Patent Prosecution refers to the process of obtaining a patent from the United States Patent and Trademark Office (“USPTO”). It begins with the drafting and filing of a patent application and ends with the patent application’s allowance or final rejection. During this process, a patent examiner reviews the application to determine whether the claimed invention meets the statutory requirements of patentability under Title 35 of the United States Code. Thus, it is crucial for businesses to have at least a basic understanding of the statutes governing patent prosecution; 35 U.S.C. §§ 101, 102, 103, 112(a), and 112(b). 

Components of a Patent

Before discussing the different statutes involved in patent prosecution, it is important to define the different components of a patent. Patents have a drawing set, a specification and claims.

Patent drawings visually depict the invention and help explain the invention’s structure or operation. These do not need to be technical drawings, such as architectural or engineering drawings, but they do need to comply with the requirements set out by the USPTO.

The specification is the written description of the invention and forms the foundation of the entire application. It explains what the invention is, how it works, and how someone skilled in the field could make and use it. A strong specification includes detailed descriptions of drawings, including a discussion on alternative embodiments and optional features. It is important to balance the need to be as detailed as possible without disclosing to much.

The claims are the most important part of the patent application. They define the legal boundaries of the invention and determine what the patent will protect. Each claim is a single sentence made up of elements or limitations that describe the invention in precise terms. Claims can be independent, standing on their own, or dependent, adding narrower limitations to an independent claim.

Section 101: Patentable Subject Matter

35 U.S.C. § 101 defines what types of inventions are patent eligible subject matter. Any invention that is a new and useful process, machine, manufacture, or composition of matter qualifies, providing that it meets the requirements of 35 U.S.C. §§ 102, 103, and 112.

It is also important to understand patent ineligible subject matter. These categories are judicially created doctrines that prevent patents covering subject matter that are considered to be the building blocks of innovation. The three categories are laws of nature, natural phenomena, and abstract ideas. If an examiner determines that an invention falls in one of these three categories, then it may still be possible to seek patent protection if it can be shown that the claims amount to significantly more then just the patent ineligible subject matter.

To provide a contemporary example, lets say Company A develops a new proprietary algorithm that greatly improves the detection rates of cancer. Now, the algorithm itself is patent ineligible subject matter because it is in abstract idea. But, if the patent application outlines the process of how the algorithm detects the rates of cancer at a higher rate, then the claims of the patent application may be considered patent eligible subject matter.

Section 102: Novelty

35 U.S.C. § 102 sets forth the requirement of novelty. An invention must be new—it cannot have been publicly disclosed, patented, or described in prior art before the effective filing date of the claimed invention.

The effective filing date is the earliest filing date that a patent application can claim priority to. Establishing a filing date with the USPTO is crucial because the United States follows a first to file system. So, any source of information that is available prior to the effective filing date of the patent application qualifies as prior art.

Prior art put simply can be any source of public information that a person of ordinary skill in the art (“POSITA”) would consider. This includes patents, published applications, printed publications, public uses, or sales. If any single prior art reference discloses all elements of the claimed invention, then the claim is considered anticipated and unpatentable. It is important to note that the prior art includes international sources, not just information that is available in the United States.

Section 103: Non-Obviousness

35 U.S.C. § 103 is another statute that considers sources of prior art. However, instead of focusing on novelty, the statute requires that an invention be non-obvious in light of the prior art. Even if no single reference discloses the claimed invention, the combination of multiple references may render it obvious if the differences between the claimed invention and the prior art are such that the invention as a whole would have been obvious to a POSITA.

This standard prevents granting patents for trivial modifications of existing technology. Examiners often rely on multiple references and reasoning under the Graham v. John Deere Co. factors, which include (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, (3) the level of ordinary skill in the art, and (4) any objective evidence of non-obviousness such as commercial success or long-felt need.

Analogous art can also play a role in determining whether a prior art reference would render the claims obvious. Analogous art is any source of prior art that is not in the exact same field as the invention, but offers up a solution that a POSITA would consider when creating an invention. For example, if Company B develops a new heart pump that improves blood flow of a wearer, then it is perfectly permissible for a patent examiner to cite a prior art reference that discloses the specifics of how a pump for a swimming pool operates. While the swimming pool pump is different from a heart pump, both devices are involved with the pumping of a fluid and therefore analogous to each other.

Section 112(a): Written Description, Enablement and Best Mode

35 U.S.C. § 112(a) has three different requirements that the specification of a patent application must comply with; written description, enablement, and best mode. These requirements are in place to ensure that a patent application fully disclose the invention in the specification, enable others of ordinary skill in the art to make and use the invention, and finally, the best mode requirement ensures that the best way to use the invention is shared with the public. The policy goal of this statute is to ensure that a patentee fully disclose their invention in exchange for the exclusive rights that comes with a patent.

Section 112(b): Definiteness of the Claims

35 U.S.C. § 112(b) requires that the claims particularly point out and distinctly claim the subject matter regarded as the invention. In other words, the claims of a patent application must clearly define the legal boundaries of the inventor’s rights.

Conclusion

The patent prosecution process is a significant monetary and time investment, so it is crucial that businesses have a basic understanding of the statutory framework that governs this process.