1.1 What is Prior Art?
*The prior art for a patent application is any publicly available information (in any form) that is published before the filing date of the patent application. http://en.wikipedia.org/wiki/Prior_art
Prior art can be of two types:
Patent Prior Art: - All patent literature (patent applications, granted patents, expired or
discarded patents) published anywhere in the world
Non-Patent Prior Art:-
Any publicly available information, including technical journals, websites, products, conferences, etc. The information may exist in freely available sources or in commercial databases
Note: Unpublished patent applications, which are not publicly available, are not considered as prior art until they are published.
1.2 What is an Assignee?
Under US laws, the ownership of a patent or patent application initially lies with the inventor. The inventor can assign ownership rights to an entity, referred to as the "assignee". Typically, an assignee is an organization that may have employed the inventors - or at least compensated
them in some manner - when the invention was conceived/ reduced to practice.
1.3 What is an Office Action?
An office action is a communication from the patent office examiner to the patent applicant, which objects to, rejects or allows at least one claim in the patent application. http://en.wikipedia.org/wiki/Office_action
1.4 What is a File History (or File Wrapper)?
A file history is a collection of documents maintained by the USPTO, which includes the patent application and the official communication between the applicant and the USPTO with respect to the patent application (including the office action). The file history can be ordered from the Patent Application Information Retrieval (PAIR) system in the USPTO website. http://portal.uspto.gov/external/portal/pair
What is a Request for Continued Examination (RCE)?
An applicant who gets a final rejection notice from the patent office can make a request for continued examination by paying additional fees. The RCE allows the applicant to keep the examination process alive.
1.6 What are Patent Citations?
Patent Citations are similar to references in scientific papers. The inventors are legally bound to disclose prior art references (they are aware of) to the patent office, to indicate prior similar or related technology on which their invention improves. In addition, during the examination process, the patent examiner may cite prior art references that could 'oppose' the patent application on grounds of novelty or non-obviousness.
There are two types of citations:
Backward Citations Backward Patent Citations: These are the patent prior art cited by the
applicant or the patent office during the patent examination.
Backward Non-Patent Citations: These are the non-patent prior art cited by the applicant or the patent office during the patent examination.
Forward Citations Forward Patent Citations: These are the patents that cite the particular patent as their Backward Citations.
1.7 What is Patent Opposition?
Patent Opposition is a process that provides a mechanism for third parties to oppose the validity of a patent.
There are two types of Patent Oppositions:
In certain countries, e.g., India, once a patent application has been published, a third party can oppose the granting of the patent application by providing evidence of a close prior art and arguments challenging its grounds of patentability. There is no pre-grant opposition in USA or Europe.
*Under US patent law, Post-grant Opposition is known as the re-examination process. In this process, a third party can have a patent re-examined by the patent office at any time during the term of the patent, to verify the patentability of the claims. The third party must submit prior art evidence that challenges the grounds of patentability - novelty or non-obviousness.http://en.wikipedia.org/wiki/Patent
1.8 What is a Provisional Patent Application?
A provisional patent application is a type of interim utility patent application, which helps to establish an effective early filing date. Filing a provisional patent application requires a description of the invention, without claims or drawings. It cannot mature into an issued
patent unless a non-provisional utility patent application is filed for the invention within a year.
1.9 What is a Patent Family?
A patent family is a set of related patent applications that are filed for either the same or a minor variation of the same invention. The patent family may include Continuation, Continuation-in-Part and Divisional patent applications, as well as International patents filed in foreign jurisdictions.
1.10 What is a Patent Portfolio?
1.11 What is a Divisional Patent Application?
A Divisional patent application is the type of patent application that is filed during the office action stage when the examiner finds that multiple inventions are present in a patent application. In this case, the patent examiner may issue a "restriction" requirement, which requires the applicant to "elect" one of the multiple inventions. The applicant can either withdraw the non-elected claims or file a Divisional patent application claiming the non-elected claims. A Divisional application retains the priority date of the first parent application. Hence, the exclusionary rights of the Divisional application start from the priority date of the parent application.
1.12 What is a Continuation Patent Application?
A Continuation patent application is the type of patent application filed by an applicant who wants to pursue additional claims for an invention disclosed in an earlier patent application of the applicant (the "parent" patent application). It gives the applicant a chance to claim other embodiments and unclaimed subject matter in the parent patent application, and retains the filing date of the parent patent application. It must be filed while the parent application is pending for grant. If the parent application has been granted or abandoned, the continuation application cannot be filed. The additional claims must find full support in the parent patent application, since no new subject matter can be added in the Continuation application.
1.13 What is a Continuation-in-Part (CIP) Patent Application?
A CIP patent application is the type of patent application filed by an applicant who wants to pursue additional claims for an invention disclosed in an earlier patent application of the applicant (the "parent" patent application). It is similar to a Continuation application, except that a new subject matter and improvements to the earlier invention can only be added in a CIP application. The claims corresponding to the new subject matter have a new priority date, i.e., the date when the CIP application was filed.
1.14 What is the Patent Cooperation Treaty (PCT)?
The PCT is an international patent law treaty that makes it easier to file a patent application in multiple countries. Under the PCT, a patent applicant can delay the filing of a patent application to 30 months (31 months in some countries) in up to 137 countries, without losing the
Advantage of using the priority date. http://en.wikipedia.org/wiki/Patent_Cooperation_Treaty
The PCT has two phases: the International Phase and the National Phase:
International Phase A patent applicant, wanting to file a PCT application, can first file it or
file it within 12 months of the first filing in a member country.
An International Search Report (ISR) is provided to the applicant nine months after the first filing (or 16 months from the priority date, in the case of a subsequent filing). The ISR contains the relevant prior art search results and a brief opinion pertaining to patentability. Eighteen months after the filing date (or the priority date), the International Bureau of WIPO publishes the PCT application with the ISR. The applicants can also make a request for an optional preliminary examination, which provides a detailed report on the patentability of the invention.
The patent applicant can file the patent application within 30 months (31 months in some countries) of the first filing date.
1.15 What are the critical dates associated with the lifecycle of a patent?
The critical dates associated with the lifecycle of a patent are described below:
*Conception date*- This is the date on the innovative idea was generated.
*Reduction-to-practice date*- This date can either be the date when the invention was actually practiced for the intended purpose, when a working model of the invention
was created, or when the patent application was filed.
*Filing date*- This is the date when the patent application with an innovative idea was filed. The filing of the patent application can be construed as reduced to practice.
*Priority date*- The priority date of a patent application is the date on which the patent application was first filed (in any jurisdiction). In other words, if a patent application claims priority to an earlier filed related application, the priority date of the patent application is the filing date of the earlier application.
*Publication date*- This is the date on which the patent application is published
(typically within 18 months of the filing date).In the US, the patent application is not published until the grant stage if a non-publication request has been filed.
*Grant date*- This is the date on which the patent application is granted by the
patent office -The average time taken by the USPTO is 31 months.
*Expiry date*- This is the date on which the term of the patent application
expires (typically 20 years from the filing date).