patentability

Filing Dates

Filing a patent application has two very important aspects. One is the completion of the written description that contains all of the technical details of the invention. The other aspect is the filing of the application itself. The filing effectively stops the running of the “clock” which destroys patentability one year after any of the Bar Events, described above, have happened. It also determines what prior art will be used to examine the application, as only certain prior art is used depending on the date of the prior art and the filing date of the application. Additionally, what is described in that patent application, especially if a Bar Event has happened, is frozen and the inventor cannot add any new technical description. After filing, the term “Patent Pending” may be placed on the invention or any documents or material associated with it.

Duty to disclose Prior Art to the USPTO

Each inventor and their attorneys have a duty of honesty and good faith to disclose to the USPTO all information which they know might be important or relevant to the examiner in considering whether the invention is patentable. This means that the inventor must disclose prior art that he or she knows about, if it could have or would have prevented a patent application from issuing as a patent. This duty to disclose continues throughout the period that the patent application is pending. There is, however, no obligation to search for information. Thus, in the event that a prior art or patentability search is made, the results of the search will need to be reported to the USPTO and will be considered during the examination of the application.

During the examination process, which applies only to non-provisional applications, the examiner makes a search in the USPTO records, which contain every patent issued in the United States, plus many foreign patents and a lot of published materials, such as magazines and technical journals. Once the examiner selects what he or she considers to be the most relevant patents or other “references,” the examiner compares the claims in the application to the prior art to determine if the novelty and nonobviousness requirements have been met. As discussed above, if all of the claim elements are found in one prior patent or disclosure, the claims will fail the novelty requirement, having been invented before in its entirety. If all of the claim elements are not found in one prior patent or disclosure, but instead in multiple, related patent or disclosures, making it “obvious” to one skilled in the field of the invention to combine the features of these known inventions, then the claims will fail the obviousness test. It is therefore necessary for the inventor to include elements in the claims not found in the prior art to receive patent coverage. The examiner then makes up a written report, either granting or rejecting the application claims, called an “office action” and sends it to the inventor or his or her attorney. After reviewing the office action, the inventor or attorney can change the claims of the application in response to the comments of the examiner. Ultimately, the patent will either be granted or finally rejected by the USPTO after a few rounds of letters. If granted, it will be published by the USPTO and mailed to the inventor or his or her attorney.

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