Patent process overview | USPTO
Patents are granted and issued through the U.S. Patent and Trademark Office (PTO). See 35 U.S.C. §§ 1-26. The rules of practice in patent cases are listed in Title 37, Part I, of the Code of Federal Regulations. The process by which a patent is obtained from the PTO is called “prosecution.” Prosecution begins when a patent application is filed with the PTO. The basic elemements of a patent application are: the specification, including a summary of the invention usually accompanied by drawings; one or more claims listed at the end of the specification; an oath or declaration that the inventor was the first to invent the subject matter described in the specification; and applicable filing fees.
Each patent application received by the PTO is examined by a patent examiner in the order it is received. The patent examiner is required to thoroughly study the patent application and investigate the available prior art. See 37 C.F.R. § 1.104. Once the examination is complete, the examiner may accept the application and issue a patent; issue a rejection of some or all of the claims made in the application; or issue an objection if a problem with the form of the application is detected. If a claim is rejected as unpatentable, or an objection to the form of the application is issued, the examiner must notify the applicant, stating the reasons for each rejection or objection and providing information and references to assist the applicant in judging the propriety of continuing the prosecution. See 37 C.F.R. § 1.104; 35 U.S.C. § 132.
Upon receiving notice of any objections or rejections issued by the PTO, the applicant is entitled to a reexamination of the application whether or not the application has been amended to address the reasons stated by the examiner. See 35 U.S.C. § 132. If the application is rejected a second time, or a final rejection is issued, the applicant may file an appeal of the decision with the Board of Patent Appeals and Interferences. See 35 U.S.C. § 134. An applicant who is dissatisfied with the decision of the Board of Patent Appeals and Interferences has a choice between two further options for appeal. The applicant may either appeal the Board’s decision to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. § 141, or pursue a civil action to obtain patent under 35 U.S.C. § 145 by filing against the Director in the United States District Court for the District of Columbia.
In 1975, the Patent Act was amended to accommodate the Patent Cooperation Treaty (PCT). See 35 U.S.C. §§ 351-376. The PCT permits applicants from signatory countries to wait for up to 30 months after the initial filing of a patent application in one country before beginning a full prosecution of the patent in other countries. The PCT gives the inventor the benefit of extra time to assess the technical merits and commercial potential of the invention, and to decide in which countries patent protection will be sought prior to the expenditure of filing and examination fees.