WHAT IS A PATENT?
A patent is a grant by a sovereign state that provides the recipient with certain legal rights.
In the US, it gives the rights to exclude others from practicing an invention.
So a patent doesn’t necessarily give you the right to practice your invention. It rather gives you the right to prevent others from practicing your invention. So for example, if you have a patent on a “vessel to hold coffee” and I have a patent on a “handle for a vessel”, then I can prevent you from putting a handle on a coffee cup and you can prevent me from attaching a cup to my handle.
In the US, a patent can be granted to anyone who invents a useful and non-obvious process, machine, article of manufacture, or composition of matter.
Now that we know what a patent is, what is the patent prosecution process like?
After a non-provisional patent application is filed, or the patent application enters the U.S. national stage from an international patent application, the first time we will substantively hear from the Patent Office will be when a First Office Action on the Merits (FOAM) is received.
When we receive the office action, we usually have 3 months from the mail date to respond or in the case of a restriction requirement, we have two months to respond.
After replying to the first office action, if the rejection holds, the Examiner lets you know why in a second office action.
This action will likely be a “final office action”. The second office action cannot be made final unless it was necessitated by the applicant’s amended claims or information submitted in an Information Disclosure Statement which is a statement that shows relevant prior art or information for the USPTO.
After the final office action, we have a shot at responding to the Examiner in a way that will put the Application in condition for allowance.
If the amendment requires extra search from the Examiner, it will not be entered so we usually file this along with an RCE. The RCE lets us start the review process again by giving us another shot at presenting our arguments starting from a non – final office action.
Otherwise the other options include appealing at the PTAB(Patent Trial and Appeal Board), CAFC(Court of Appeals for the Federal Circuit) and US. Supreme Court. These are not common.
The PTAB apart from hearing appeals from unfavorable Examiner decisions in patent prosecutions also conducts trials, including inter partes review, post-grant, covered business method patent reviews, derivation proceedings, reexamination proceedings, and interferences decisions but that is beyond the scope of this presentation.
The CAFC hears certain appeals from all of the United States District Courts, and appeals from certain administrative agencies, as well as appeals arising under certain statutes. This is also beyond the scope of this presentation.
For the PTAB, a notice of appeal is filed and the board assigns 3 examiners to review the case. If they rule in the applicant’s favor, the claims will be allowed.
If the board does not rule in our favor, the next option is to appeal to the CAFC. If they rule in our favor, against the Examiner and the PTAB, the claims will be allowed.
If they don’t rule in our favor, the U.S Supreme Court is your last option but this is not very common.
