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Patents: Application & Registration

The patent application process is complex and time consuming even for practitioners that routinely "prosecute" applications on a daily basis. Attorneys and patent agents require special licenses to practice before the USPTO. They must pass a rigorous examination in order to obtain the license. They must also meet educational requirements that emphasize either degrees in science (engineering, chemistry, computer science, etc.) or enough coursework in the "hard sciences" as substitute credentials. The educational requirements must be satisfied before they are allowed to sit for the exam.

As an illustration of the complexity of the application process the entirety of Chapter 11 of the statute is dedicated to it. There are 12 sections in this chapter alone and that number does not exhaust all the sections in other chapters that touch upon the application process. In addition, a practitioner must be intimate with the Manual of Patent Examining Procedure (MPEP), a document that makes the statute sections appear to be a walk in the park. In short, while there is no requirement that an inventor hire an attorney or patent agent to prosecute a patent, it is highly recommended. The exceptions to this rule are few and far between. Yes there are more and more resources available that guide the lay person through the process, but there are no short cuts to mastery. It should not be attempted unless an individual possesses deep knowledge within the industry in which the patent lies and a significant amount of time to invest.

The page provides a brief introduction to the requirements of the application process as enumerated in Chapter 11. Section 111(a) contains the basics at the highest level:

§ 111. Application

(a)  In General.—

(1) Written application.— An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) Contents.— Such application shall include— (A) a specification as prescribed by section 112 of this title; (B) a drawing as prescribed by section 113 of this title; and (C) an oath by the applicant as prescribed by section 115 of this title.
(3) Fee and oath.— The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) Failure to submit.— Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

This brief code section begins to illustrate the complexity in that it refers to several other sections just to introduce the general concept. But section 111(b) continues the fun with its discussion of provisional applications. Suffice it to say that provisional (i.e. temporary) applications are an important part of the process and afford the inventor certain protections. They also have some international implications that inventors should be aware of.

Section 112 deals with the requirements of the specification. It discusses dependent and independent claims, best mode, and many other terms of art that define the inventor's disclosure requirement. Remember that in order to be granted a patent monopoly the inventor must disclose the invention in a manner that would allow it to be duplicated by "one skilled in the art." The disclosure is required to ensure that the public will ultimately benefit from the invention, once the patent term has expired. Any credible patent treatise will likely devote hundreds of pages to the specification section; both in terms of "how to" and to the case law that underpins it.

Sections 113 and 114 deal with drawings, models and specimens and are relatively self explanatory. Section 115 specifies the oath that an inventor must make in conjunction with the application. The oath must state that the inventor is the "original or first inventor" of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent. This comports with the U.S. "first to invent" standard (as opposed to the international standard of "first to file"). Section 116 deals with the concept of joint inventors. The concept is defined rather broadly as the following "snippet" from section 116 suggests:

§ 116. Inventors

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though
(1) they did not physically work together or at the same time,
(2) each did not make the same type or amount of contribution, or
(3) each did not make a contribution to the subject matter of every claim of the patent.

Care must be taken on the part of employers to ensure that patent rights are assigned to the business as part of the employment contract. Otherwise there may be subsequent litigation with respect to who owns the property right. While this is standard practice for businesses that employ engineers, scientists and other technical talent it has not been routine practice for online businesses in general (i.e. outside of the technology industry). In addition, business method patents open up an entire distinct route to the patentability of processes and methods that may have implications vis-a-vis other organizational talent not heretofore considered "technical" (e.g. business development and marketing personnel). To learn more about business method patents see our article Internet Business Method Patents.

Section 117 deals with the filing of an application if the inventor is deceased and section 118 concerns itself with whom, other than the inventor, can file an application. The latter may be necessary in cases where the inventor refuses to file, or cannot be found, and other stakeholders have an interest in preserving the property right. Sections 119 and 120 both deal with the enormously complex issue of "priority" from a slightly different perspective. The priority issue is one that has far too many layers for a meaningful discussion in an introductory section. Part of the complexity (perhaps most) lies in the tension (i.e. differences) between the uniquely American "first to invent" system and the international "first to file" system. Since many online business have the potential for global reach, this is yet another reason for the necessity of competent representation should a client decide that obtaining a patent will further their business objectives.

Section 121 deals with the concept of Divisional Applications. Patent applications come in a variety of forms each with their own nuances. Finally, section 122 concerns itself with the confidential nature of patent applications.

Comments: There is a lot to "chew on" in the patent application process. We help clients triangulate their patent strategy and then refer them to patent specialists should they decide to proceed. We add value by providing an objective "second pair of eyes." More often than not, a client will be better served by investing in their online business as opposed to pursuing a patent strategy.  However, as mentioned elsewhere, there are always exceptions to the rule.

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As Internet Lawyers we offer patent advice but not patent prosecution.

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