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Claims:
A regular
utility patent application consists of
a specification and one or more
claims. The claims appear at the end of the application as a
collection of sequentially numbered sentences that tell the world what
your invention is. Sounds easy, but it's not. Entire volumes
have been written on the art of drafting claims.
The claims represent the meat of the
invention and, hence, the meat of the application and patent. If you are
hailed into court to defend your patent, your claims will be put under the
microscope and will likely make or break your patent protection.
Disclosure document: The conventional wisdom in the field of
inventing is to keep a notebook of your idea and your progress in
developing it. Have a witness understand what's in the notebook and
sign a description of each improvement. Keep that witness on your
good side because she may have to got to court for you if another inventor
claims your invention.
The PTO has a program that is very helpful if you don't have a reliable
witness. You may send a disclosure of your idea to the PTO and they
will assign that disclosure a number and hold onto the papers for you for
two years. If you file your regular application before the two years
is up, and if you refer to the disclosure you filed previously, then the
disclosure documents become a part of your file. This doesn't serve
to establish a filing date, but it may be useful if a fight over
priority arises later.
The disclosure document is not a public disclosure, and so the 1
year no-file-no-smile clock does not begin to tick when you file the
document. After filing a
disclosure document, if you then make a public disclosure, the
no-file-no-smile clock does begin to tick. In other words, filing a
disclosure document doesn't mean you now have two years to try and sell
your invention before you have to file your regular
application.
Examiner: It's a lousy job but, hey, somebody's
gotta' get paid for it.
Examiners are the PTO employees who do the donkey-work of reading all
those applications and making the initial decisions as to which ones become
patents and which ones get flushed. Without the examiners there is
no PTO. And as every examiner will tell you, Einstein was a patent
examiner in Germany, or Austria, or somewhere. This does
not mean all examiners are geniuses, but don't tell them that. At
least not until you get your patent.
Once it is properly filed, your application will be assigned to an examiner and this person
will be the person with whom you will correspond, suck up to, and
ultimately come to love and/or hate. They take a lot
of grief, as you might imagine. They are overworked, as you might
imagine, but they are not underpaid. And they are often wrong. Some of them can be real
jerks, but those I have dealt with, save one or two, have been polite, pleasant,
and sincerely intent on doing a good job.
Fee, Filing: In order to get the patent process under way, you have
to cough up a wad called the filing fee. You submit this fee to the
PTO with
your application; it is non-refundable once your filing
date has been assigned, even if your application is
obviously bonkers. Small-entity
inventors presently pay only half of what the big guys pay. Here is
a table of USPTO small-entity fees.
Fee, Issue: Once the examiner has thoroughly reviewed your
application and you have successfully addressed all of the examiner's objections, a
patent will be granted. Hopefully. Before you get the patent in your hot
little hands, however, you have to pay the PTO a moderately large fee
called the issue fee. Here is a table of USPTO
small-entity fees. Together with the filing fee, you are now out
over $1000
in what your have paid the PTO alone. Keep reading.
Fee, Maintenance: The maintenance fees are monster fees you pay
periodically during the life of your patent. Here is a table
of USPTO small-entity fees. The PTO does absolutely nothing for this
money, it's just an easy way to get some grease for the wheels of the
PTO. In truth, the filing fee of a few hundred dollars doesn't cover
the costs of examination. Those inventors that succeed in getting a
patent carry most of the load with maintenance fees. Together with
the filing fee and issue fee, the sum of all
fees paid by a small entity during the life and prosecution of a patent is
over $4000.
File wrapper: This is PTO-speak for a case-file.
Presently, when you file an RUPA the PTO opens a paper-file and a
digital-file. All documents related to your case are included in
both files. After your patent is granted, the file-wrapper is
retained by the PTO. It can be accessed by the public and by the
courts. Anything in the file-wrapper can be admitted as evidence in
court cases or various proceedings before the PTO.
Filing date:
The filing date is,
essentially, the date upon which the PTO receives all the parts of your
regular application (RUPA) that are required to make it legal. But if you have filed a provisional
utility application (PUPA), the filing date goes back to the date of that filing so long
as you file a regular application within one year.
Your filing date will come to have considerable significance in your life,
maybe more
significance than your birthday or anniversary. For one thing this is the
"birthday" of your
patent. Even though your patent might not issue for a number of years after this
date, the 20 year clock that tics off the life of your patent begins to
run. This is also the date you are legally considered to have made
your invention, or "reduced it to practice," unless you can
prove an earlier date. If you are considering foreign patents as
well, this date may start a one year clock running that may prevent you from filing in the
other countries. And if you have made any public disclosures of your
invention, your filing date must not be more than one year after your
earliest disclosure.
Office action: Office actions are the official, written decisions made
by the examiner while examining your application. Generally
there are only two types: non-final and final.
The first office action often states the examiner's grounds for rejecting all or
some of the claims. You get the chance to explain to the examiner
why he/she is wrong or else amend your claims to get around the examiner's
problems. The final office
action essentially ends the application procedure. If, during the
process, one or more
claims are allowed, you get a patent. If no claims are allowed, you
stay alive only by appealing to The Board of Patent Appeal and
Interferences within the PTO or instituting one of a number of
continuation procedures.
Patent pending: The designation "patent pending"
may be placed on your invention once you have either filed a provisional
application or have been assigned a filing date
on a regular application. This notifies the world that you are
seeking patent protection and that you may, eventually, be able to sue
them if they make, use, or sell your invention without your consent.
Don't use "patent pending" until you are entitled to. It's a federal
no-no.
Patent prosecution: As with so many terms,
"prosecution" means
one thing in real life and another thing at the PTO. While a patent application is being shuffled
through the patent process it is being "prosecuted." Sounds like it
got busted for doing something naughty, but no one has come up with a
more useful word. When it comes to patents, you actually pay for a
prosecution, and you hope it's successful.
Patent search: A patent search is a search for
patents that may defeat your application. It is one way of finding
out that someone skunked you. Even if there are no patents that
anticipate your invention, there could be other published sources that
describe it. See prior
art.
Even once your patent is issued, the
search may still go on because in America no matter how late in the game
it is, if someone can prove that you were not the first to invent your
invention, your patent can be invalidated. There is a growing herd
of bounty hunters called "patent busters" who look far and wide
for prior art to defeat patents that have already issued.
Consequently, almost no patent is ever 100% secure.
Prior art: Anything that is
produced or published that relates to your patent and is published or
invented before the date your invented you invention is considered prior
art. The worst prior art is the stuff that is said to
"anticipate" your invention. That means you got there
second -- too late. Most often prior art is
another patent, but it could be a magazine article, a sci-fi movie, or, as
in one recent case, a children's book. Yeah, Dr. Seuss can blow you
out of the water. At least in America. In most other countries
prior art is generally limited only to patents or other official documents
on file with the government.
Small entity: When President
Reagan got on a roll and increased patent fees, he took
politically-correct
pity on the little
guy. The small entity classification was concocted to let the
little guy pay just half the fees the big guys pay. The laws
precisely defines "little guy," but if you're reading this you
almost certainly are one. If you
think $4000 plus in filing, issue and maintenance fees is a bummer, once your company takes off you'll
be paying twice that much for your next patent.
Specification: This word has a very
special meaning in patent practice. It doesn't mean the measurements
of your invention specifically, but rather a textual description of your
invention, including drawings, a
discussion of the field, a disclosure of all relevant prior art
known to you, and the best way to make and use your invention. The specification and the claims
comprise your application and, eventually, your patent. A
specification is required by law, and everything you claim in your claims
must first appear in your specification.
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