Patent examination

CASSIS USPTO USPTO Office of Electronic Data Conversion and Dissemination CASSIS, the Classification and Search Support Information System of the USPTO, comprises three subfiles CASSIS/BIB, bibHographic information for utiHty patents from 1969 and for others from 1977 CASSIS/CLASS, USPTO classification by patent number of class/subclass CASSIS/ASSIST, iadex to U.S. Manual of Classification U.S. Manual of Classification, Class Definitions IPC, U.S. Classification Concordance Manual of Patent Examining Procedure Attorneys/ Agents Roster, etc... 

Once the patent appHcation is complete and the inventor has made a formal declaration of inventorship, the appHcation is filed with the U.S. PTO. In the U.S. PTO, the appHcation is the subject of a thorough, formal, and substantive examination by a patent examiner. Once the patent examiner is convinced that the patent appHcation satisfies the statutory requirements provided for under the laws of the United States, the patent appHcation will be allowed to issue as a patent. Issuance takes the form of a pubHcation provided by the U.S. Government. The pubHcation of patents occurs only on Tuesdays that ate not federal hoHdays. At the time of issuance, the patent is assigned a number and made pubHc in a form which allows all interested patties to obtain access to it. 

The front covet of the patent generally also identifies the U.S. Patent Examiner who reviewed and allowed the patent appHcation, as weU as the patent attorney, agent, or firm who worked with the Patent Examiner on the appHcation, H. 

If the patent appHcation is allowed based on an appHcant s response to the second office action, examination is ended. However, if the patent examiner advises the patent appHcant that the rejections will be maintained and the appHcant views these rejections as insurmountable, the patent appHcant may choose to abandon the patent appHcation. If the patent examiner maintains the earHer posed rejections, and the patent appHcant disagrees with the examiner, the patent appHcant may appeal the examiner s decision to the Board of Patent Appeals and Interferences, which is comprised of adininistrative judges. The appeal process involves the noticing and briefing of the appeal, and oral argument before and a subsequent decision from the Board of Appeals and Interferences (step 10). Usually the oral argument is presented to, and subsequent decision is received from, a panel of three administrative judges selected from the full complement of the Board. If the Board panel decides in the appHcant s favor (step 11), the patent appHcation will be passed to issuance (step 12). If the Board decides in the examiner s favor, the patent appHcant will have to consider whether to refile the appHcation and request another round of examination or seek court review. 

Other concerns which may necessitate a review of a patent after issuance include the discovery of prior art which was not uncovered during the examination of the patent appHcation. A deterrnination should be made as to whether or not the claims in the issued patent are too broad when viewed in light of this prior art. It may also be the case that someone who participated in the examination of the patent appHcation discovered prior patents, Hterature, or activities which they knew of but did not cite to the patent examiner. In such an instance, this prior art must also be reviewed in light of the patent claims to determine whether the claims are too broad. 

The interference proceeding is declared by the patent examiner and occurs in the U.S. PTO. Once an interference is declared, a deterrnination is made as to the exact subject matter constituting the invention of the interference and who filed the first patent appHcation on that invention. The first appHcant becomes the senior party to the interference. The junior party has the burden of proving that it was prior in time as to its date of invention. 

U. S. Department of Commerce, Manual of Patent Examining Procedure, U.S. Government Printing Office, Washington, D.C., 1983. 

The first US. patent was for a method of making potash, issued in 1790 to Samuei Hopkins of Pittsford, Vermont. The patent examiner was Thomas Jefferson and the signator was George Washington. 

A patent file history, also called a file wrapper, is the complete set of documents for a patent filed with the U.S. Patent and Trademark Office. These papers chronicle communications and actions taken by the patent examiner, the applicant, and the applicant s attorney from the time of patent application to issue. File histories are available from commercial services such as Intellectual Property Network (described below). 

Patent documents, 78 158, 203-206 on CD-ROMs, 78 249 for patent families, 78 207 reviewing, 78 160-165 Patentee, 78 160 Patent enforcement, 24 377 Patent examination, in foreign countries, 78 190... 

Patent examiners, 78 159, 164 foreign, 78 189, 190 Patent families, 78 206-207 information related to, 78 229 Patent information... 

United States Patent and Trademark Office, (U.S. PTO), 18 158, 25 255 patent examination process within, 16 179-180 regulations of, 16 178 United States patents, elements of, 16 161-163... 

It is generally agreed that there should be some change in the law to facilitate public participation in the patent examination process. This is a result of the growing volume of the scientific literature and the increasing complexity of the sources to be searched. A person who knows of reasons why a patent should not have issued should be able to bring these reasons before the Patent Office, and the Patent Office should reexamine the patent and review its prior decision. These reasons are almost always published literature references—called prior art in the trade—that the patent examiner missed in the search. 

Search and examination of an application are necessary in most countries before a patent can be granted. The purpose of the search is to identify documents (whether earlier patent applications or journal articles) which are relevant in assessing whether the invention claimed in the patent application is new or non-obvious the purpose of the examination is for a patent office examiner to assess whether the claimed invention meets all the requirements of patentability and other requirements of patent law. The examination process is an interactive procedure between the patent examiner and patent applicant (or more usually his professional representative) in which the patent applicant may have to put forward arguments and evidence to rebut objections that the patent examiner may have to the patent application. During this process the patent applicant may have to amend (i.e. redefine) the claims to his invention. 

Inventiveness has to be shown by the applicant or the patentee, if a lack of inventiveness is claimed by the patent examiner during the prosecution or the public in an opposition procedure. An indication of inventiveness is, for example, an unexpected result proven by comparative examples or improved properties of anew substance. Thus, if it can be shown that a new peptide or protein shows improved properties over the wild-type protein, inventiveness can usually be acknowledged. When aiming to achieve patent protection for evolutionarily designed molecules with predefined properties and functions, an inventor should keep this in mind. 

The company s lawyer responded, The prerequisites for patentability are different from whether your claim is covered by somebody else s claim. Patentability with respect to the prior art requires novelty and nonobviousness. Their issued claim is part of the prior art, and so it will be considered only for whether it renders our claim not novel or obvious. In the last substantive office action we read why the patent examiner thought that the prior art patent claim did not negate the patentability of our claim and for what it s worth, I completely agreed with his reasoning ... 

Any final action unfavorable to the patentee by the patent examiner may be appealed by the patent holder to the Board. Further appeal by the patent holder to the Court of Appeals of the Federal Circuit is possible (35 U.S.C. 141-147). The right of appeal in the ex parte reexamination proceeding is limited to the patent holder and not the reexamination requestor.60... 

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