Patents

Application to a Patent:

Nonprovisional application for a Patent:

It must be submitted in English, or be accompanied by a translation in English with a statement that the translation is accurate. Additionally, the corresponding fee must be paid.

The application shall be written, and it must include:

• The Utility Patent Application Transmittal Form or Transmittal Letter
• Prescribed filing, search and examination fees
• The Application Data Sheet
• A specification, which includes
  • A description: an explanation of the invention along with the process of making and using the invention in full, clear, concise and exact terms. Additionally, this section should distinguish the invention from other inventions and from what is old; and describe completely the process, machine, manufacture, composition of matter or improvement invented.
  • One or more claims: the claims must point out and claim the subject matter which the applicant regards as his invention.

The specification is a written description of the invention and of the manner and process of making and using the invention that concludes with the claims to the invention.

The specification must be in clear, full, concise and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use it.

• Drawing/s (when necessary): a drawing shall be furnished if it is necessary for the understanding of the subject matter sought to be patented. If the nature of such subject matter requires a drawing to be properly understood and the applicant has not furnished such drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date may not be used to overcome the insufficiencies of the specification due to lack of an enabling disclosure, nor to extend the scope of the originally submitted application. The drawings have a series of formal requirements that can be check here.
• Oath or declaration: the inventor must sworn, in front of a notary public, an oath, stating that he or she believes himself or herself to be the original inventor of the claimed invention in the application and that the application was made or authorized to be made by him or her. In lieu of an oath, a declaration may be submitted, and it does not need to be notarized. It must be made in non-provisional applications including utility, design, plant and reissue.
• Nucleotide and Amino Acid Sequence Listing (when necessary)
• Large tables or Computer Listings (when necessary)

Procedures Before the Patent and Trademark Office (USPTO):

New applications are initially processed by the Application Division. The Application Division decides if an application is complete and meets all formal requirements.

• The drawings are forwarded by to the official draftsman, who checks the drawings to see if they comply with the formal requirements for drawings.

The USPTO maintains a detailed classification system, and each invention is classified in a specific category and subcategory. Each class has an examining group

Examination:

Each application is assigned to the appropriate art and then to a particular examiner, who checks the compliance of the elements required to obtain a filing date: a written description, a claim and any required drawing.

Then, the examiner search for prior art relevant to the claimed invention.

The Office Action:

An office action is the written communication that the examiner sends to the applicant, his attorney or agent in case that one has been appointed. The office action includes a form cover letter, on which the examiner summarizes the action by checking the appropriate boxes and filling in the correct blanks, and an explanation of the action.

The response:

The applicant must respond to the examiner’s rejections and objections within the established period. Otherwise, the application will be held abandoned. The maximum statutory period for the response is of six months, upon payment of a fee.

The response can be:

• An amendment of the claims and arguments specifically addressing the examiner’s Action,
• An amendment of the written description to include the language of an originally filed claim if the examiner rejects or objects to a claim as not being supported by the written description,
• An amendment of the written description in response to an objection of lack of clarity at the description of the invention, as long as the applicant do not introduce additional information to the description.

From the issuance of an Office Action, the applicant or the applicant’s representative is entitled to an interview with the examiner for the purpose of clarifying the issues and of reaching an agreement leading to the allowance of the application.

Reconsideration and allowance:

The examiner reconsiders the application after the response, and if he is satisfied, he issues a Notice of Allowance, informing the applicant of the allowance of the application.

If the examiner is not satisfied with the response, he may issue a second Office Action, and unless it is based on a new ground of rejection, the rejection may be made “final” by the examiner.

The Final Office Action:

After a final rejection by the examiner, the applicant may:

• Abandon the application,
• File an appeal with the Board of Patent Appeals and Interferences,
• Take allowed claims (if any) and cancel others, or
• File a continuing application.

Publication:

Under 35 USC §122, each application should be published promptly after the expiration of a period of eighteen months from the earliest filing date.

An application shall not be published if that application is:

• No longer pending;
• Subject to a secrecy order;
• A provisional application or
• An application for a design patent.

Additionally, an applicant may make a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement that requires publication of applications 18 months after filing, the application shall not be published.

Other procedures:

Foreign priority:

An applicant can claim the benefit of the filing date of an application field in any of the members to the Paris Convention, under 35 USC §119. Priority can be claimed at any time during the pendency of an application, and it is perfected by filing a certified copy of the foreign application.

Interference:  

When two or more applications claim the same subject matter, the applications are said to be interfering, and the examiner, after determining the patentability of the invention of each applicant, can declare an interference between them, to decide which of the parties was the first to make the invention.