claims,
including not more than three (3) in independent form. An
additional fee is required for each claim in independent form
which is in excess of three (3) and an additional fee is
required for each claim (whether independent or dependent)
which is in excess of a total of twenty (20) claims. If the
application contains multiple dependent claims, additional fees
are required.
If the owner of the invention is a small entity, (an
independent inventor, a small business concern or a non-profit
organization), the filing fees are reduced by half if the small
entity files a verified statement. Copies of sample
verification statements are enclosed.
To avoid errors in the payment of fees it is suggested
that the table in the enclosed patent application transmittal
letter be utilized to calculate the fee payment.
In calculating fees, a claim is in singularly dependent
form if it incorporates by reference a single preceding claim
which may be an independent or a dependent claim. A multiple
dependent claim or any claim depending therefrom shall be
considered as separate dependent claims in accordance with the
number of claims to which reference is made.
The law also provides for the payment of additional fees
on presentation of additional claims after the application is
filed.
When an amendment is filed which presents additional
claims over the total number already paid for, or additional
independent claims over the number of independent claims
already accounted for, it must be accompanied by any additional
fees due.
* Please Note: The fees are current as of the revision date.
Fees are subject to change in October each year therefore
they should be verified before submission to the PTO. A
fee schedule may be obtained by writing 16 Commissioner of
Patents, Washington, D.C. 20231 -- Attention Public Service
Branch.
SPECIFICATION (DESCRIPTION AND CLAIMS)
The specification must include a written description of
the invention and of the manner and process of making and using
it, and is required to be in such full, clear, concise, and
exact terms as to enable any person skilled in the
technological area to which the invention pertains, or with
which it is most nearly connected, to make and use the same.
The specification must set forth the precise invention for
which a patent is solicited, in such manner as to distinguish
it from other inventions and from what is old. It must describe
completely a specific embodiment of the process, machine,
manufacture, composition of matter or improvement invented, and
must explain the mode of operation or principle whenever
applicable. The best mode contemplated by the inventor of
carrying out his invention must be set forth.
In the case of an improvement, the specification must
particularly point out the part or parts of the process,
machine, manufacture, or composition of matter to which the
improvement relates, and the description should be confined to
the specific improvement and to such parts as necessarily
cooperate with it or as may be necessary to a complete
understanding or description of it.
The title of the invention, which should be as short and
specific as possible, should appear as a heading on the first
page of the specification, if it does not otherwise appear at
the beginning of the application.
A brief abstract of the technical disclosure in the
specification must be set forth in a separate page immediately
following the claims in a separate paragraph under the heading
"Abstract of the Disclosure."
A brief summary of the invention indicating its nature and
substance, which may include a statement of the object of the
invention, commensurate with the invention as claimed and any
object recited should precede the detailed description. Such
summary should be that of the invention as claimed.
When there are drawings, there shall be a brief
description of the several views of the drawings, and the
detailed description of the invention shall refer to the
different views by specifying the numbers of the figures, and
to the different parts by use of reference numerals.
The specification must conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as the invention.
The claims are brief descriptions of the subject matter of
the invention, eliminating unnecessary details and reciting all
essential features necessary to distinguish the invention from
what is old. The claims are the operative part of the patent.
Novelty and patentability are judged by the claims,' and, when
a patent is granted, questions of infringement are judged by
the courts on the basis of the claims.
When more than one claim is presented, they may be placed
in dependent form in which a claim may refer back to and
further restrict one or more preceding claims.
A claim in multiple dependent form shall contain a
reference, in the alternative only, to more than one claim
previously set forth and then specify a further limitation of
the subject matter claimed. A multiple dependent claim shall
not serve as a basis for any other multiple dependent claim. A
multiple dependent claim shall be construed to incorporate by
reference all the limitations of the particular claim in
relation to which it is being considered.
The claim or claims must conform to the invention as set
forth in the remainder of the specification and the terms and
phrases used in the claims must find clear support or
antecedent basis in the description so that the meaning of the
terms in the claims may be ascertainable by reference to the
description.
The following order of arrangement should be observed in
framing the specification:
(a) Title of the invention.
(b) Cross-references to related applications, if any.
(c) Brief summary of the invention.
(d) Brief description of the several views of the drawing, if
there are drawings.
(e) Detailed Description.
(f) Claim or claims.
(g) Abstract of the disclosure.
DRAWING
The applicant for a patent will be required by law to
furnish a drawing of the invention whenever the nature of the
case requires a drawing to understand the invention. However,
the Commissioner may require a drawing where the nature of the
subject matter admits of it; this drawing must be filed with
the application. This includes practically all inventions
except compositions of matter or processes, but a drawing may
also be useful in the case of many processes.
The drawing must show every feature of the invention
specified in the claims and is required by the Office rules to
be in a particular form. The Office specifies the size of the
sheet on which the drawing is made, the type of paper, the
margins, and other details relating to the making of the
drawing. The reason for specifying the standards in detail is
that the drawings are printed and published in a uniform style
when the patent issues, and the drawings must also be such that
they can be readily understood by persons using the patent
descriptions.
No names or other identification will be permitted within
the "sight" of the drawing, and applicants are expected to use
the space above and between the hole locations to identify each
sheet of drawings. This identification may consist of the
attorney's name and docket number or the inventor's name and
case number and may include the sheet number and the total
number of sheets filed (for example, "sheet 2 of 4"). The
following rule, reproduced from title 37 of the Code of Federal
Regulations, relates to the standards for drawings:
1.84 Standards for drawings.
(a) Paper and ink. Drawings must be made upon paper which is
flexible, strong, white, smooth, non-shiny and durable.
India ink, or its equivalent in quality, is preferred for
pen drawings to secure perfectly black solid lines. The
use of white pigment to cover lines is not normally
acceptable.
(b) Size of sheet and margins. The size of the sheets on which
drawings are made may either be exactly 81/2 by 14 inches
(21.6 by 35.6 cm.) or exactly 21.0 by 29.7 cm. (DIN size
A4). All drawing sheets in a particular application must
be the same size. One of the shorter sides of the sheet is
regarded as its top.
(1) On 81/2 by 14 inch drawing sheets, the drawings must
include a top margin of 2 inches (5.1 cm.) and bottom and
side margins of 1/4 inch (6.4 mm.) from the edges, thereby
leaving a "sight" precisely 8 by 113/4 inches (20.3 by
29.8 cm.). Margin border lines are not permitted. All work
must be included within the "sight". The sheets may be
provided with two 1/4 inch (6.4 mm.) diameter holes having
their centerlines spaced 11/16 inch (17.5 mm.) below the
top edge and 23/4 inches (7.0 cm.) apart, said holes being
equally spaced from the respective side edges.
(2) On 21.0 by 29.7 cm. drawing sheets, the drawing must
include a top margin of at least 2.5 cm., a left side
margin of 2.5 cm., a right side margin of 1.5 cm., and a
bottom margin of 1.0 cm. Margin border lines are not
permitted. All work must be contained within a sight size
not to exceed 17 by 26.2 cm.
(c) Character of lines. All drawings must be made with
drafting instruments or by a process which will give them
satisfactory reproduction characteristics. Every line and
letter must be durable, black, sufficiently dense and
dark, uniformly thick and well defined; the weight of all
lines and letters must be heavy enough to permit adequate
reproduction. This direction applies to all lines however
fine, to shading, and to lines representing cut surfaces
in sectional views. All lines must be clean, sharp, and
solid. Fine or crowded lines should be avoided. Solid
black should not be used for sectional or surface shading.
Freehand work should be avoided wherever it is possible to
do so.
(d) Hatching and shading. (1) Hatching should be made by
oblique parallel lines spaced sufficiently apart to enable
the lines to be distinguished without difficulty. (2)
Heavy lines on the shade side of objects should preferably
be used except where they tend to thicken the work and
obscure reference characters. The light should come from
the upper left-hand corner at an angle of 45 degrees.
Surface delineations should preferably be shown by proper
shading, which should be open.
(e) Scale. The scale to which a drawing is made ought to be
large enough to show the mechanism without crowding when
the drawing is reduced in size to two-thirds in
reproduction, and views of portions of the mechanism on a
larger scale should be used when necessary to show details
clearly; two or more sheets should be used if one does not
give sufficient room to accomplish this end, but the
number of sheets should not be more than is necessary.
(f) Reference characters. The different views should be
consecutively numbered figures. Reference numerals (and
letters, but numerals are preferred) must be plain,
legible and carefully formed, and not be encircled. They
should, if possible, measure at least one-eighth of an
inch (3.2 mm.) in height so that they may bear reduction
to one twenty-fourth of an inch (1.1 mm.); and they may be
slightly larger when there is sufficient room. They should
not be so placed in the close and complex parts of the
drawing as to interfere with a thorough comprehension of
the same, and therefore should rarely cross or mingle with
the lines. When necessarily grouped around a certain part,
they should be placed at a little distance, at the closest
point where there is available space, and connected by
lines with the parts to which they refer. They should not
be placed upon hatched or shaded surfaces but when
necessary, a blank space may be left in the hatching or
shading where the character occurs so that it shall appear
perfectly distinct and separate from the work. The same
part of an invention appearing in more than one view of
the drawing must always be designated by the same
character, and the same character must never be used to
designate different parts. Reference signs not mentioned
in the description shall not appear in the drawing, and
vice versa.
(g) Symbols, legends. Graphical drawing symbols and other
labeled and labeled representation are used must be
adequately identified in the specification. While
descriptive matter on drawings is not permitted, suitable
legends may be used, or may be required in proper cases,
as in diagrammatic views and flow sheets or to show
materials or where labeled representations are employed to
illustrate conventional elements. Arrows may be required,
in proper cases, to show direction of movement. The
lettering should be as large as, or larger than, the
reference characters.
(h) [Reserved]
(i) Views. The drawing must contain as many figures as may be
necessary to show the invention; the figures should be
consecutively numbered if possible in the order in which
they appear. The figures may be plain, elevation, section,
or perspective views, and detail views of portions of
elements, on a larger scale if necessary, may also be
used. Exploded views, with the separated parts of the same
figure embraced by a bracket, to show the relationship or
order of assembly of various parts are permissible. When
necessary, a view of a large machine or device in its
entirety, may be broken and extended over several sheets
if there is no loss in facility of understanding the view.
Where figures on two or more sheets form in effect a
single complete figure, the figures on the several sheets
should be so arranged that the complete figure can be
understood by laying the drawing sheets adjacent to one
another. The arrangement should be such that no part of
any of the figures appearing on the various sheets are
concealed and that the complete figure can be understood
even though spaces will occur in the complete figure
because of the margins on the drawing sheets. The plane
upon which a sectional view is taken should be indicated
on the general view by a broken line, the ends of which
should be designated by numerals corresponding to the
figure number of the sectional view and have arrows
applied to indicate the direction in which the view is
taken. A moved position may be shown by a broken line
superimposed upon a suitable figure if this can be done
without crowding, otherwise a separate figure must be used
for this purpose. Modified forms of construction can only
be shown in separate figures. Views should not be
connected by projection lines nor should center lines be
used.
(j) Arrangement of views. All views on the same sheet should
stand in the same direction and, if possible, stand so
that they can be read with the sheet held in an upright
position. If views longer than the width of the sheet are
necessary for the clearest illustration of the invention,
the sheet may be turned on its side so that the top of the
sheet with the appropriate top margin is on the right-hand
side. One figure must not be placed upon another or within
the outline of another.
(k) Figure for Official Gazette. The drawing should, as far as
possible, be so planned that one of the views will be
suitable for publication in the Official Gazette as the
illustration of the invention.
(l) Extraneous matter. Identifying indicia (such as the
attorney's docket number, inventor's name, number of
sheets, etc.) not to exceed 2 3/4 inches (7.0 cm.) in width
may be placed in a centered location between the side
edges within three-fourths inch (19.1 mm.) of the top
edge. Authorized security markings may be placed on the
drawings provided they are outside the illustrations and
are removed when the material is declassified. Other
extraneous matter will not be permitted upon the face of a
drawing.
(m) Transmission of drawings. Drawings transmitted to the
Office should be sent flat, protected by a sheet of heavy
binder's board, or may be rolled for transmission in a
suitable mailing tube; but must never be folded. If
received creased or mutilated, new drawings will be
required. (See 1.152 for design drawing, 1.165 for plant
drawings, and 1.174 for reissue drawings.)
The requirements relating to drawings are strictly
enforced, but a drawing not complying with all of the
regulations may be accepted for purpose of examination, and
correction or a new drawing will be required later.
Applicants are advised to employ competent draftsmen to
make their drawings.
MODELS, EXHIBITS, SPECIMENS
Models are not required in most patent applications since
the description of the invention in the specification and the
drawings must be sufficiently full and complete and capable of
being understood to disclose the invention without the aid of a
model. A model will not be admitted unless specifically
requested by the examiner.
A working model, or other physical exhibit, may be
required by the Office if deemed necessary. This is not done
very often. A working model may be requested in the case of
applications for patent for alleged perpetual motion devices.
When the invention relates to a composition of matter, the
applicant may be required to furnish specimens of the
composition, or of its ingredients or intermediates, for
inspection or experiment. If the invention is a microbiological
invention, a deposit of the micro-organism involved is
required.
EXAMINATION OF APPLICATIONS AND PROCEEDINGS IN THE PATENT AND
TRADEMARK OFFICE
Applications filed in the Patent and Trademark Office and
accepted as complete applications are assigned for examination
to the respective examining groups having charge of the areas
of technology related to the invention. In the examining group,
applications are taken up for examination by the examiner to
whom they have been assigned in the order in which they have
been filed or in accordance with examining procedures
established by the Commissioner.
Applications will not be advanced out of turn for
examination or for further action except as provided by the
rules, or upon order of the Commissioner to expedite the
business of the Office, or upon a verified showing which, in
the opinion of the Commissioner, will justify advancing them.
The examination of the application consists of a study of
the application for compliance with the legal requirements and
a search through United States patents, prior foreign patent
documents which are available in the Patent and Trademark
Office, and available literature, to see if the claimed
invention is new and unobvious. A decision is reached by the
examiner in the light of the study and the result of the
search.
Office Action
The applicant is notified in writing of the examiner's
decision by an "action" which is normally mailed to the
attorney or agent. The reasons for any adverse action or any
objection or requirement are stated in the action and such
information or references are given as may be useful in aiding
the applicant to judge the propriety of continuing the
prosecution of his application.
If the invention is not considered patentable subject
matter, the claims will be rejected. If the examiner finds that
the invention is not new, the claims will be rejected, but the
claims may also be rejected if they differ only in an obvious
manner from what is found. It is not uncommon for some or all
of the claims to be rejected on the first action by the
examiner; relatively few applications are allowed as filed.
Applicant's Response
The applicant must request reconsideration in writing, and
must distinctly and specifically point out the supposed errors
in the examiner's action. The applicant must respond to every
ground of objection and rejection in the prior Office action
(except that a request may be made that objections or
requirements as to form not necessary to further consideration
of the claims be held in abeyance until allowable subject
matter is indicated), and the applicant's action must appear
throughout to be a bona fide attempt to advance the case to
final action. The mere allegation that the examiner has erred
will not be received as a proper reason for such
reconsideration.
In amending an application in response to a rejection, the
applicant must clearly point out why he/she thinks the amended
claims are patentable in view of the state of the art disclosed
by the prior references cited or the objections made. He/she
must also show how the claims as amended avoid such references
or objections.
After response by applicant the application will be
reconsidered, and the applicant will be notified if claims are
rejected, or objections or requirements made, in the same
manner as after the first examination. The second Office action
usually will be made final.
Final Rejection
On the second or later consideration, the rejection or
other action may be made final. The applicant's response is
then limited to appeal in the case of rejection of any claim
and further amendment is restricted. Petition may be taken to
the Commissioner in the case of objections or requirements not
involved in the rejection of any claim. Response to a final
rejection or action must include cancellation of, or appeal
from the rejection of, each claim so rejected and, if any claim
stands allowed, compliance with any requirement or objection as
to form.
In making such final rejection, the examiner repeats or
states all grounds of rejection then considered applicable to
the claims in the application.
Interviews with examiners may be arranged, but an
interview does not remove the necessity for response to Office
actions within the required time, and the action of the Office
is based solely on the written record.
If two or more inventions are claimed in a single
application, and are regarded by the Office to be of such a
nature that a single patent should not be issued for both of
them, the applicant will be required to limit the application
to one of the inventions. The other invention may be made the
subject of a separate application which, if filed while the
first application is still pending, will be entitled to the
benefit of the filing date of the first application. A
requirement to restrict the application to one invention may be
made before further action by the examiner.
As a result of the examination by the Office, patents are
granted in the case of about two out of every three
applications for patents which are filed.
AMENDMENTS TO APPLICATION
Following are some details concerning amendments to the
application:
The applicant may amend before or after the first
examination and action as specified in the rules, or when and
as specifically required by the examiner.
After final rejection or action amendments may he made
canceling claims or complying with any requirement of form
which has been made but the admission of any such amendment or
its refusal, and any proceedings relative thereto, shall not
operate to relieve the application from its condition as
subject to appeal or to save it from abandonment.
If amendments touching the merits of the application are
presented after final rejection, or after appeal has been
taken, or when such amendment might not otherwise be proper,
they may be admitted upon a showing of good and sufficient
reasons why they are necessary and were not earlier presented.
No amendment can be made as a matter of right in appealed
cases. After decision on appeal, amendments can only be made as
provided in the rules.
The specifications, claims, and drawing must be amended
and revised when required, to correct inaccuracies of
description and definition of unnecessary words, and to secure
correspondence between the claims, the description, and the
drawing.
All amendments of the drawings or specifications, and all
additions thereto, must conform to at least one of them as it
was at the time of the filing of the application. Matter not
found in either, involving a departure from or an addition to
the original disclosure, cannot be added to the application
even though supported by a supplemental oath or declaration,
and can be shown or claimed only in a separate application.
The claims may be amended by canceling particular claims,
by presenting new claims, or by amending the language of
particular claims (such amended claims being in effect new
claims). In presenting new or amended claims, the applicant
must point out how they avoid any reference or ground rejection
of record which may be pertinent.
Erasures, additions, insertions, or alterations of the
papers and records must not be made by the applicant.
Amendments are made by filing a paper, directing or requesting
that specified changes or additions be made. The exact word or
words to be stricken out or inserted in the application must be
specified and the precise point indicated where the deletion or
insertion is to be made.
Amendments are "entered" by the Office by making the
proposed deletions by drawing a line in red ink through the
word or words canceled and by making the proposed substitutions
or insertions in red ink, small insertions being written in at
the designated place and larger insertions being indicated by
reference.
No change in the drawing may be made except by permission
of the Office. Changes in the construction shown in any drawing
may be made only by submitting new drawings. A sketch in
permanent ink showing proposed changes, to become part of the
record, must be filed for approval by the Office before the new
drawings are filed. The paper requesting amendments to the
drawing should be separate from other papers.
If the number or nature of the amendments render it
difficult to consider the case, or to arrange the papers' for
printing or copying, the examiner may require the entire
specification or claims, or any part thereof, to be rewritten.
The original numbering of the claims must be preserved
throughout the prosecution. When claims are canceled, the
remaining claims must not be renumbered. When claims are added
by amendment or substituted for canceled claims, They must be
numbered by the applicant consecutively beginning with the
number next following the highest numbered claim previously
presented. When the application is ready for allowance, the
examiner, if necessary, will renumber the claims consecutively
in the order in which they appear or in such order as may have
been requested by applicant.
TIME FOR RESPONSE AND ABANDONMENT
The response of an applicant to an action by the Office
must be made within a prescribed time limit. The maximum period
for response is set at 6 months by the statute which also
provides that the Commissioner may shorten the time for reply
to not less than 30 days. The usual period for response to an
Office action is 3 months. A shortened time for reply may be
extended up to the maximum 6 months period. An extension of
time fee is normally required to be paid if the response period
is extended. The amount of the fee is dependent upon the length
of the extension. If no reply is received within the time
period, the application is considered as abandoned and no
longer pending. However, if it can be shown that the failure to
prosecute was unavoidable or unintentional, the application may
be revived by the Commissioner. The revival requires a petition
to the Commissioner, and a fee for the petition, which should
be filed without delay. The proper response must also accompany
the petition if it has not yet been filed.
APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES AND TO
THE COURTS
If the examiner persists in the rejection of any of the
claims in an application, or if the rejection has been made
final, the applicant may appeal to the Board of Patent Appeals
and Interferences in the Patent and Trademark Office. The Board
of Patent Appeals and Interferences consists of the
Commissioner of Patents and Trademarks, the Deputy
Commissioner, the Assistant Commissioners, and the
examiners-in-chief, but normally each appeal is heard by only
three members. An appeal fee is required and the applicant must
file a brief to support his/her position. An oral hearing will
be held if requested upon payment of the specified fee.
As an alternative to appeal, in situations where an
applicant desires consideration of different claims or further
evidence, a new continuation application is often filed. The
new application requires a filing fee and should submit the
claims and evidence for which consideration is desired. If it
is filed before expiration of the period for appeal and
specific reference is made therein to the earlier application,
applicant will be entitled to the earlier filing date for
subject matter common to both applications.
If the decision of the Board of Patent Appeals and
Interferences is still adverse to the applicant, an appeal may
be taken to the Court of Appeals for the Federal Circuit or a
civil action may be filed against the Commissioner in the
United States District court for the District of Columbia. The
Court of Appeals for the Federal Circuit will review the record
made in the Office and may affirm or reverse the office's
action. In a civil action, the applicant may present testimony
in the court, and the court will make a decision.
INTERFERENCES
Occasionally two or more applications are filed by
different inventors claiming substantially the same patentable
invention. The patent can only be granted to one of them, and a
proceeding known as an "interference" is instituted by the
Office to determine who is the first inventor and entitled to
the patent. About 1 percent of the applications filed become
involved in an interference proceeding. Interference
proceedings may also be instituted between an application and a
patent already issued, provided the patent has not been issued
for more than one year prior to the filing of the conflicting
application, and provided that the conflicting application is
not barred from being patentable for some other reason.
Each party to such a proceeding must submit evidence of
facts proving when the invention was made. In view of the
necessity of proving the various facts and circumstances
concerning the making of the invention during an interference,
inventors must be able to produce evidence to do this. If no
evidence is submitted a party is restricted to the date of
filing the application as his earliest date. The priority
question is determined by a board of three Examiners-in-Chief
on the evidence submitted. From the decision of the Board of
Patent Appeals and Interferences, the losing party may appeal
to the Court of Appeals for the Federal Circuit or file a civil
action against the winning party in the appropriate United
States district court.
The terms "conception of the invention" and "reduction to
practice" are encountered in connection with priority
questions. Conception of the invention refers to the completion
of the devising of the means for accomplishing the result.
Reduction to practice refers to the actual construction of the
invention in physical form; in the case of a machine it
includes the actual building of the machine, in the case of an
article or composition it includes the actual making of the
article or composition, in the case of a process it includes
the actual carrying out of the steps of the process; and actual
operation, demonstration, or testing for the intended use is
also usually necessary. The filing of a regular application for
patent completely disclosing the invention is treated as
equivalent to reduction to practice. The inventor who proves to
be the first to conceive the invention and the first to reduce
it to practice will be held to be the prior inventor, but more
complicated situations cannot be stated this simply.
ALLOWANCE AND ISSUE OF PATENT
If, on examination of the application, or at a later stage
during the reconsideration of the application, the patent
application is found to be allowable, a notice of allowance
will be sent to the applicant, or to applicant's attorney or
agent, and a fee for issuing the patent is due within three
months from the date of the notice.
The issue fee is due within three months after a written
notice of allowance is mailed to the applicant. If timely
payment is not made the application will be regarded as
abandoned. See current fee schedule.
A provision is made in the statute whereby the
Commissioner may accept the fee late, on a showing of
unavoidable delay. When the issue fee is paid, the patent
issues as soon as possible after the date of payment, dependent
upon the volume of printing on hand. The patent grant then is
delivered or mailed on the day of its grant, or as soon
thereafter as possible, to the inventor's attorney or agent if
there is one of record, otherwise directly to the inventor. On
the date of the grant, the patent file becomes open to the
public. Printed copies of the specification and drawing are
available on the same date.
In case the publication of an invention by the granting of
a patent would be detrimental to the national defense, the
patent law gives the Commissioner the power to withhold the
grant of the patent and to order the invention kept secret for
such period of time as the national interest requires.
NATURE OF PATENT AND PATENT RIGHTS
The patent is issued in the name of the United States
under the seal of the Patent and Trademark Office, and is
either signed by the Commissioner of Patents and Trademarks or
has his name written thereon and attested by an Office
official. The patent contains a grant to the patentee and a
printed copy of the specification and drawing is annexed to the
patent and forms a part of it. The grant confers "the right to
exclude others from making, using or selling the invention
throughout the United States" and its territories and
possessions for the term of 17 years subject to the payment of
maintenance fees as provided by law.
The exact nature of the right conferred must be carefully
distinguished, and the key is in the words "right to exclude"
in the phrase just quoted. The patent does not grant the right
to make, use, or sell the invention but only grants the
exclusive nature of the right. Any person is ordinarily free to
make, use, or sell anything he pleases, and a grant from the
Government is not necessary. The patent only grants the right
to exclude others from making, using, or selling the invention.
Since the patent does not grant the right to make, use, or sell
the invention, the patentee's own right to do so is dependent
upon the rights of others and whatever general laws might be
applicable. A patentee, merely because he or she has received a
patent for an invention, is not thereby authorized to make, use
or sell the invention if doing so would violate any law. An
inventor of a new automobile who has obtained a patent thereon
would not be entitled to use the patented automobile in
violation of the laws of a State requiring a license, nor may a
patentee sell an article the sale of which may be forbidden by
a law, merely because a patent has been obtained. Neither may a
patentee make, use or sell his/her own invention if doing so
would infringe the prior rights of others. A patentee may not
violate the Federal antitrust laws, such as by resale price
agreements or entering into combination in restraints of trade,
or the pure food and drug laws, by virtue of having a patent.
Ordinarily there is nothing which prohibits a patentee from
making, using, or selling his/her own invention, unless he/she
thereby infringes another's patent which is still in force.
Since the essence of the right granted by a patent is the
right to exclude others from commercial exploitation of the
invention, the patentee is the only one who may make, use, or
sell the invention. Others may not do so without authorization
from the patentee. The patentee may manufacture and sell the
invention or may. license, that is, give authorization to
others to do so.
The term of a patent is 17 years. A maintenance fee is due
3 1/2, 7 1/2 and 11 1/2 years after the original grant for all
patents issuing from the applications filed on and after
December 12, 1980. The maintenance fee must be paid at the
stipulated times to maintain the patent in force. After the
patent has expired anyone may make, use, or sell the invention
without permission of the patentee, provided that matter
covered by other unexpired patents is not used. The terms may
not be extended except by special act of Congress except for
certain pharmaceuticals.
MAINTENANCE FEES
All utility patents which issue from applications filed on
and after December 12, 1980 are subject to the payment of
maintenance fees which must be paid to maintain the patent in
force. These fees are due at 3 1/2, 7 1/2 and 11 1/2 years from
the date the patent is granted and can be paid without a
surcharge during the "window-period" which is the six month
period preceding each due date, e.g., 3 years to 3 years and
six months, etc. See fee schedule for a list of maintenance
fees.
Failure to pay the current maintenance fee on time may
result in expiration of the patent. A six month grace period is
provided when the maintenance fee may be paid with a surcharge.
The grace period is the six month period immediately following
the due date. The Patent and Trademark Office does not mail
notices to patent owners that maintenance fees are due. If,
however, the maintenance fee is not paid on time, efforts are
made to remind the responsible party that the maintenance fee
may be paid during the grace period with a surcharge.
Patents relating to some pharmaceutical inventions may be
extended by the Commissioner for up to five years to compensate
for marketing delays due to Federal premarketing regulatory
procedures. Patents relating to all other types of inventions
can only be extended by enactment of special Federal
legislation.
CORRECTION OF PATENTS
Once the patent is granted, it is outside the jurisdiction
of the Patent and Trademark Office except in a few respects.
The Office may issue without charge a certificate
correcting a clerical error it has made in the patent when the
printed patent does not correspond to the record in the Office.
These are mostly corrections of typographical errors made in
printing.
Some minor errors of a typographical nature made by the
applicant may be corrected by a certificate of correction for
which a charge is made.
The patentee may disclaim one or more claims of this
patent by filing in the Office a disclaimer as provided by the
statute.
When the patent is defective in certain respects, the law
provides that the patentee may apply for a reissue patent. This
is a patent granted to replace the original and is granted only
for the balance of the unexpired term. However, the nature of
the changes that can be made by means of the reissue are rather
limited; new matter cannot be added.
Any person may file a request for reexamination of a
patent, along with the required fee, on the basis of prior art
consisting of patents or printed publications. At the
conclusion of the reexamination proceedings, a certificate
setting forth the results of the reexamination proceeding is
issued.
ASSIGNMENTS AND LICENSES
A patent is personal property and may be sold to others or
mortgaged; it may be bequeathed by a will, and it may pass to
the heirs of deceased patentee. The patent law provides for the
transfer or sale of a patent, or of an application for patent,
by an instrument in writing. Such an instrument is referred to
as an assignment and may transfer the entire interest in the
patent. The assignee, when the patent is assigned to him or
her, becomes the owner of the patent and has the same rights
that the original patentee had.
The statute also provides for the assignment of a part
interest, that is, a half interest, a fourth interest, etc., in
a patent. There may also be a grant which conveys the same
character of interest as an assignment but only for a
particularly specified part of the United States.
A mortgage of patent property passes ownership thereof to
the mortgagee or lender until the mortgage has been satisfied
and a retransfer from the mortgagee back to the mortgagor, the
borrower, is made. A conditional assignment also passes
ownership of the patent and is regarded as absolute until
canceled by the parties or by the decree of a competent court.
An assignment, grant, or conveyance of any patent or
application for patent should be acknowledged before a notary
public or officer authorized to administer oaths or perform
notarial acts. The certificate of such acknowledgment
constitutes prima facie evidence of the execution of the
assignment, grant, or conveyance.
Recording of Assignments
The Office records assignments, grants, and similar
instruments sent to it for recording, and the recording serves
as notice. If an assignment, grant, or conveyance of a patent
or an interest in a patent (or an application for patent) is
not recorded in the Office within three months from its date,
it is void against a subsequent purchaser for a valuable
consideration without notice, unless it is recorded prior to
the subsequent purchase.
An instrument relating to a patent should identify the
patent by number and date (the name of the inventor and title
of the invention as stated in the patent should also be given).
An instrument relating to an application should identify the
application by its serial number and date of filing, and the
name of the inventor and title of the invention as stated in
the application should also be given. Sometimes an assignment
of an application is executed at the same time that the
application is prepared and before it has been filed in the
Office. Such assignment should adequately identify the
application, as by its date of execution and name of the
inventor and title of the invention, so that there can be no
mistake as to the application intended.
If an application has been assigned and the assignment is
recorded, on or before the date the issue fee is paid, the
patent will be issued to the assignee as owner. If the
assignment is of a part interest only, the patent will be
issued to the inventor and assignee as joint owners.
Joint Ownership
Patents may be owned jointly by two or more persons as in
the case of a patent granted to joint inventors, or in the case
of the assignment of a part interest in a patent. Any joint
owner of a patent, no matter how small the part interest, may
make, use, and sell the invention for his or her own profit,
without regard to the other owner, and may sell the interest or
any part of it, or grant licenses to others, without regard to
the other joint owner, unless the joint owners have made a
contract governing their relation to each other. It is
accordingly dangerous to assign a part interest without a
definite agreement between the parties as to the extent of
their respective rights and their obligations to each other if
the above result is to be avoided.
The owner of a patent may grant licenses to others. Since
the patentee has the right to exclude others from making, using
or selling the invention, no one else may do any of these
things without his permission. A license is the permission
granted by the patent owner to another to make, use, or sell
the invention. No particular form of license is required; a
license is a contract and may include whatever provisions the
parties agree upon, including the payment of royalties, etc.
The drawing up of a license agreement (as well as
assignments) is within the field of an attorney at law,
although such attorney should be familiar with patent matters
as well. A few States have prescribed certain formalities to be
observed in connection with the sale of patent rights.
INFRINGEMENT OF PATENTS
Infringement of a patent consists in the unauthorized
making, using, or selling of the patented invention within the
territory of the United States, during the term of the patent.
If a patent is infringed, the patentee may sue for relief in
the appropriate Federal court. The patentee may ask the court
for an injunction to prevent the continuation of the
infringement and may also ask the court for an award of damages
because of the infringement. In such an infringement suit, the
defendant may raise the question of the validity of the patent,
which is then decided by the court. The defendant may also aver
that what is being done does not constitute infringement.
Infringement is determined primarily by the language of the
claims of the patent and, if what the defendant is making does
not fall within the language of any of the claims of the
patent, there is no infringement.
Suits for infringement of patents follow the rules of
procedure of the Federal courts. From the decision of the
district court, there is an appeal to the Court of Appeals for
the Federal Circuit. The Supreme Court may thereafter take a
case by writ of certiorari. If the United States Government
infringes a patent, the patentee has a remedy for damages in
the United States Claims Court. The Government may use any
patented invention without permission of the patentee, but the
patentee is entitled to obtain compensation for the use by or
for the Government.
If the patentee notifies anyone that is infringing the
patent or threatens suit, the one charged with infringement may
start the suit in a Federal court.
The Office has no jurisdiction over questions relating to
infringement of patents. In examining applications for patent,
no determination is made as to whether the invention sought to
be patented infringes any prior patent. An improvement
invention may be patentable, but it might infringe a prior
unexpired patent for the invention improved upon, if there is
one.
PATENT MARKING AND "PATENT PENDING"
A patentee who makes or sells patented articles, or a
person who does so for or under the patentee is required to
mark the articles with the word "Patent" and the number of the
patent. The penalty for failure to mark is that the patentee
may not recover damages from an infringer unless the infringer
was duly notified of the infringement and continued to infringe
after the notice.
The marking of an article as patented when it is not in
fact patented is against the law and subjects the offender to a
penalty.
Some persons mark articles sold with the terms "Patent
Applied For" or "Patent Pending." These phrases have no legal
effect, but only give information that an application for
patent has been filed in the Patent and Trademark Office. The
protection afforded by a patent does not start until the actual
grant of the patent. False use of these phrases or their
equivalent is prohibited.
DESIGN PATENTS
The patent laws provide for the granting of design patents
to any person who has invented any new, original and ornamental
design for an article of manufacture. The design patent
protects only the appearance of an article, and not its
structure or utilitarian features. The proceedings relating to
granting of design patents are the same as those relating to
other patents with a few differences.
See current fee schedule for the filing fee for a design
application. A design patent has a term of 14 years, and no
fees are necessary to maintain a design patent in force. If on
examination it is determined that an applicant is entitled to a
design patent under the law, a notice of allowance will be sent
to the applicant or applicant's attorney, or agent, calling for
the payment of an issue fee.
The drawing of the design patent conforms to the same
rules as other drawings, but no reference characters are
required.
The specification of a design application is short and
ordinarily follows a set form. Only one claim is permitted,
following a set form.
PLANT PATENTS
The law also provides for the granting of a patent to
anyone who has invented or discovered and asexually reproduced
any distinct and new variety of plant, including cultivated
sports, mutants, hybrids, and newly found seedlings, other than
a tuber-propagated plant or a plant found in an uncultivated
state.
Asexually propagated plants are those that are reproduced
by means other than from seeds, such as by the rooting of
cuttings, by layering, budding, grafting, marching, etc.
With reference to tuber-propagated plants, for which a
plant patent cannot be obtained, the term "tuber" is used in
its narrow horticultural sense as meaning a short, thickened
portion of an underground branch. The only plants covered by
the term "tuber-propagated" are the Irish potato and the
Jerusalem artichoke.
An application for a plant patent consists of the same
parts as other applications. A plant patent has term of 17
years.
The application papers for a plant patent and any
responsive papers pursuant to the prosecution must be filed in
duplicate but only one need be signed (in the case of the
application papers the original should be signed); the second
copy may be a legible copy of the original. The reason for
providing an original and duplicate file is that the duplicate
file is sent to the Agricultural Research Service, Department
of Agriculture for an advisory report on the plant variety.
The specification should include a complete detailed
description of the plant and the characteristics thereof that
distinguish the same over related known varieties, and its
antecedents, expressed in botanical terms in the general form
followed in standard botanical text books or publications
dealing with the varieties of the kind of plant involved
(evergreen tree, dahlia plant, rose plant, apple tree, etc.),
rather than a mere broad nonbotanical characterization such as
commonly found in nursery or seed catalogs. The specification
should also include the origin or parentage of the plant
variety sought to be patented and must particularly point out
where and in what manner the variety of plant has been
asexually reproduced. Where color is a distinctive feature of
the plant the color should be positively identified in the
specification by reference to a designated color as given by a
recognized color dictionary. Where the plant variety originated
as a newly found seedling, the specification must fully
describe the conditions (cultivation, environment, etc.) under
which the seedling was found growing to establish that it was
not found in an uncultivated state.
A plant patent is granted on the entire plant. It
therefore follows that only one claim is necessary and only one
is permitted.
The oath or declaration required of the applicant in
addition to the statements required for other applications must
include the statement that the applicant has asexually
reproduced the new plant variety.
Plant patent drawings are not mechanical drawings and
should be artistically and competently executed. The drawing
must disclose all the distinctive characteristics of the plant
capable of visual representation. When color is a
distinguishing characteristic of the new variety, the drawing
must be in color. Two duplicate copies of color drawings must
be submitted. Color drawings may be made either in permanent
water color or oil, or in lieu thereof may be photographs made
by color photography or properly colored on sensitized paper.
The paper in any case must correspond in size, weight, and
quality to the paper required for other drawings. Mounted
photographs are acceptable.
Specimens of the plant variety, its flower or fruit,
should not be submitted unless specifically called for by the
examiner.
The filing fee on each plant application and the issue fee
can be found in the fee schedule. For a qualifying small entity
filing and issue fees are reduced by half.
All inquiries relating to plant patents and pending plant
patent applications should be directed to the Patent and
Trademark Office and not to the Department of Agriculture.
The Plant Variety Protection Act (Public Law 91-577),
approved December 24, 1970) provides for a system of protection
for sexually reproduced varieties. for which protection was not
previously provided, under the administration of a Plant
Variety Protection Office within the Department of Agriculture.
Requests for information regarding the protection of sexually
reproduced varieties should be addressed to Commissioner, Plant
Variety Protection Office, Agricultural Marketing Service,
National Agricultural Library Bldg., Room 500, 10301 Baltimore
Blvd., Beltsville, Md. 20705-2351.
TREATIES AND FOREIGN PATENTS
Since the rights granted by a United States patent extend
only throughout the territory of the United States and have no
effect in a foreign country, an inventor who wishes patent
protection in other countries must apply for a patent in each
of the other countries or in regional patent offices. Almost
every country has its own patent law, and a person desiring a
patent in a particular country must make an application for
patent in that country, in accordance with the requirements of
that country.
The laws of many countries differ in various respects from
the patent law of the United States. In most foreign countries,
publication of the invention before the date of the application
will bar the right to a patent. In most foreign countries
maintenance fees are required. Most foreign countries require
that the patented invention must be manufactured in that
country after a certain period, usually three years. If there
is no manufacture within this period, the patent may be void in
some countries, although in most countries the patent may be
subject to the grant of compulsory licenses to any person who
may apply for a license.
There is a treaty relating to patents which is adhered to
by 100 countries, including the United States, and is known as
the Paris Convention for the Protection of Industrial Property.
It provides that each country guarantees to the citizens of the
other countries the same rights in patent and trademark matters
that it gives to its own citizens. The treaty also provides for
the right of priority in the case of patents, trademarks and
industrial designs (design patents). This right means that, on
the basis of a regular first application filed in one of the
member countries, the applicant may, within a certain period of
time, apply for protection in all the other member countries.
These later applications will then be regarded as if they had
been filed on the same day as the first application. Thus,
these later applicants will have priority over applications for
the same invention which may have been filed during the same
period of time by other persons. Moreover, these later
applications, being based on the first application, will not be
invalidated by any acts accomplished in the interval, such as,
for example, publication or exploitation of the invention, the
sale of copies of the design, or use of the trademark. The
period of time mentioned above, within which the subsequent
applications may be filed in the other countries, is 12 months
in the case of first applications for patent and six months in
the case of industrial designs and trademarks.
Another treaty, known as the Patent Cooperation Treaty,
was negotiated at a diplomatic conference in Washington, D.C.
in June of 1970. The treaty came into force on January 24,
1978, and is presently adhered to by 44 countries, including
the United States. The treaty facilitates the filing of
applications for patent on the same invention in member
countries by providing, among other things, for centralized
filing procedures and a standardized application format.
The timely filing of an international application affords
applicants an international filing date in each country which
is designated in the international application and provides (1)
a. search of the invention and (2) a later time period within
which the national applications for patent must be filed.
A number of patent attorneys specialize in obtaining
patents in foreign countries. In general, an inventor should be
satisfied that he could make some profit from foreign patents
or that there is some particular reason or obtaining them,
before he attempts to apply for foreign patents.
Under United States law it is necessary, in the case.of
inventions made in the United States, to obtain a license from
the Commissioner of Patents and Trademarks before applying for
a patent in a foreign country. Such a license is required if
the foreign application is to be filed before an application is
filed in the United States or before the expiration of six
months from the filing of an application in the United States.
The filing of an application for patent constitutes the request
for a license and the granting or denial of such request is
indicated in the filing receipt mailed to each applicant. After
six months from the United States filing, a license is not
required unless the invention has been ordered to be kept
secret. If the invention has been ordered to be kept secret,
the consent to the filing abroad must be obtained from the
Commissioner of Patents and Trademarks during the period the
order of secrecy is in effect.
FOREIGN APPLICANTS FOR UNITED STATES PATENTS
The patent laws of the United States make no
discrimination with respect to the citizenship of the inventor.
Any inventor, regardless of his citizenship, may apply for a
patent on the same basis as a U.S. citizen. There are, however,
a number of particular points of special interest to applicants
located in foreign countries.
The application for patent in the United States must be
made by the inventor and the inventor must sign the oath or
declaration (with certain exceptions), differing from the law
in many countries where the signature of the inventor and an
oath of inventorship are not necessary. If the inventor is
dead, the application may be made by his executor or
administrator, or equivalent, and in the case of mental
disability it may be made by his legal representative
(guardian).
No United States patent can be obtained if the invention
was patented abroad before applying in the United States by the
inventor or his legal representatives or assigns on an
application filed more than 12 months before filing in the
United States. Six months are allowed in the case of a design
patent.
An application for a patent filed in the United States by
any person who has previously regularly filed an application
for a patent for the same invention in a foreign country which
affords similar privileges to citizens of the United States
shall have the same force and effect for the purpose of
overcoming intervening acts of others as if filed in the United
States on the date on which the application for a patent for
the same invention was first filed in such foreign country,
provided the application in the United States is filed within
12 months (six months in the case of a design patent) from the
earliest date on which any such foreign application was filed.
A copy of the foreign application certified by the patent
office of the country in which it was filed is required to
secure this right of priority.
If any application for patent has been filed in any
foreign country by the applicant or by his legal
representatives or assigns prior to his application in the
United States, the applicant must, in the oath or declaration
accompanying the application, state the country in which the
earliest such application has been filed, giving the date of
filing the application; and all applications filed more than a
year before the filing in the United States must also be
recited in the oath or declaration.
An oath or declaration must be made with respect to every
application. When the applicant is in a foreign country the
oath or affirmation may be before any diplomatic or consular
officer of the United States, or before any officer having an
official seal and authorized to administer oaths in the foreign
country, whose authority shall be proved by a certificate of a
diplomatic or consular officer of the United States, the oath
being attested in all cases by the proper official seal of the
officer before whom the oath is made.
When the oath is taken before an officer in the country
foreign to the United States, all the application papers
(except the drawing) must be attached together and a ribbon
passed one or more times through all the sheets of the
application, and the ends of the ribbons brought together under
the seal before the latter is affixed and impressed, or each
sheet must be impressed with the official seal of the officer
before whom the oath was taken.
If the application is filed by the legal representative
(executive, administrator, etc.) of a deceased inventor, the
legal representative must make the oath or declaration.
When a declaration is used, the ribboning procedure is not
necessary, nor is it necessary to appear before an official in
connection with the making of a declaration.
A foreign applicant may be represented by any patent
attorney or agent who is registered to practice before the
United States Patent and Trademark Office.
FEES AND PAYMENT
Following is a list of patent related fees and charges
which are payable to the Patent and Trademark Office:
Filing Fees Fee Small Entity Fee
if Applicable
Basic filing fee -- utility 710.00 355.00
Independent claims in excess
of three 74.00 37.00
Claims in excess of twenty 22.00 11.00
Multiple dependent claim 230.00 115.00
Surcharge--Late filing fee
or oath or declaration 130.00 65.00
Design filing fee 290.00 145.00
Plant filing fee 480.00 240.00
Reissue filing fee 710.00 355.00
Reissue independent claims
over original patent 74.00 37.00
Reissue claims in excess of
20 and over original patent 22.00 11.00
Non-English specification 130.00
Extension Fees
Extension for response
within first month 110.00 55.00
Extension for response
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Filing a brief in support
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Design issue fee 410.00 205.00
Plant issue fee 590.00 295.00
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Extension of term patent 1,000.00
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SIR -- Prior to examiner's
action 820.00*
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action 1,640.00*
Certificate of correction 100.00
For filing a request for
reexamination 2,250.00
Statutory Disclaimer 110.00
Patent Petition Fees
Petitions to the Commissioner,
unless otherwise specified 130.00
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use proceeding 1,350.00
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abandoned application 110.00 55.00
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unintentionally abandoned
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Applications filed on or after December 12, 1980
Due at 3.5 years 930.00 465.00
Due at 7.5 years 1,870.00 935.00
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Surcharge--Late payment
within 6 months 130.00 65.00
Surcharge after expiration 620.00
* Reduced by Basic Filing Fee Paid
PCT Fees - National Stage
Surcharge- Late filing fee
or oath or declaration 130.00 65.00
English translation -- after
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IPEA - U.S 640.00 320.00
ISA- U.S 710.00 355.00
PTO not ISA or IPEA 950.00 475.00
Claims meet PCT Article
33(1)-(4)-IPEA -- U.S. 90.00 45.00
Claims--extra independent
(over three) 74.00 37.00
Claims--extra total
(over twenty) 22.00 11.00
Claims--multiple dependent 230.00 115.00
For filing with EPO or
JPO search report 830.00 415.00
PCT Fees--International Stage
Transmittal fee 200.00
PCT search fee--no
U.S. application 620.00**
Supplemental search per
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PCT search--prior
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Preliminary examination
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Preliminary examination
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Additional invention--ISA
was the U.S 140.00**
Additional invention--ISA
not the U.S 320.00**
PCT Fees to WIPO
Basic fee (first thirty pages) 525.00**
Basic supplemental fee
(for each page over thirty) 10.00**
Handling fee 161.00**
Designation fee per country 127.00**
PCT Fees to EPO
International search 1,635.00
** Effective December 27, 1991.
* WIPO fees subject to periodic change due to fluctuations
in exchange rate. Refer to Patent Official Gazette for current
amounts.
Patent Service Fees Fees
Printed copy of patent w/o color, regular service 3.00
Primed copy of patent w/o color expedited local
service 6.00
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as filed, regular service 12.00
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file wrapper and contents 150.00
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For assignment records, abstract of title and
certification, per patent 25.00
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List of U.S. patents and SIRs in subclass 3.00
Uncertified statement re status of maintenance
fee payments 10.00
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other paper, per property 40.00
Publication in Official Gazette 25.00
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thereof 30.00
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* Collection of the fee for APS-Text access at the PTDLs has
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THE ABOVE PRICES ARE SUBJECT TO CHANGE WITHOUT NOTICE.
All payment of money required for Patent and Trademark
Office fees should be made in United States specie, Treasury
notes, national bank notes, post office money orders or postal
notes payable to the Commissioner of Patents and Trademarks, or
by certified checks. If sent in any other form, the Office may
delay or cancel the credit until collection is made. Postage
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payable to the Commissioner of Patents and Trademarks.
Remittances from foreign countries must be payable and
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of the fee required. Money paid by actual mistake or in excess,
such as a payment not required by law, will be refunded, but a
mere change of purpose after the payment of money, as when a
party desires to withdraw his application for a patent or to
withdraw an appeal, will not entitle a party to demand such a
return. Amounts of $1.00 or less will not be returned unless
specifically demanded, within a reasonable time.
Answers to Questions Frequently Asked
1. Q. What do the terms "patent pending" and "patent applied
for" mean?
A. They are used by a manufacturer or seller of an article to
inform the public that an application for patent on that
article is on file in the Patent and Trademark Office. The
law imposes a fine on those who use these terms falsely to
deceive the public.
2. Q. Is there any danger that the Patent and Trademark Office
will give others information contained in my application while
it is pending?
A. No. All patent applications are maintained in the strictest
secrecy until the patent is issued. After the patent is
issued, however, the Office file containing the application
and all correspondence leading up to issuance of the patent
is made available in the Files Information Room for
inspection by anyone, and copies of these files may be
purchased from the Office.
3. Q. May I write to the Patent and trademark Office directly
about my application after it is filed?
A. The Office will answer an applicants inquiries as to the
status of the application, and inform you whether your
application has been rejected, allowed, or is awaiting
action. However, if you have a patent attorney or agent the
Office will not correspond with both you and the attorney
concerning the merits of your application. All comments
concerning your application should be forwarded through your
attorney or agent.
4. Q. Is it necessary to go to the Patent and Trademark Office
to transact business concerning patent matters?
A. No; most business with the Office is conducted by
correspondence. Interviews regarding pending applications
can be arranged with examiners if necessary, however, and
are often helpful.
5. Q. If two or more persons work together to make an
invention, to whom will the patent be granted?
A. If each had a share in the ideas forming the invention, they
are joint inventors and a patent will be issued to them
jointly on the basis of a proper patent application. If on
the other hand one of these persons has provided all of the
ideas of the invention, and the other has only followed
instructions in making it, the person who contributed the
ideas is the sole inventor and the patent application and
patent shall be in his name alone.
6. Q. If one person furnishes all of the ideas to make an
invention and another employs him or furnishes the money for
building and testing the invention, should the patent
application be filed by them jointly?
A. No. The application must be signed by the true inventor, and
filed in the Patent and Trademark Office, in the inventors
name. This is the person who furnishes the ideas, not the
employer or the person who furnishes the money.
7. Q. Does the Patent and Trademark Office control the fees
charged by patent attorneys and agents for their services?
A. No. This is a matter between you and your patent attorney or
agent in which the Office takes no part. To avoid
misunderstanding you may wish to ask for estimate charges
for: (a) the search (b) preparation of the patent
application, (c) Patent and Trademark Office prosecution.
8. Q. Will the Patent and Trademark Office help me to select a
patent attorney or agent to make my patent search or to prepare
and prosecute my patent application?
A. No. The Office cannot make this choice for you. However,
your own friends or general attorney may help you in making
a selection from among those listed as registered
practitioners on the Office roster. Also, some bar
associations operate lawyer referral services that maintain
lists of patent lawyers available to accept new clients.
9. Q. Will the Patent and Trademark Office advise me as to
whether a certain patent promotion organization is reliable and
trustworthy?
A. No. The Office has no control over such organizations and
does not supply information about them. It is advisable,
however, to check on the reputation of invention promotion
firms before making any commitments. It is suggested that
you obtain this information by inquiring of the Better
Business Bureau of the city in which the organization is
located, or of the bureau of commerce and industry or bureau
of consumer affairs of the state in which the organization
has its place of business. You may also undertake to make
sure that you are dealing with reliable people by asking
your own patent attorney or agent or by inquiry of others
who may know them.
10. Q. Are there any organizations in my area which can tell me
how and where I may be able to obtain assistance in developing
and marketing my invention?
A. Yes. In your own or neighboring communities you may inquire
of such organizations as chambers of commerce, and banks.
Many communities have locally financed industrial
development organizations which can help you locate
manufacturers and individuals who might be interested in
promoting your idea.
11. Q. Are there any state government agencies that can help me
in developing and marketing of my invention?
A. Yes. In nearly all states there are state planning and
development agencies or departments of commerce and industry
which seek new product and new process ideas to assist
manufacturers and communities in the state. If you do not
know the names or addresses of your state organizations you
can obtain this information by writing to the governor of
your state.
12. Q. Can the Patent and Trademark Office assist me in the
developing and marketing of my patent?
A. The office cannot act or advise concerning the business
transactions or arrangements that are involved in the
development and marketing of an invention. However, the
Office will publish, at the request of a patent owner, a
notice in the Official Gazette that the patent is available
for licensing or sale. The fee for this is $20.
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