PATENT APPLICATION EXAMINATION
When a patent application is filed with the United States Patent
and Trademark Office, a Patent Examiner, in determining
patentability, must find that the invention is:
- useful
- novel, and
- non-obvious.
The invention is useful if it has a present day
useful purpose.
Novelty is satisfied unless the Examiner finds a
single prior art reference which contains all of the features of the
invention which are claimed in the patent application.
In determining whether an invention is obvious, an Examiner
may rely on the combined teachings of several patents, printed
publications or other prior art references. If a hypothetical person
of ordinary skill would view the claimed invention either as an
obvious combination of the individual features disclosed in several
references, or as an obvious extension of the existing technology,
then the Examiner will reject the application as obvious and not patentable.
In reality, the determination of obviousness involves subjective
judgment regarding, for example, the actual content of the prior art,
the level of skill of the ordinary skilled person in the technical field
and the reasonableness of combining features from different source
references.
Should you decide to file a patent application, I would caution
you that, under U.S. law, the application must be filed within one
year of the first public use or disclosure, sale or offer for sale of an
item embodying the invention. Equally important, many foreign
countries require that the patent application be filed before any
publication, demonstration, or sale of the device. However, if an
application is filed in the U.S. before the first date of any
publication, demonstration, or sale, most countries will accord that
U.S. "effective filing date" to applications filed in the foreign
country within one year. During this one year interval, the benefit of
the earlier United States filing date will attach to such foreign
patent application. There are a number of strategies for obtaining
foreign patents, and if you decide to foreign file, we could tailor a
program to your needs.
To be awarded a patent, the inventor cannot have earlier
abandoned, suppressed or concealed the invention. This requires
that the inventor be diligent in both completing the invention and in
filing for patent protection. Further, an inventor should always keep
in mind that an earlier filing date is helpful where the patent office
has to decide upon which of two pending applications for the same
invention should be allowed to issue.
Copyright 1995 Michael J. Colitz, Jr.