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2012 An Overview of Prosecution Frederick W. Dingledy William & Mary Law School, [email protected]

Repository Citation Dingledy, Frederick W., "An Overview of " (2012). Library Staff Publications. 93. https://scholarship.law.wm.edu/libpubs/93

Copyright c 2012 by the authors. This article is brought to you by the William & Mary Law School Scholarship Repository. https://scholarship.law.wm.edu/libpubs Law Libraries An Overview of Patent Prosecution by Fred Dingledy

Whether it is talk about the new America be “novel” and “non-obvious.” Novel Search http://www.google.com/advanced Invents Act or patent wars between means it was never been invented _patent_search – a useful tool if you’re smartphone manufacturers, have before; 3 non-obvious means it should not trying to find completed patents. been appearing in the news quite fre - be something that any expert in the field The filed patents themselves are also quently lately. While most people under - could have thought of based on existing a source of useful information. The front stand the basic idea of a patent and what technology. 4 This is where the term prior page of a patent alone will give you it does, the process of obtaining a patent art comes into play — it refers to the information on , who owns the remains shrouded in mystery to many, state of technological development patent, and what classifications the containing terms of art specific to the before an application is filed. To be con - patent was filed under, among other field, not to mention terms that take on sidered “new,” the must be dif - things. Queen’s University has a useful a special meanings in patent law other ferent from the prior art. After the sheet that lists all the information avail - than what may normally come to mind. examiner studies the application, the able on the first page at The process of obtaining a patent is claims will either be accepted or http://library.queensu.ca/webeng/patents called prosecution — not to be confused rejected; 5 rejected claims may be /Anatomy_of_a_US_patent.pdf. with criminal prosecutions. Patents come amended. 6 Once all the claims are in different types: , design, and accepted, a patent can be granted. 7 Special thanks to Alyssa Altshuler and plant; but the most common is the util - Pam Cline of Ropes & Gray for their ity patent , which covers items designed Free Patent Resources invaluable help writing this article. to produce a useful invention. This arti - So now you know the basics of the pros - cle presents a simplified summary of the ecution process, but what free resources Endnotes: prosecution process for a utility patent. are available to research patents? 1 1-SA DONALD S. C HISUM , C HISUM ON Fortunately, the USPTO’s website has an PATENTS § 3 (1978 & S upp. 2012); Leahy-Smith America Invents Act, Pub. Overview of Patent Prosecution excellent patent research section at L. 112-29, § 3, 125 Stat. 284, 285-293 Patent prosecution begins with filing an http://www.uspto.gov/patents/index.jsp. (2011). application with the U.S. Patent and You can use this site to search for patents 2MUELLER , P ATENT LAW , at 45; 35 Trademark Office (USPTO). Traditionally, or patent owners, and get a useful U.S.C.S. §§ 101-103 (2012). the United States awards patent protec - description of the prosecution process. 3 35 U.S.C.S. § 102 (2012). 4 35 U.S.C.S. § 103 (2012). tion to the person deemed the first to Note that normally patent applications 5 35 U.S.C.S. §§ 131,132 (2012). invent. The recently-passed America are not made public, or published , until 6 37 C.F.R. § 1.116 (2012). Invents Act, however, changed that; as of eighteen months after they are filed. An 7 35 U.S.C.S. § 151 (2012). March 16, 2013, the priority for an applicant can prevent their application 8JANICE M. M UELLER , P ATENT LAW 53-4 invention will go to the party deemed from being published by swearing that (3d ed. 2009); 35 U.S.C.S. § 122 (2012). “first to file.”1 they will not file the same patent in any At the USPTO, an examiner evalu - other country, but this is very unusual. 8 ates the application. The examiner’s job You can use the USPTO’s public PAIR is to check the application and ensure it ( Information adequately discloses what the invention Retrieval) system http://www.uspto.gov is, how it is made, and how it is used. /patents/process/status/index.jsp to The examiner will also weigh the claims search for file wrappers , which are the in the application. 2 In patent law, claim collections of filings and communica - takes on a very specific meaning — it tions connected with a patent’s prosecu - defines exactly what the applicant is tion process. PAIR’s public system seeking patent protection for, the thing contains information about patent appli - Fred Dingledy is a reference librarian at the applicant wants no one else to be cations and patents; the private version the College of William & Mary Law able to make without the applicant’s per - is used by patent attorneys and USPTO School. He received his J.D. from the mission. Claims must also belong to one examiners, and has detailed information University of Minnesota-Twin Cities, and of the acceptable categories of patentable on prosecution histories. People who his M.A. in Library and Information Studies from the University of Wisconsin- subject matter. The subject of the patent prefer searching Google-style can take Madison. He is a past president of the must have a useful purpose, and it has to advantage of Google’s Advanced Patent Virginia Association of Law Libraries. www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 47