To qualify for a patent, the invention must be new and useful. Also, the invention must not be obvious to one of ordinary skill in the field. If an inventor believes these requirements can be met, the inventor, either on his/her own or with the assistance of a patent attorney/agent, will prepare a patent application for filing with the United States Patent and Trademark Office (“USPTO”). The USPTO is an agency in the federal government tasked with examining patent applications to make sure they are in proper form and comply with the requirements of the law.
When the USPTO receives the inventor’s application, the patent application is assigned to a patent examiner. The patent examiner is a staff person with background in the field or art associated with the invention described in the patent application. The patent examiner examines the application and decides whether a patent can be granted. Examiners must review the patent applications in the order in which they were filed. In reviewing the application, the examiner will focus on the patent claims to reach a conclusion as to whether the invention described in the claims is patentable. To make that determination, the patent examiner usually looks at patents or published patent applications in the same or very closely related fields of art. The examiner also will determine whether the inventor’s description of the invention is complete and clear enough to meet the requirements for a patent, including the requirement that the description enables someone with ordinary skill in the field to make or use the invention.
Sometimes the examiner concludes that the patent application meets all the requirements and allows the patent to issue at this first stage. But more frequently, the examiner will reject the application as deficient in some respect. At this point, the applicant usually prepares a written response either agreeing or disagreeing with the examiner. The applicant who agrees with the examiner can submit amendments to the application designed to overcome the examiner’s objections to the application. The applicant who disagrees with the examiner’s objection can explain the reasons for the disagreement. This exchange of office actions and responses continues until the examiner finally rejects or allow some or all claims. Once one or more claims have been allowed, the applicant is required to pay an issue fee and the patent is printed. The inventor does not have the right to keep others from making, using, offering for sale, selling, or importing the invention until the date when the patent issues.