Read Ebook: Patents and How to Get One: A Practical Handbook by United States Department Of Commerce

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Those who cannot come to the Patent 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 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 PTDLs, in addition, offers the publications of the U.S. Patent Classification System 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 Cassis CD-ROM system. With various files, it permits the effective identification of appropriate classifications to search, provides numbers of patents assigned to a classification to facilitate finding the patents in a numerical file of patents, provides the current classification of all patents, permits word searching on classification titles, and on abstracts, and provides certain bibliographic information on more recently issued patents.

Facilities for making paper copies from microfilm, the paper bound volumes or CD-ROM are generally provided for a fee.

Due to variations in the scope of patent collections among the PTDLs 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, services, and hours, so as to avert possible inconvenience.

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 rules and Patent and Trademark Office practice and procedures, 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 a 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/she resides considers drafting 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 telephone directories of most large cities have, in the classified section, a heading for patent attorneys 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 or agent has been appointed, the Office does not communicate with the inventor directly but conducts the correspondence with the attorney or agent 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 attorney or authorization of agent.

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 by the Patent and Trademark Office for a two year period of papers signed by the inventor disclosing an invention. This disclosure is accepted as evidence of the dates of conception of the invention. The Disclosure Document will be retained for two years and then be destroyed unless it is referred to in a separate letter in a related patent application within those two years.

Disclosure Documents may also be filed at selected Patent and Trademark Depository Libraries , presently including the Sunnyvale Center for Innovation, Invention and Ideas and Great Lakes Patent and Trademark Center at the Detroit Public Library. A listing of PTDLs is included in this pamphlet under the heading "Library, Search Room Searches and Patent and Trademark Depository Libraries." One copy of the document is kept at the PTDL and the original documents are sent to the Patent and Trademark Office for fee collection, processing and retention. Disclosure Documents are kept in confidence by the PTO.

The Disclosure Document is not a patent application and the date of its receipt in the PTO does not become the effective filing date of any patent application subsequently filed. The benefits provided by the document will depend upon the adequacy of the disclosure and therefore, it is recommended that the Disclosure Document be a clear and complete explanation of the manner and process of making and using the invention. When the nature of the invention permits, a drawing or sketch should be included.

A fee must accompany the disclosure. See the current fee schedule. To facilitate the PTO's electronic data capture and storage of the Disclosure Document, it must be on white paper having dimensions not to exceed 8 1/2 x 11 inches with each page numbered. Text and drawings must be sufficiently dark to permit reproduction with commonly used office copying machines. Oversized papers, even if foldable to the above dimensions will not be accepted.

Attachments such as videotapes and working models will not be accepted and will be returned.

The Disclosure Document must be accompanied by a separate signed cover letter stating that it is submitted by, or on behalf of, the inventor and requesting that the material be received into the Disclosure Document Program. The original submission will not be returned. A notice with an identifying number and date of receipt in the PTO will be mailed to the customer, indicating that the Disclosure Document may be relied upon only as evidence and that a patent application should be diligently filed if patent protection is desired.

A brochure on Disclosure Documents is available by calling the PTO General Information Services at 1-800-786-9199 or 703-308-4357.

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 non-signing 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 in 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

Non-Provisional Application for a Patent

A non-provisional application for a patent is made to the Assistant Commissioner for Patents and includes:

A written document which comprises a specification , and an oath or declaration;

A drawing in those cases in which a drawing is necessary; and

The filing fee. See the fee schedule.

All application papers must be in the English language or accompanied by a verified translation into the English language along with the required fee set forth in 37 CFR 1.17. All application papers must be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable and white paper.

The papers must be presented in a form having sufficient clarity and contrast between the paper and the writing to permit electronic reproduction. The application papers must all be the same size--either 21.0 cm by 29.7 cm or 21.6 cm by 27.9 cm , with a top margins of at least 2.0 cm , a left side margin of at least 2.5 cm , a right side margin of at least 2.0 cm and a bottom margin of at least 2.0 cm with no holes made in the submitted papers. It is also required that the spacing on all papers be 1 1/2 or double spaced and the application papers must be numbered consecutively starting with page one.

The application for patent is not forwarded for examination until all required parts, complying with the rules related thereto, are received. If any application is filed without all the required parts for obtaining a filing date , the applicant will be notified of the deficiencies and given a time period to complete the application filing --at which time a filing date as of the date of such a completed submission will be obtained by the applicant. If the omission is not corrected within a set, specified time period, the application will be returned or otherwise disposed of; the filing fee if submitted will be refunded less a handling fee as set forth in the fee schedule.

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 received in the PTO are numbered in serial order and the applicant will be informed of the application serial number and filing date by a filing receipt.

The filing date of an application for patent is the date on which the names of the inventors, a specification and any required drawings are received in the PTO; or the date on which the last part completing the application are received in the case of a previously incomplete or defective application.

Provisional Application for a Patent

Since June 8, 1995, the PTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional application provides the means to establish an early effective filing date in a patent application and permits the term "Patent Pending" to be applied in connection with the invention. Provisional applications may not be filed for design inventions. The filing date of a provisional application is the date on which a written description of the invention, drawings if necessary, and the name of the inventor are received in the PTO. To be complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. Applicant would then have up to twelve months to file a non-provisional application for patent as described above. The claimed subject matter in the later filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application.

Provisional applications are not examined on their merits. A provisional application will become abandoned by the operation of law twelve months from its filing date. The twelve month pendency for a provisional application is not counted toward the 20 year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.

A surcharge is required for filing the basic filing fee or the cover sheet on a date later than the filing of the provisional application.

Oath or Declaration, Signature

The oath or declaration of the applicant is required by law for a non-provisional application. 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 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 and last name with middle initial or name, if any, of each inventor are required. The post office address and citizenship of each inventor are also required.

The papers in a complete application will not be returned for any purpose whatsoever, 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

Footnote 1:

The filing fee of a non-provisional application, except in design and plant cases, consists of a basic fee and additional fees. The basic fee entitles the applicant to present twenty claims, including not more than three in independent form. An additional fee is required for each claim in independent form which is in excess of three and an additional fee is required for each claim which is in excess of a total of twenty claims. If the application contains multiple dependent claims, additional fees are required.

If the owner of the invention is a small entity, , the filing fees are reduced by half if the small entity files a verified statement claiming small entity status.

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