Patent Application Writing and Office Actions

When I started writing patent applications nearly twenty one years ago, the patent examination process was different than it is now. Twenty years ago, the patent office would grant patent protection for just about any invention. Unfortunately, this is no longer the case. The pendulum has swung in the opposite direction. The biggest cause for the pendulum swing is the 2007 Supreme Court case of KSR v. Teleflex (KSR). To make a long story short, KSR made it easier for a patent examiner to combine unrelated prior-art references (usually patents or published patent applications) to reject the claims of a patent application.

If your patent application goes to a patent examiner who has been with the patent office for over seven years, your chances of getting a patent application issued are greater than if the patent application goes to a patent examiner with less than seven years of examining experience. Why? Because the more-experienced examiner was trained differently than the post-KSR patent examiner. The Patent Office is legally obligated to follow the rulings of the Supreme Court. The Patent Office has to make a subjective interpretation of the KSR ruling to train its patent examiners. Unfortunately, I believe that the Patent Office has exaggerated the intent of KSR, to the detriment of inventors.

The Patent Office is communicating by its actions that the development of technology is to move forward with large steps instead of small steps. I personally disagree with the Patent Office’s “big steps” position. The whole purpose of granting patents is to generate a library of inventions that provide a reference to inventors for creating new inventions. If fewer patents are granted, there will be fewer patents in the patent library.

However, there still is hope for “small step” inventions. Even under KSR, your invention must have at least one feature that is not found in any prior-art references. If your patent application discloses the unique feature, you will probably be granted a patent.

The process of finding the unique feature starts with the patent search. The patent search provides prior-art references with devices that are similar to your invention. If your invention contains the unique feature, it will probably get patent protection. When the patent application is written, it is important to fully describe the unique feature with enough detail to prevent the examiner from making a broad rejection with some prior-art reference. This is where my extensive engineering and legal experience provide me insights that my competitors may not have.

As part of the patent application, claims are written that define the scope of the invention. When the patent application is examined, the examiner does a prior-art search for similar inventions. The examiner will review the claims to see if the claims describe any prior-art reference(s). The claims can be amended to avoid describing the prior-art reference found by the patent examiner during their patent search. The unique feature must be described with enough detail, because new material cannot be added to the specification.

The next section will describe how a patent examiner documents their opinion concerning the allowability of the claims filed in the patent application. The patent examiner’s written opinion is called an office action.

Once a patent application is written and filed, it will be examined within one to three years by a patent examiner. On average, it takes one-and-one half to two years to receive a first office action from the Patent Office. The wait for patent examination can be reduced by paying an additional fee of $1,035 (“micro” entity) or $2,070 (“small” entity). If one of the inventors is 65 years of age or older, a petition to “make special for age” may be filed, to decrease the wait. The wait time will be reduced to no more than six months. I have received office actions in as few as two months, by paying the additional fee.

There are three requirements for patentability—usefulness, novelty, and nonobviousness. Inventions are useful, if they have a functional purpose. There are two types of substantive rejections in an office action: a lack of novelty (“102 rejection”) and a lack of nonobviousness (“103 rejection”). The 102 rejection may be made with a single prior-art reference. The 103 rejection is usually done by combining at least two prior-art references. In a 102 rejection, the prior-art reference must include every limitation recited in the claim. In a 103 rejection, the combination of the at least two prior-art references must include every limitation recited in the claim.

The office action will include a disposition of all the claims. All the claims may be rejected, all the claims may be allowed, or some of the claims may be rejected and some of claims allowed. Additionally, dependent claims may be objected to. Adding an objected-to claim to an independent claim will make the independent claim allowable. Recently, 85% of the time, all the claims in the patent application are rejected in the first office action.

The 102 or 103 rejections are usually overcome by more precisely defining a limitation or element in the claim. The patent examiner will take the broadest possible interpretation of a prior-art reference. More precisely defining an element in the claim forces the examiner to withdraw the 102 or 103 rejection. However, any time the claim is narrowed by more precisely defining a limitation or element, the claim becomes less broad. The claim should be as broad as possible to prevent a potential infringer from designing their product around the claim. A “knock-off” product will infringe an independent claim if it includes every limitation found in the claim. However, a “knock-off” product will avoid infringement of the claim, if it has one fewer limitation or element. This is the importance of not narrowing the claim too much, to avoid the prior-art reference.

Going back to the previous article, if the patent attorney does not put enough detail into the specification, the patent attorney will not be able to amend the claim to avoid the prior-art reference. Claims may be changed if supported by the specification, but no new matter may be entered into the specification after it is filed.

The attorney does have the opportunity to contact the examiner with questions concerning the office action. Unlike many of my competitors, I will present proposed amended claims to the patent examiner, to save the client time and money. It is better to get feedback from the patent examiner than to assume that the amended claims overcome the cited prior-art reference(s). The patent examiner will provide a verbal opinion as to whether the proposed claims overcome the prior-art reference(s). If the claims do not overcome the prior-art reference(s), the patent examiner may make suggestions for amending the claims to overcome the prior-art reference(s). Sometimes, the patent examiner will let the patent attorney know that there is other prior-art not cited in the office action, but which they will use against the proposed claims. Typically, the examiner will perform another patent search relative to the newly amended claims.

An amendment contains the amended claims and arguments in support of the amended claims, relative to the prior-art references. The examiner will decide if the amended claims are allowable, relative to the prior-art references. If all the claims are allowable, a notice of allowance will be issued. If even one claim is not allowed, the examiner will issue a second office action. If it is a matter of only one or two claims not being allowed, the patent examiner will typically call the patent attorney to amend or cancel the non-allowable claim. If the patent attorney thinks the examiner is wrong in their rejections, a “supervisor’s appeal” may be filed, or a full-fledged appeal may be filed. The supervisor’s appeal will take about three months. The full-fledged appeal will take about three to four years. In response to the notice of allowance, the patent attorney will pay the issue fee and file issuance paperwork. A patent will issue in one to two months, after payment of the issue fee.



Design Patents vs. Utility Patents

Many inventors familiar with patent protection do not know the difference between design patents and utility patents. A design patent protects the appearance of an invention. A design patent includes a preamble, a specification, drawings that illustrate the outside appearance of an invention, a brief description of each drawing and one claim. The design specification is usually recited on a single page. My charge for preparation and filing of a design patent application including the drawings and filing fee is about $1,900 at the time of this article. A utility patent protects the functionality of an invention. A utility patent includes a background of the invention, a summary of the invention, a brief description of the drawings, drawings that illustrate the invention, a detailed description of the invention, claims and an abstract. The utility patent goes into great detail to describe the invention with words and the numerous drawings. Item numbers are used in the drawings to illustrate features of the invention. Instead of one general claim in the design patent, the utility patent includes about 20 claims to define the scope of the invention. My charge for preparation and filing of a utility patent application including the drawings and filing fee for a relatively simple invention is about $3,600 at the time of this article.

The standard for infringement of a design patent is confusing similarity. For example, a copyist makes a knock-off of the product protected by the design patent. The knock-off infringes the design patent, if a third party views the knock-off and is confused into thinking the knock-off is the patented product. The copyist is then guilty of patent infringement. The standard of confusing similarity is the same used for the infringement of a federal trademark. If a third party is confused into thinking the copyist trademark is the same as the issued trademark, the copyist is guilty of trademark infringement. Infringement of a utility patent occurs when the knock-off includes all the limitations recited in any one of the independent claims. If the knock-off does not include all the limitations recited in any independent claim, the knock-off does not infringe the utility patent.

The bottom line is when do you choose a design patent over a utility patent? If the invention has aesthetic features that are too difficult to describe with words, the design patent is your choice. If the functional aspects of the invention are important, the utility patent is your choice. If your invention includes both functional and aesthetic features, you may file both a design patent application and a utility patent application. However, it is more difficult to obtain a utility patent than a design application. An option is to first file a utility patent application. and if the utility patent application is not allowed, a design continuation-in-part patent application may be filed.

The Trademark Process

A trademark is most commonly used for products and business names. The trademark can take the form of either a text name or a logo containing a name.

Why trademark a product or a business name?
A trademark is an exclusive name that no competitor can use to identify or advertise their product or business. It is possible to use a name to describe a product or business without obtaining trademark protection. You may also use this name for many years before filing for a trademark; a trademark becomes stronger the longer it is used. However, if a competitor has been using the same name somewhere else in the United States for a similar period and files a trademark application before you do, that competitor may be able to keep you from using the name.

There are two types of trademark situations. The first is an intended use of a name for a product or business. You may not have a product that is ready for sale, or have a business incorporated, but you may file for a trademark to protect either. The second is an actual use of a name for a product or business. If you already have a name that is being used on a product or as a business name you may also file for a trademark.

Filing for a trademark is easy. You may start the process by informing me of your desire to obtain a trademark for a product or business name. I will recommend that a search for the name you have in mind be performed. You may do this by going to a library that has facilities to do trademark searching or I can do this for you. If you are in a hurry, you can let the Patent and Trademark Office (PTO) perform the search when they examine your trademark application.

Once you have decided on a name for which you would like to obtain trademark protection, I will ask several questions that have to do with the goods or services. I will then fill out the application and send it to you for a signature. After I have a signed copy of the application, I will be able to file it with the PTO.

It takes between five to eight months before the application is examined by a trademark attorney in the PTO. At that time, I will receive a letter from the PTO concerning your trademark name. The letter will state that either the trademark is accepted or objected to. In about 60 – 70% of the cases, the trademark will be accepted or the objection may be answered with a phone call. In the remainder of cases, I will have to write a letter to the PTO stating why you should receive a trademark on your name. In a few cases, I may not be able to overcome the PTO’s objection to the name you desire for a trademark.

When the examiner’s objections have been satisfied, a “notice of allowance” is sent. The next step is the publication of your trademark in the “Official Gazette.” Third parties have an opportunity to object to your trademark for a period of 30 days. If no objections are filed, you will receive a registration certificate in approximately four months. Please note, if an “intent to use” application is filed, a “Statement of Use” form must be filed within six months of the notice of allowance, with a fee payable to the Trademark Office.

Once you receive the registration certificate, there are three other fees with which you should be concerned. The first fee is for a “Statement of Use” affidavit, due between the 5th and 6th year after issue. The second fee is for an “Incontestability” affidavit, also due between the 5th and 6th year after issue. The Incontestability affidavit is optional, but enables you to strengthen the trademark for a nominal fee. The third fee is a renewal fee, due in the 10th year and every 10 years thereafter.

How to Choose a Good Patent Attorney

It is very difficult to determine who is and who isn’t a good patent attorney. Even if someone has used a patent attorney and thinks they did a good job, it doesn’t necessarily mean they did. I would like to provide you with some tips that will aid you in the search for a good patent attorney.

Tips for a choosing a good patent attorney.
Make sure the patent attorney has a working knowledge of the invention’s technology.
The patent attorney should tell you to make the invention as simple as possible. It’s harder to “design around” a simple patented item than a complex one.
A good patent attorney will never tell an inventor that something is too simple to be patented, or that the invention cannot be patented. A patent attorney who states that an invention is not patentable risks a malpractice lawsuit, unless they have knowledge of the prior art.
The patent attorney should know how to write claims that will make it difficult for someone to “design around” your invention. They should also be able to explain how they write the claims to accomplish this goal. I make my independent claims as broad as possible and leave the detail for the dependent claims, because for the most part, if an inventor can avoid infringing the independent claim, he has avoided all the claims dependent on it.
You should ask the patent attorney what occupies most of his or her time. Is it litigation or is it writing patents? Choose a patent attorney who spends most of his or her time writing patents.
Make sure you use an attorney who is registered with the patent office. If the patent attorney is registered, call the patent office to see if they are in good standing. This will help save you from patent scam organizations that prey on unsuspecting inventors.
The following symptoms, I believe, are evidence of a mediocre patent attorney: Details of the invention are not important to them; When they write patents, the names of each element are not consistent throughout the specification and claims; The attorney claims to be expert at writing an application for any area of technology; The patent attorney doesn’t spend enough time learning the subtleties of your invention.
In most cases, nearly any patent attorney can get a patent to issue; but it takes time, effort, skill and dedication to write a great patent application. A great patent application is one that can’t easily be “designed around.”

What To Do If a Patent is Infringed

First, hire a patent attorney who is familiar with your product to determine if the accused product reads on the claims of your patent. The patent attorney should review the file history of your patent to determine if the accused product is within the scope or breadth of the patent claims.
The next step is counting the cost. Do you have the money to out last a big opponent? What amount of money can you budget a month to pay the litigation costs? Litigation costs not only include the attorney bills, but the cost of expert witnesses, court reporters, and sometimes travel expenses.

If you can budget the money, which is usually in the tens of thousands of dollars and quite possibly more; you must also find out if there are any bones in your patent’s closet. There are numerous defenses to a patent infringement suit, such as:

1. Prior art withheld from the patent office.
2. The patent wasn’t the invention of the inventors listed on the patent.
3. The invention was publicly disclosed or on sale more than one year before the patent application was filed.

If there are no bones in the patent’s closet, that’s great. It may also be possible for the defendant to find a piece of prior art, which will invalidate your patent. Fortunately, this is a rare occurrence.

If you file a patent lawsuit, be prepared to wait a long time for the adjudication of your case. This is especially true in a jurisdiction where there is a large backlog of cases.

Consider a settlement by the defendant. Sometimes, your case may not be as strong as you would like it. You could end up with a jury who is not sophisticated or has some prejudice against your company. A settlement in hand is better than a larger speculative one. You may also consider taking a royalty or working out some kind of manufacturing agreement with the defendant. Injunctions against the defendant may not always be the best solution.

With the exception of licensing and contract disputes, patent matters are handled by the federal court system. This is very helpful for the litigating parties; you don’t have to hire a local patent attorney to handle your case. If you don’t like the patent attorneys in your city or they’re just too expensive, you can go elsewhere. The out-of-state attorney can hire one of the firms in your city as “local counsel” to file any legal papers. If you are being sued out-of-state you may hire a patent attorney in your city. Your patent attorney will then hire a “local counsel” to file papers in the other city.

Accused Of Infringement?

Take a deep breath,
and fight off the urge to panic.

This may sound silly, but there are many people who panic in this type of situation. There are a number of reasons why you shouldn’t panic.


Reasons why you shouldn’t panic.

First, many companies believe they can scare another company into paying royalties or stopping manufacture of a product by sending a threatening letter. The threatening company may only have a weak case or none at all.

Second, many companies know that they can scare a smaller company, because the smaller company may not have the financial resources to survive a protracted lawsuit. Most lawsuits settle before going to court, especially when the threatening party is shown a flaw in their case.

Third, the threatening company may be manufacturing a product which is different than what is described in the patent. A patent holder can only sue on the invention described in the claims of the patent, not on the product they are manufacturing.

Fourth, many companies will hire an attorney who is instructed to continue a case as long as the opposing counsel doesn’t find a particular defense which the threatening company knows will greatly weaken or destroy their case.

After taking that deep breath, call a patent attorney. Send them a copy of the material you received. Sometimes, the matter can be settled when the patent attorney reviews the patent application. Most of the time, it is best for the patent attorney to obtain the file history of the patent application. The file history provides information on whether the claims are broad enough to cover your companies product.

If you received a complaint from a federal court, the patent attorney will have to answer the complaint in 20 days. This is not a super expensive proposition, but you must answer the complaint, or risk a default judgement.

If the patent attorney reviews the patent and cannot find a defense to infringement, you can still hire another patent attorney for a second opinion. If both attorneys agree, you probably should think of settling. However, when hiring a patent attorney, make sure they are familiar with your product or have a working knowledge of your product. If the patent attorney doesn’t understand your product, do not hire them! This is where practical engineering experience is a real necessity.

If your product does infringe a patent, there are several options to choose from. You may offer to pay a royalty to continue manufacturing the product. You may offer to manufacture the patent holder’s product at your facility. Your company may have manufacturing economies of scale which the patent holder does not. There may be other win-win arrangements which can be worked out depending on the situation.

With the exception of licensing and contract disputes, patent matters are handled by the federal court system. This is very helpful for the litigating parties; you don’t have to hire a local patent attorney to handle your case. If you don’t like the patent attorneys in your city or they’re just too expensive, you can go elsewhere. The out-of-state attorney can hire one of the firms in your city as “local counsel” to file any legal papers. If you are being sued out-of-state you may hire a patent attorney in your city. Your patent attorney will then hire a “local counsel” to file papers in the other city.

Free Initial Consultation

As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.

The Process of Obtaining a Patent

The process of obtaining a patent includes a patent search, preparation of a patent application, patent examination and issuance.

The patent search includes a search for any type of published material that discloses a device or invention similar to your invention. The published material is also known as prior art. Potential prior art includes US patents or published patent applications; foreign patents or published patent applications; product catalogs; magazine articles; published research papers; seminar materials; or existing products. It is advised that the inventor do their own preliminary search, before hiring a third party to do a patent search. The best place to do a search is on the Internet. A preliminary search can be done by going to a general search engine, such as Google and entering words that describe the invention. This may also be done at Google patents to find US patents and published patent applications. US patents or published patent applications can also be found at the Patent Office search engine, Foreign patents or published patent applications can be found at the World Intellectual Property Organization search engine, Doing a patent search at and both require learning how to use search engine identifiers. As a last note, the age of the patent, published patent application or any other published material is not relevant. Once a document is published, it will always be prior art usable in anticipating a later filed patent application. It is highly recommended that a patent attorney review any prior art relative to the invention to determine, if it is worthwhile to file a patent application. A patent application must be filed, before the one year anniversary of a public disclosure of the invention or a first sale of the invention. Otherwise, the inventor will be barred from filing a patent application for the invention.

A patent application is prepared from information provided by the inventor. It is suggested that the inventor provide a written description of the invention with drawings and/or photographs. A written description should include the structure of the invention; the functionality of the invention; and why the invention is an improvement over the prior art or different than the prior art. The information obtained from the inventor is used to prepare the patent application. The patent application includes a discussion of the prior art, a summary of the invention, a brief description of the drawings, a detailed description of the preferred embodiments, claims and an abstract of the disclosure. The discussion of the prior art includes a listing of relevant patent documents that disclose devices, which are similar to inventor’s invention. The summary of the invention includes a short description of the invention. The detailed description provides an in-depth description of the structure and functionality of the invention. The claims define the scope of the invention. The claims are the most important part of the patent application. All the limitations in the claims must be found in a knock-off product. If all the limitations are not found in the knock-off product, the inventor cannot sue for infringement. The abstract is a description of the invention in less than 150 words.

Patent examination occurs about 11/2 – 2 years on average, after the patent application has been filed with the Patent Office. Accelerated examination may be obtained by paying an added fee to the Patent Office. The primary location of the Patent Office is in Alexandria, Virginia. However, the Patent Office will soon be opening satellite offices in Dallas, Texas; Detroit, Michigan; Denver, Colorado; and Silicon Valley, California. The new locations will make it easier for the Patent Office to recruit and retain patent examiners.

There are about 6,000 patent examiners in the patent office. About 250,000 patent applications are filed every year. The patent examiner will start the examination process by reading the patent application and especially the claims. The patent examiner will then do a search for prior art. The patent examiner will start by looking for US patents and published patent applications. If the patent examiner is not successful in finding relevant US prior art in the US patent database, the examiner will try a limited collection of foreign patents and published patent applications in the US patent database. The patent examiner may also do a search for non-patent literature, such as articles and research papers. Next, the patent examiner compares the prior art found during the search to the claims of the patent application. If the examiner feels that any of the claims describe the prior art, the examiner will reject the claims. A patent examiner’s conclusions concerning the claims are presented in an office action. The examiner will allow, object to or reject each claim in the patent application. The patent attorney is given the opportunity to amend the claims and/or argue that the claims are allowable as written. The patent attorney presents the amended claims and/or arguments in a response to the office action. There may be more than one cycle of office actions and responses, until at least one claim in the patent application is allowed. If the patent attorney or inventor is unhappy with the examiner’s opinion, an appeal may be filed with the board of patent appeals.

The last step in the patent process is issuance. All claims in the patent application must be allowed or canceled. When this occurs a notice of allowance is issued. The issue fee is paid and the patent application will, become an issued patent in about one month.