The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO) to obtain the patent is an undertaking requiring the knowledge of patent law and rules and Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.
Inventors may prepare their own patent applications and file the applications in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may have 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.
The examination of the application consists of a study of the application for compliance with the legal requirements and a search through U.S. patents, publications of patent applications, foreign patent documents, and available literature, to see if the claimed invention is new, useful and non-obvious and if the application meets the requirements of the patent statute and rules of practice.
In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:
"(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention" or
"(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention."
There are certain limited patent law exceptions to patent prohibitions (1) and (2) above. Notably, an exception may apply to a "disclosure made 1 year or less before the effective filing date of the claimed invention," but only if "the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed… from the inventor or a joint inventor."
Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences, a patent may still be refused if a person having ordinary skill in the area of technology related to the invention would find it obvious to make the change. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention.
The United States Patent and Trademark Office (USPTO) is required to publish pending utility and plant applications, other than reissue applications, under the eighteen-month publication provisions of the American Inventors Protection Act of 1999 (AIPA). Following publication, the application for patent is no longer held in confidence by the USPTO and any member of the public may request access to the entire file history of the application.
On filing of a plant or utility application, an applicant may request that the application not be published, but only if the invention has not been and will not be the subject of an application filed in a foreign country that requires publication 18 months after filing (or earlier claimed priority date) or under the Patent Cooperation Treaty.
A patent is personal property and may be sold to others or mortgaged; it may be bequeathed by a will; and it may pass to the heirs of a deceased patentee.
The patent law provides for the transfer or sale of a patent, or of an application for patent, by an instrument in writing. Such an instrument is referred to as an assignment and may transfer the entire interest in the patent. The statute also provides for the assignment of a part interest, that is, a half interest, a fourth interest, etc., in a patent. There may also be a grant that conveys the same character of interest as an assignment but only for a particularly specified part of the United States.
The owner of a patent may grant licenses to others. No particular form of license is required; a license is a contract and may include whatever provisions the parties agree upon, including the payment of royalties, etc.
Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States of any patented invention during the term of the patent. If a patent is infringed, the patent owner may sue for relief in the appropriate federal court.
The USPTO has no jurisdiction over questions relating to infringement of patents. In examining applications for patent, no determination is made as to whether the invention sought to be patented infringes any prior patent. An improvement invention may be patentable, but it might infringe a prior unexpired patent for the invention improved upon, if there is one.