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General Information Concerning Patents

Contents

Functions of the Patent and Trademark Office

Purpose of this booklet

What is a patent?

Patent laws

What can be patented

Novelty and other conditions for obtaining a patent

The United States Patent and Trademark Office

Publications of the Patent and Trademark Office

General information and correspondence

Library, search room searches

Attorneys and agents

Disclosure Document

Who may apply for a patent

Application for patent

Oath or declaration, signature

Filing Fees

Specification (description and claims)

Drawing

Models, exhibits, specimens

Examination of applications and proceedings in the Patent and

Trademark Office

Amendments to application

Time for response and abandonment

Appeal to the Board of Patent Appeals and Interferences and to

the courts

Interferences

Allowances and issue of patent

Nature of patent and patent rights

Maintenance Fees

Correction of patents

Assignments and licenses

Infringement of patents

Patent marking and "patent pending"

Design patents

Plant patents

Treaties and foreign patents

Foreign applicants for United States patents

Fees and payment

Answers to questions frequently asked

FUNCTIONS OF THE PATENT AND TRADEMARK OFFICE

The Patent and Trademark Office is an agency of the U.S.

Department of Commerce.

The role of the Patent and Trademark Office is to provide

patent protection for inventions and to register trademarks. It

serves the interest of inventors and businesses with respect to

their inventions and corporate, product, and service

identifications. It also advises and assists the bureaus and

offices of the Department of Commerce and other agencies of the

Government in matters involving "intellectual property" such as

patents, trademarks and semiconductor mask works. Through the

preservation, classification, and dissemination of patent

information, the Office aids and encourages innovation and the

scientific and technical advancement of the Nation.

In discharging its duties, the Patent and Trademark Office

examines applications and grants patents on inventions when

applicants are entitled to them; it publishes and disseminates

patent information, records assignments of patents, maintains

search files of U.S. and foreign patents and a search room for

public use in examining issued patents and records. It supplies

copies of patents and official records to the public. Similar

functions are performed relating to trademarks.

PURPOSE OF THIS BOOKLET

The purpose of this booklet is to give the reader some

general information about patents and the operations of the

Patent and Trademark Office. (A similar booklet is available on

the subject of trademarks.) It attempts to answer many of the

questions commonly asked of the Patent and Trademark Office but

is not intended to be a comprehensive textbook on patent law or

a guide for the patent lawyer. Consequently, many details are

omitted and complications have been avoided as much as

possible. It is hoped that this pamphlet will be useful to

inventors and prospective applicants for patents, to students,

and to others who may be interested in patents by giving them a

brief general introduction to the subject.

Because of the large amount of mail received by the Patent

and Trademark Office, a copy of this pamphlet, with particular

sections marked when appropriate, may be used by the Patent and

Trademark Office to reply to inquiries and is intended as a

courtesy reply.

Additional information may be obtained from the

publications listed on pages 6 and 7. The Patent and Trademark

Office does not publish any textbooks on patent law, but a

number of such works for the specialist and for the general

reader have been published by private concerns.

WHAT IS A PATENT?

A patent for an invention is a grant of a property right

by the Government to the inventor (or his heirs or assigns),

acting through the Patent and Trademark Office. The term of the

patent is 17 years from the date the patent is granted, subject

to the payment of maintenance fees.

The right conferred by the patent grant extends throughout

the United States and its territories and possessions.

The right conferred by the patent grant is, in the

language of the statute and of the grant itself, "the right to

exclude others from making, using, or selling" the invention.

What is granted is not the right to make, use, or sell, but the

right to exclude others from making, using, or selling the

invention.

Most of the statements in the preceding paragraphs will be

explained in greater detail in later sections.

Some persons occasionally confuse patents, copyrights, and

trademarks. Although there may be some resemblance in the

rights of these three kinds of intellectual property, they are

different and serve different purposes.

Copyrights

A copyright protects the writings of an author against

copying. Literary, dramatic, musical and artistic works are

included within the protection of the copyright law, which in

some instances also confers performing and recording rights.

The copyright goes to the form of expression rather than to the

subject matter of the writing. A description of a machine could

be copyrighted as a writing, but this would only prevent others

from copying the description; it would not prevent others from

writing a description of their own or from making and using the

machine. Copyrights are registered in the Copyright Office in

the Library of Congress. Information concerning copyrights may

be obtained from the Register of Copyrights, Library of

Congress, Washington, D.C. 20559. (Telephone 202/479-0700)

Trademarks

A trademark relates to any word, name, symbol or device

which is used in trade with goods to indicate the source or

origin of the goods and to distinguish them from the goods of

others. Trademark rights may be used to prevent others from

using a confusingly similar mark but not to prevent others from

making the same goods or from selling them under a non-

confusing mark. Similar rights may be acquired in marks used in

the sale or advertising of services (service marks). Trademarks

and service marks which are used in interstate or foreign

commerce may be registered in the Patent and Trademark Office.

The procedure relating to the registration of trademarks and

some general information concerning trademarks is given in a

pamphlet called Basic Facts About Trademarks.

PATENT LAWS

The Constitution of the United States gives Congress the

power to enact laws relating to patents. in Article I, section

8, which reads "Congress shall have power... to promote the

progress of science and useful arts, by securing for limited

times to authors and inventors the exclusive right to their

respective writings and discoveries." Under this power Congress

has from time to time enacted various laws relating to patents.

The first patent law was enacted in 1790. The law now in effect

is a general revision which was enacted July 19, 1952, and

which came into effect January 1, 1953. It is codified in Title

35, United States Code.

The patent law specifies the subject matter for which a

patent may be obtained and the conditions for patentability.

The law establishes the Patent and Trademark Office for

administering the law relating to the granting of patents, and

contains various other provisions relating to patents.

WHAT CAN BE PATENTED

The patent law specifies the general field of subject

matter that can be patented and the conditions under which a

patent may be obtained.

In the language of the statute, any person who "invents

or discovers any new and useful process, machine, manufacture,

or composition of matter, or any new and useful improvements

thereof, may obtain a patent," subject to the conditions and

requirements of the law. By the word "process" is meant a

process or method, and new processes, primarily industrial or

technical processes, may be patented. The term "machine" used

in the statute needs no explanation. The term "manufacture"

refers to articles which are made, and includes all

manufactured articles. The term "composition of matter" relates

to chemical compositions and may include mixtures of ingredients

as well as new chemical compounds. These classes of subject

matter taken together include practically everything which is

made by man and the process for making them.

The Atomic Energy Act of 1954 excludes the patenting of

inventions useful solely in the utilization of special nuclear

material or atomic energy for atomic weapons.

The patent law specifies that the subject matter must be

"useful." The term "useful" in this connection refers to the

condition that the subject matter has a useful purpose and also

includes operativeness, that is, a machine which will not

operate to perform the intended purpose would not be called

useful, and therefore would not be granted a patent.

Interpretations of the statute by the courts have defined

the limits of the field of subject matter which can be

patented, thus it has been held that methods of doing business

and printed matter cannot be patented.

In the case of mixtures of ingredients, such as medicines,

a patent cannot be granted unless there is more to the mixture

than the effect of its components. (So called patent medicines

are ordinarily not patented, the phrase "patent medicine" in

this connection does not have the meaning that the medicine is

patented.) A patent cannot be obtained upon a mere idea or

suggestion. The patent is granted upon the new machine,

manufacture, etc., as has been said, and not upon the idea or

suggestion of the new machine. A complete description of the

actual machine or other subject matter sought to be patented is

required.

NOVELTY AND OTHER CONDITIONS FOR OBTAINING A PATENT

In order for an invention to be patentable it must be new

as defined in the patent law, which provides that an invention

cannot be patented if--

"(a) The invention was known or used by others in this

country, or patented or described in a printed publication

in this or a foreign country, before the invention thereof

by the applicant for patent, or

"(b) The invention was patented or described in a printed

publication in this or a foreign country or in public use

or on sale in this country more than one year prior to the

application for patent in the United States...."

If the invention has been described in a printed

publication anywhere in the world, or if it has been in public

use or on sale in this country before the date that the

applicant made his invention, a patent cannot be obtained. If

the invention has been described in a printed publication

anywhere, or has been in public use or on sale in this country

more than one year before the date on which an application for

patent is filed in this country, a valid patent cannot be

obtained. In this connection it is immaterial when the

invention was made, or whether the printed publication or

public use was by the inventor himself or by someone else. If

the inventor describes the invention in a printed publication

or uses the invention publicly, or places it on sale, he must

apply for a patent before one year has gone by, otherwise any

right to a patent will be lost.

Even if the subject matter sought to be patented is not

exactly shown by the prior art, and involves one or more

differences over the most nearly similar thing already known, a

patent may still be refused if the differences would be

obvious. The subject matter sought to be patented must be

sufficiently different from what has been used or described

before so that it may be said to be unobvious to a person

having ordinary skill in the area of technology related to the

invention. For example, the substitution of one material for

another, or changes in size, are ordinarily not patentable.

THE UNITED STATES PATENT AND TRADEMARK OFFICE

Congress established the United States Patent and

Trademark Office to issue patents on behalf of the Government.

The Patent and Trademark Office as a distinct bureau may be

said to date from the year 1802 when a separate official in the

Department of State who became known as "Superintendent of

Patents" was placed in charge of patents. The revision of the

patent laws enacted in 1836 reorganized the Patent and

Trademark Office and designated the official in charge as

Commissioner of Patents and Trademarks. The Patent and

Trademark Office remained in the Department of State until 1849

when it was transferred to the Department of Interior. In 1925

it was transferred to the Department of Commerce where it is

today.

The Patent and Trademark Office administers the patent

laws as they relate to the granting of patents for inventions,

and performs other duties relating to patents. It examines

applications for patents to determine if the applicants are

entitled to patents under the law and grants the patents when

they are so entitled; it publishes issued patents and various

publications concerning patents, records assignments of

patents, maintains a search room for the use of the public to

examine issued patents and records, supplies copies of records

and other papers, and the like. Similar functions are performed

with respect to the registration of trademarks. The Patent

and Trademark Office has no jurisdiction over questions of

infringement and the enforcement of patents, nor over matters

relating to the promotion or utilization of patents or

inventions.

The head of the Office is the Assistant Secretary and

Commissioner of Patents and Trademarks and his staff includes

the Deputy Assistant Secretary and Deputy Commissioner, several

assistant commissioners, and other officials. As head of the

Office, the Commissioner superintends or performs all duties

respecting the granting and issuing of patents and the

registration of trademarks; exercises general supervision over

the entire work of the Patent and Trademark Office; prescribes

the rules, subject to the approval of the Secretary of

Commerce, for the conduct of proceedings in the Patent and

Trademark Office and for recognition of attorneys and agents;

decides various questions brought before him by petition as

prescribed by the rules, and performs other duties necessary

and required for the administration of the Patent and Trademark

Office.

The work of examining applications for patents is divided

among a number of examining groups, each group having

jurisdiction over certain assigned fields of technology. Each

group is headed by a group director and staffed by a number of

examiners. The examiners review applications for patents and

determine whether patents can be granted. An appeal can be

taken to the Board of Patent Appeals and Interferences from

their decisions refusing to grant a patent and a review by the

Commissioner of Patents and Trademarks may be had on other

matters by petition. The examiners also identify applications

that claim the same invention and initiate proceedings, known

as interferences, to determine who was the first inventor.

In addition to the examining groups, other offices perform

various services, such as receiving and distributing mail,

receiving new applications, handling sales of printed copies of

patents, making copies of records, inspecting drawings, and

recording assignments.

At present, the Patent and Trademark Office has about

4,400 employees, of whom about half are examiners and others

with technical and legal training. Patent applications are

received at the rate of over 170,000 per year. The Patent and

Trademark Office receives over five million pieces of mail each

year.

PUBLICATIONS OF THE PATENT AND TRADEMARK OFFICE

Patents--The specification and accompanying drawings of

all patents are published on the same day they are granted and

printed copies are sold to the public by the Patent and

Trademark Office. Over 5,000,000 patents have been issued.

Printed copies of any patent, identified by its patent

number, may be purchased from the Patent and Trademark Office.

See fee schedule.

Future patents classified in subclasses containing subject

matter of interest may be obtained, as they issue, by

prepayment of a deposit and a service charge. For the cost of

such subscription service, a separate inquiry should be sent to

the Patent and Trademark Office.

Official Gazette of the United States Patent and Trademark

Office. -- The Official Gazette of the United States Patent and

Trademark Office is the official journal relating to patents

and trademarks. It has been published weekly since January 1872

(replacing the old "Patent Office Reports"), and is now issued

each Tuesday in two parts, one describing patents and the other

trademarks. h contains a claim and a selected figure of the

drawings of each patent granted on that day; notices of patent

and trademark suits; indexes of patents and patentees, list of

patents available for license or sale; and much general

information such as orders, notices, changes in rules, changes

in classification, etc. The Official Gazette is sold on

subscription and by single copies by the Superintendent of

Documents, U.S. Government Printing Office, Washington, D.C.

20402.

The illustrations and claims of the patents are arranged

in the Official Gazette according to the Patent and Trademark

Office classification of subject matter, permitting ready

reference to patents in any particular field. Street addresses

of patentees and a geographical index of residents of inventors

are included. Copies of the Official Gazette may be found in

public libraries of larger cities.

Index of Patents. -- This annual index to the Official

Gazette is currently in two volumes, one an index of patentees

and the other an index by subject matter of the patents. Sold

by Superintendent of Documents.

Index of Trademarks. -- An annual index of registrants of

trademarks. Sold by Superintendent of Documents.

Manual of Classification. -- A looseleaf book containing a

list of all the classes and subclasses of inventions in the

Patent and Trademark Office classification systems, a subject

matter index, and other information relating to classification.

Substitute pages are issued from time to time. Annual

subscription includes the basic manual and substitute pages.

Sold by Superintendent of Documents.

Classification Definitions -- Contains the changes in

classification of patents as well as definitions of new and

revised classes and subclasses. Sold by Patent and Trademark

Office.

Title 37 Code of Federal Regulations. -- Includes rules of

practice for Patents, Trademarks and Copyrights. Available from

the Superintendent of Documents.

Basic Facts about Trademarks -- Contains general

information for the layman about applications for, and

registration of, trademarks and service marks. Copies may be

purchased from Superintendent of Documents.

Directory of Registered Patent Attorneys and Agents

Arranged by States and Countries -- An alphabetical and

geographical listing of patent attorneys and agents registered

to practice before the U.S. Patent and Trademark Office. Sold

by Superintendent of Documents.

Manual of Patent Examining Procedure -- A loose-leaf

manual which serves primarily as a detailed reference work on

patent examining practice and procedure for the Patent and

Trademark Office's Examining Corps. Subscriptions service

includes basic manual, quarterly revisions, and change notices.

Sold by Superintendent of Documents.

The Story of the United States Patent Office. -- A

chronological account of the development of the U.S. Patent and

Trademark Office and patent system and of inventions which had

unusual impact on the American economy and society. Sold by

Superintendent of Documents.

GENERAL INFORMATION AND CORRESPONDENCE

All business with the Patent and Trademark Office should

be transacted by writing to "COMMISSIONER OF PATENTS AND

TRADEMARKS, WASHINGTON, D.C. 20231." Correspondents should be

sure to include their full return addresses, including Zip

Codes.

The principal location of the office is Crystal Plaza 3,

2021 Jefferson Davis highway, Arlington, Virginia. The personal

attendance of applicants at the Office is unnecessary.

Applicants and attorneys are required to conduct their

business with decorum and courtesy. Papers presented in

violation of this requirement will be returned.

Separate letters (but not necessarily in separate

envelopes) should be written in relation to each distinct

subject of inquiry, such as assignments, payments, orders for

printed copies of patents, orders for copies of records,

requests for other services, etc. None of these should be

included with letters responding to Office actions in

applications (see page 19).

When a letter concerns a patent application, the

correspondent must include the serial number, filing date and

Group Art Unit number. When a letter concerns a patent, it must

include the name of the patentee, the title of the invention,

the patent number and the date of issue.

An order for a copy of an assignment must give the book

and page or reel and frame of the record, as well as the name

of the inventor; otherwise, an additional charge is made for

the time consumed in making the search for the assignment.

Applications for patents are not open to the public, and

no information concerning them is released except on written

authority of the applicant, his assignee, or his attorney, or

when necessary to the conduct of the business of the Office.

Patents and related records, including records of any

decisions, the records of assignments other than those relating

to assignments of patent applications, books, and other records

and papers in the Office are open to the public. They may be

inspected in the Patent and Trademark Office Search Room or

copies may be ordered.

The Office cannot respond to inquiries concerning the

novelty and patentability of an invention in advance of the

filing of an application; give advice as to possible

infringement of a patent; advise of the propriety of filing an

application; respond to inquiries as to whether or to whom any

alleged invention has been patented; act as an expounder of the

patent law or as counselor for individuals, except in deciding

questions arising before it in regularly filed cases.

Information of a general nature may be furnished either

directly or by supplying or calling attention to an appropriate

publication.

LIBRARY, SEARCH ROOM SEARCHES AND PATENT AND TRADEMARK

DEPOSITORY LIBRARIES

The Scientific and Technical Information Center of the

Patent and Trademark Office at Crystal Plaza 3, 2021 Jefferson

Davis Highway, Arlington, Va., has available for public use

over 120,000 volumes of scientific and technical books in

various languages, about 90,000 bound volumes of periodicals

devoted to science and technology, the official journals of 77

foreign patent organizations, and over 12 million foreign

patents.

A Search Room is provided where the public may search and

examine United States patents granted since 1836. Patents are

arranged according to the Patent and Trademark Office

classification system of over 400 classes and over 120,000

subclasses. By searching in these classified patents, it is

possible to determine, before actually filing an application,

whether an invention has been anticipated by a United States

patent, and it is also possible to obtain the information

contained in patents relating to any field of endeavor. The

Search Room contains a set of United States patents arranged in

numerical order and a complete set of the Official Gazette.

A Files Information Room also is maintained where the

public may inspect the records and files of issued patents and

other open records.

Applicants, their attorneys or agents, and the general

public are not entitled to use the records and files in the

examiners' rooms.

The Search Room is open from 8 a.m. to 8 p.m. Monday

through Friday except on Federal holidays.

Since a patent is not always granted when an application

is filed, many inventors attempt to make their own

investigation before applying for a patent. This may be done in

the Search Room of the Patent and Trademark Office, and

libraries, located throughout the U.S., which have been

designated as Patent and Trademark Depository Libraries (PTDL).

Patent attorneys or agents may be employed to make a so-called

preliminary search through the prior United States patents to

discover if the particular device or one similar to it has been

shown in some prior patent. This search is not always as

complete as that made by the Patent and Trademark Office during

the examination of an application, but only serves, as its name

indicates a preliminary purpose. For this reason, the Patent

and Trademark Office examiner may, and often does, reject

claims in an application on the basis of prior patents or

publications not found in the preliminary search.

Those who cannot come to the Search Room may order from

the Patent and Trademark Office copies of lists of original

patents or of cross-referenced patents contained in the

subclasses comprising the field of search, or may inspect and

obtain copies of the patents at a Patent and Trademark

Depository Library. The Patent and Trademark Depository

Libraries (PTDLs) receive current issues of U.S. Patents and

maintain collections of earlier issued patents and trademark

information. The scope of these collections varies from library

to library, ranging from patents of only recent years to all or

most of the patents issued since 1790.

These patent collections are open to public use. Each of

the Patent and Trademark Depository Libraries, in addition,

offers the publications of the U.S. Patent Classification

System (e.g., The Manual of Classification, Index to the U.S.

Patent Classification, Classification Definitions, etc.) and

other patent documents and forms, and provides technical staff

assistance in their use to aid the public in gaining effective

access to information contained in patents. The collections are

organized in patent number sequence.

Available in all PTDLs is the Classification And Search

Support Information System (CASSIS), computer data base. With

various modes, it permits the effective identification of

appropriate classifications to search, provides numbers of

patents assigned to a classification to permit finding the

patents in a numerical file of patents, provides the current

classification(s) of all patents, permits word searching on

classification titles, abstracts, the Index provides certain

bibliographic information on more recently issued patents.

Facilities for making paper copies from either microfilm

in readerprinters or from the bound volumes in paper-to-paper

copies are generally provided for a fee.

Due to variations in the scope of patent collections among

the Patent and Trademark Depository Libraries and in their

hours of service to the public, anyone contemplating the use of

the patents at a particular library is advised to contact that

library, in advance, about its collection and hours, so as to

avert possible inconvience.

State Name of Library

Alabama Auburn University Libraries

Birmingham Public Library

Alaska Anchorage: Z. J. Loussac Public

Library

Arizona Tempe: Noble Library, Arizona State

University

Arkansas Little Rock: Arkansas State

University

California Los Angeles City Library

Sacramento: California State Library

San Diego Public Library

Sunnyvale Patent Clearinghouse

Colorado Denver Public Library

Connecticut New Haven: Science Park Library

Delaware Newark: University of Delaware

Library

District of Columbia Washington: Howard University

Libraries

Florida Fort Lauderdale: Broward County Main

Library

Miami-Dade Public Library

Orlando: University of Central

Florida Libraries

Tampa: Tampa Campus Library,

University of South Florida

Georgia Atlanta: Price Gilbert Memorial

Library, Georgia Institute of

Technology

Hawaii Honolulu: Hawaii State Public

Library System

Idaho Moscow: University of Idaho Library

Illinois Chicago Public Library

Springfield: Illinois State Library

Indiana Indianapolis-Marion County Public

Library

West Lafayette: Siegesmund

Engineering Laboratory, Purdue

University

Iowa Des Moines: State Library of Iowa

Kansas Wichita: Ablah Library, Wichita

State University

Kentucky Louisville Free Public Library

Louisiana Baton Rouge: Troy H. Middleton

Library, Louisiana State

University

Maryland College Park: Engineering and

Physical Sciences Library,

University of Maryland

Massachusetts Amherst: Physical Sciences Library,

University of Massachusetts

Boston Public Library

Michigan Ann Arbor: Engineering Library,

University of Michigan

Big Rapids: Abigail S. Timme

Library, Ferris State

University

Detroit Public Library

Minnesota Minneapolis Public Library and

Information Center

Mississippi Jackson: Mississippi Library

Commission

Missouri Kansas City: Linda Hall Library

St. Louis Public Library

Montana Butte: Montana College of Mineral

Science and Technology Library

Nebraska Lincoln: Engineering Library,

University of Nebraska-Lincoln

Nevada Reno: University of Nevada-Reno

Library

New Hampshire Durham: University of New Hampshire

Library

New Jersey Newark Public Library

Piscataway: Library of Science and

Medicine, Rutgers University

New Mexico Albuquerque: University of New

Mexico General Library

New York Albany: New York State Library

Buffalo and Erie County Public

Library

New York Public Library (The

Research Libraries)

North Carolina Raleigh: D. H. Hill Library, North

Carolina State University

North Dakota Grand Forks: Chester Fritz Library,

University of North Dakota

Ohio Cincinnati and Hamilton County,

Public Library of

Cleveland Public Library

Columbus: Ohio State University

Libraries

Toledo/Lucas County Public Library

Oklahoma Stillwater Oklahoma State University

Center for International Trade

Development

Oregon Salem: Oregon State Library

Pennsylvania Philadelphia: The Free Library of

Pittsburgh: Carnegie Library of

University Park: Pattee Library,

Pennsylvania State University

Rhode Island Providence Public Library

South Carolina Charleston: Medical University of

South Carolina Library

Clemson University Libraries

Tennessee Memphis and Shelby County Public

Library and Information Center

Nashville: Stevenson Science

Library, Vanderbilt University

Texas Austin: McKinney Engineering

Library, University of Texas at

Austin

College Station: Sterling C. Evans

Library, Texas A & M University

Dallas Public Library

Houston: The Fondren Library, Rice

University

Utah Salt Lake City: Marriott Library,

University of Utah

Virginia Richmond: James Branch Cabell

Library, Virginia Commonwealth

University

Washington Seattle: Engineering Library,

University of Washington

West Virginia Morgantown: Evansdale Library, West

Virginia University

Wisconsin Madison: Kurt F. Wendt Library,

University of Wisconsin-Madison

Milwaukee Public Library

ATTORNEYS AND AGENTS

The preparation of an application for patent and the

conducting of the proceedings in the Patent and Trademark

Office to obtain the patent is an undertaking requiring the

knowledge of patent law and Patent and Trademark Office

practice as well as knowledge of the scientific or technical

matters involved in the particular invention.

Inventors may prepare their own applications and file them

in the Patent and Trademark Office and conduct the proceedings

themselves, but unless they are familiar with these matters or

study them in detail, they may get into considerable

difficulty. While a patent may be obtained in many cases by

persons not skilled in this work, there would be no assurance

that the patent obtained would adequately protect the

particular invention.

Most inventors employ the services of registered patent

attorneys or patent agents. The law gives the Patent and

Trademark Office the power to make rules and regulations

governing conduct and the recognition of patent attorneys and

agents to practice before the Patent and Trademark Office.

Persons who are not recognized by the Patent and Trademark

Office for this practice are not permitted by law to represent

inventors before the Patent and Trademark Office. The Patent

and Trademark Office maintains a register of attorneys and

agents. To be admitted to this register, a person must comply

with the regulations prescribed by the Office, which require a

showing that the person is of good moral character

and of good repute and that he/she has the legal and scientific

and technical qualifications necessary to render applicants for

patents a valuable service. Certain of these qualifications

must be demonstrated by the passing of an examination. Those

admitted to the examination must have a college degree in

engineering or physical science or the equivalent of such a

degree. The Patent and Trademark Office registers both

attorneys at law and persons who are not attorneys at law. The

former persons are now referred to as "patent attorneys" and

the latter persons are referred to as "patent agents." Insofar

as the work of preparing an application for patent and

conducting the prosecution in the Patent and Trademark Office

is concerned, patent agents are usually just as well qualified

as patent attorneys, although patent agents cannot conduct

patent litigation in the courts or perform various services

which the local jurisdiction considers as practicing law. For

example, a patent agent could not draw up a contract relating

to a patent, such as an assignment or a license, if the State

in which he resides considers drawing contracts as practicing

law.

Some individuals and organizations that are not registered

advertise their services in the fields of patent searching and

invention marketing and development. Such individuals and

organizations cannot represent inventors before the Patent and

Trademark Office. They. are not subject to Patent and Trademark

Office discipline, and the Office cannot assist inventors in

dealing with them.

The Patent and Trademark Office cannot recommend any

particular attorney or agent, or aid in the selection of an

attorney or agent, as by stating, in response to inquiry that a

named patent attorney, agent, or firm, is "reliable" or

"capable." The Patent and Trademark Office publishes a

directory of all registered patent attorneys and agents who

have indicated their availability to accept new clients,

arranged by states, cities, and foreign countries. The

Directory must be purchased from the Government Printing

Office.

The telephone directories of most large cities have, in

the classified section, a heading for patent attorney's under

which those in that area are listed. Many large cities have

associations of patent attorneys.

In employing a patent attorney or agent, the inventor

executes a power of attorney or authorization of agent which

must be filed in the Patent and Trademark Office and is usually

a part of the application papers. When an attorney has been

appointed, the Office does not communicate with the inventor

directly but conducts the correspondence with the attorney

since he/she is acting for the inventor thereafter, although

the inventor is free to contact the Patent and Trademark Office

concerning the status of his/her application. The inventor may

remove the attorney or agent by revoking the power of

authorization.

The Patent and Trademark Office has the power to disbar,

or suspend from practicing before it, persons guilty of gross

misconduct, etc., but this can only be done after a full

hearing with the presentation of clear and convincing evidence

concerning the misconduct. The Patent and Trademark Office will

receive and, in appropriate cases, act upon complaints against

attorneys and agents. The fees charged to inventors by patent

attorneys and agents for their professional services are not

subject to regulation by the Patent and Trademark Office.

Definite evidence of overcharging may afford basis for Patent

and Trademark Office action, but the Office rarely intervenes

in disputes concerning fees.

DISCLOSURE DOCUMENT

One of the services provided for inventors is the

acceptance and preservation for a two-year period of papers

disclosing an invention. This disclosure is accepted as

evidence of the dates of conception of the invention.

It will be retained for two years at which time it will be

destroyed unless it is referred to in a separate letter in a

related patent application.

A fee must accompany the disclosure. See current fee

schedule. The disclosure is limited to written matter or

drawings on paper or other thin, flexible material, such as

linen or plastic drafting material, having dimensions or being

folded to dimensions not to exceed 8-1/2 x 13 inches (21.6 by

33.0 cm). Photographs are acceptable. Each page should be

numbered. Text and drawings should be of such quality as to

permit reproduction.

The disclosure must be accompanied by a stamped,

self-addressed envelope and a duplicate copy also signed by the

inventor. The papers will be stamped with an identifying number

and returned with the reminder that the Disclosure Document may

be relied upon only as evidence of the date of conception and

that an application must be filed in order to provide patent

protection.

WHO MAY APPLY FOR A PATENT

According to the law, only the inventor may apply for a

patent, with certain exceptions. If a person who is not the

inventor should apply for a patent, the patent, if it were

obtained, would be invalid. The person applying in such a case

who falsely states that he/she is the inventor would also be

subject to criminal penalties. If the inventor is dead, the

application may be made by legal representatives, that is, the

administrator or executor of the estate. If the inventor is

insane, the application for patent may be made by a guardian.

If an inventor refuses to apply for a patent or cannot be

found, a joint inventor or a person having a proprietary

interest in the invention may apply on behalf of the missing

inventor.

If two or more persons make an invention jointly, they

apply for a patent as joint inventors. A person who makes a

financial contribution is not a joint inventor and cannot be

joined in the application as an inventor. It is possible to

correct an innocent mistake in erroneously omitting an inventor

or erroneously naming a person as an inventor.

Officers and employees of the Patent and Trademark Office

are prohibited by law from applying for a patent or acquiring,

directly or indirectly, except by inheritance or bequest, any

patent or any right or interest in any patent.

APPLICATION FOR PATENT

An application for a patent is made to the Commissioner of

Patents and Trademarks and includes:

(1) A written document which comprises a specification

(description and claims), and an oath or declaration;

(2) A drawing in those cases in which a drawing is necessary;

(3) The filing fee. See fee schedule.

The specification and oath or declaration must be legibly

written or printed in permanent ink on one side of the paper.

The Office prefers typewriting on letter or legal size 8 to 8

1/2 by 10 1/2 to 13 inches, (20.3 to 21.6 by 26.7 to 33.0 cm) 1

1/2 or double spaced with margins of 1 inch (2.54 cm) on the

left-hand side and at the top. If the papers filed are not

correctly, legibly, and clearly written, the Patent and

Trademark Office may require typewritten or printed papers.

The application for patent is not forwarded for

examination until all its required parts, complying with the

rules relating thereto, are received. If the papers and parts

are incomplete, or so defective that they cannot be accepted as

a complete application for examination, the applicant will be

notified about the deficiencies and be given a time period in

which to remedy them. A surcharge may be required. If the

applicant does not respond within the prescribed time period.

The application will be returned or otherwise disposed of. The

filing fee may be refunded when an application is refused

acceptance as incomplete; however, a handling fee will be

charged.

It is desirable that all parts of the complete application

be deposited in the Office together; otherwise each part must

be signed and a letter must accompany each part, accurately and

clearly connecting it with the other parts of the application.

All applications are numbered in serial order, and the

applicant is informed of the serial number and filing date of

the application by a filing receipt. The filing date of the

application is the date on which the names of the inventors, a

specification (including claims) and any required drawings are

received in the Patent and Trademark Office; or the date on

which the last part completing the application are received in

the case of a previously incomplete or defective application.

Oath or Declaration, Signature

The oath or declaration of the applicant is required by

law. The inventor must make an oath or declaration that he she

believes himself herself to be the original and first inventor

of the subject matter of the application, and he she must make

various other allegations required by law and various

allegations required by the Patent and Trademark Office rules.

The oath must be sworn to by the inventor before a notary

public or other officer authorized to administer oaths. A

declaration may be used in lieu of an oath as part of the

original application for a patent involving designs, plants,

and other patentable inventions; for reissue patents; when

claiming matter originally shown or described but not

originally claimed; or when filing a divisional or continuing

application. A declaration does not need to be notarized.

The application, oath or declaration must be signed by the

inventor in person, or by the person entitled by law to make

application on the inventor's behalf. A full first or middle

name of each inventor without abbreviation and a middle or

first initial, if any, is required. The postoffice address of

the inventor is also required.

Blank forms for applications or certain other papers are

not supplied by the Patent and Trademark Office.

The papers in a complete application will not be returned

for any purpose whatever, nor will the filing fee be returned.

If applicants have not preserved copies of the papers, the

Office will furnish copies for a fee.

Filing Fees*

The filing fee of an application, except in design and

plant cases, consists of a basic fee and additional fees. The

basic fee entitles applicant to present twenty (20) claims,

including not more than three (3) in independent form. An

additional fee is required for each claim in independent form

which is in excess of three (3) and an additional fee is

required for each claim (whether independent or dependent)

which is in excess of a total of twenty (20) claims. If the

application contains multiple dependent claims, additional fees

are required.

If the owner of the invention is a small entity, (an

independent inventor, a small business concern or a non-profit

organization), the filing fees are reduced by half if the small

entity files a verified statement. Copies of sample

verification statements are enclosed.

To avoid errors in the payment of fees it is suggested

that the table in the enclosed patent application transmittal

letter be utilized to calculate the fee payment.

In calculating fees, a claim is in singularly dependent

form if it incorporates by reference a single preceding claim

which may be an independent or a dependent claim. A multiple

dependent claim or any claim depending therefrom shall be

considered as separate dependent claims in accordance with the

number of claims to which reference is made.

The law also provides for the payment of additional fees

on presentation of additional claims after the application is

filed.

When an amendment is filed which presents additional

claims over the total number already paid for, or additional

independent claims over the number of independent claims

already accounted for, it must be accompanied by any additional

fees due.

* Please Note: The fees are current as of the revision date.

Fees are subject to change in October each year therefore

they should be verified before submission to the PTO. A

fee schedule may be obtained by writing 16 Commissioner of

Patents, Washington, D.C. 20231 -- Attention Public Service

Branch.

SPECIFICATION (DESCRIPTION AND CLAIMS)

The specification must include a written description of

the invention and of the manner and process of making and using

it, and is required to be in such full, clear, concise, and

exact terms as to enable any person skilled in the

technological area to which the invention pertains, or with

which it is most nearly connected, to make and use the same.

The specification must set forth the precise invention for

which a patent is solicited, in such manner as to distinguish

it from other inventions and from what is old. It must describe

completely a specific embodiment of the process, machine,

manufacture, composition of matter or improvement invented, and

must explain the mode of operation or principle whenever

applicable. The best mode contemplated by the inventor of

carrying out his invention must be set forth.

In the case of an improvement, the specification must

particularly point out the part or parts of the process,

machine, manufacture, or composition of matter to which the

improvement relates, and the description should be confined to

the specific improvement and to such parts as necessarily

cooperate with it or as may be necessary to a complete

understanding or description of it.

The title of the invention, which should be as short and

specific as possible, should appear as a heading on the first

page of the specification, if it does not otherwise appear at

the beginning of the application.

A brief abstract of the technical disclosure in the

specification must be set forth in a separate page immediately

following the claims in a separate paragraph under the heading

"Abstract of the Disclosure."

A brief summary of the invention indicating its nature and

substance, which may include a statement of the object of the

invention, commensurate with the invention as claimed and any

object recited should precede the detailed description. Such

summary should be that of the invention as claimed.

When there are drawings, there shall be a brief

description of the several views of the drawings, and the

detailed description of the invention shall refer to the

different views by specifying the numbers of the figures, and

to the different parts by use of reference numerals.

The specification must conclude with one or more claims

particularly pointing out and distinctly claiming the subject

matter which the applicant regards as the invention.

The claims are brief descriptions of the subject matter of

the invention, eliminating unnecessary details and reciting all

essential features necessary to distinguish the invention from

what is old. The claims are the operative part of the patent.

Novelty and patentability are judged by the claims,' and, when

a patent is granted, questions of infringement are judged by

the courts on the basis of the claims.

When more than one claim is presented, they may be placed

in dependent form in which a claim may refer back to and

further restrict one or more preceding claims.

A claim in multiple dependent form shall contain a

reference, in the alternative only, to more than one claim

previously set forth and then specify a further limitation of

the subject matter claimed. A multiple dependent claim shall

not serve as a basis for any other multiple dependent claim. A

multiple dependent claim shall be construed to incorporate by

reference all the limitations of the particular claim in

relation to which it is being considered.

The claim or claims must conform to the invention as set

forth in the remainder of the specification and the terms and

phrases used in the claims must find clear support or

antecedent basis in the description so that the meaning of the

terms in the claims may be ascertainable by reference to the

description.

The following order of arrangement should be observed in

framing the specification:

(a) Title of the invention.

(b) Cross-references to related applications, if any.

(c) Brief summary of the invention.

(d) Brief description of the several views of the drawing, if

there are drawings.

(e) Detailed Description.

(f) Claim or claims.

(g) Abstract of the disclosure.

DRAWING

The applicant for a patent will be required by law to

furnish a drawing of the invention whenever the nature of the

case requires a drawing to understand the invention. However,

the Commissioner may require a drawing where the nature of the

subject matter admits of it; this drawing must be filed with

the application. This includes practically all inventions

except compositions of matter or processes, but a drawing may

also be useful in the case of many processes.

The drawing must show every feature of the invention

specified in the claims and is required by the Office rules to

be in a particular form. The Office specifies the size of the

sheet on which the drawing is made, the type of paper, the

margins, and other details relating to the making of the

drawing. The reason for specifying the standards in detail is

that the drawings are printed and published in a uniform style

when the patent issues, and the drawings must also be such that

they can be readily understood by persons using the patent

descriptions.

No names or other identification will be permitted within

the "sight" of the drawing, and applicants are expected to use

the space above and between the hole locations to identify each

sheet of drawings. This identification may consist of the

attorney's name and docket number or the inventor's name and

case number and may include the sheet number and the total

number of sheets filed (for example, "sheet 2 of 4"). The

following rule, reproduced from title 37 of the Code of Federal

Regulations, relates to the standards for drawings:

1.84 Standards for drawings.

(a) Paper and ink. Drawings must be made upon paper which is

flexible, strong, white, smooth, non-shiny and durable.

India ink, or its equivalent in quality, is preferred for

pen drawings to secure perfectly black solid lines. The

use of white pigment to cover lines is not normally

acceptable.

(b) Size of sheet and margins. The size of the sheets on which

drawings are made may either be exactly 81/2 by 14 inches

(21.6 by 35.6 cm.) or exactly 21.0 by 29.7 cm. (DIN size

A4). All drawing sheets in a particular application must

be the same size. One of the shorter sides of the sheet is

regarded as its top.

(1) On 81/2 by 14 inch drawing sheets, the drawings must

include a top margin of 2 inches (5.1 cm.) and bottom and

side margins of 1/4 inch (6.4 mm.) from the edges, thereby

leaving a "sight" precisely 8 by 113/4 inches (20.3 by

29.8 cm.). Margin border lines are not permitted. All work

must be included within the "sight". The sheets may be

provided with two 1/4 inch (6.4 mm.) diameter holes having

their centerlines spaced 11/16 inch (17.5 mm.) below the

top edge and 23/4 inches (7.0 cm.) apart, said holes being

equally spaced from the respective side edges.

(2) On 21.0 by 29.7 cm. drawing sheets, the drawing must

include a top margin of at least 2.5 cm., a left side

margin of 2.5 cm., a right side margin of 1.5 cm., and a

bottom margin of 1.0 cm. Margin border lines are not

permitted. All work must be contained within a sight size

not to exceed 17 by 26.2 cm.

(c) Character of lines. All drawings must be made with

drafting instruments or by a process which will give them

satisfactory reproduction characteristics. Every line and

letter must be durable, black, sufficiently dense and

dark, uniformly thick and well defined; the weight of all

lines and letters must be heavy enough to permit adequate

reproduction. This direction applies to all lines however

fine, to shading, and to lines representing cut surfaces

in sectional views. All lines must be clean, sharp, and

solid. Fine or crowded lines should be avoided. Solid

black should not be used for sectional or surface shading.

Freehand work should be avoided wherever it is possible to

do so.

(d) Hatching and shading. (1) Hatching should be made by

oblique parallel lines spaced sufficiently apart to enable

the lines to be distinguished without difficulty. (2)

Heavy lines on the shade side of objects should preferably

be used except where they tend to thicken the work and

obscure reference characters. The light should come from

the upper left-hand corner at an angle of 45 degrees.

Surface delineations should preferably be shown by proper

shading, which should be open.

(e) Scale. The scale to which a drawing is made ought to be

large enough to show the mechanism without crowding when

the drawing is reduced in size to two-thirds in

reproduction, and views of portions of the mechanism on a

larger scale should be used when necessary to show details

clearly; two or more sheets should be used if one does not

give sufficient room to accomplish this end, but the

number of sheets should not be more than is necessary.

(f) Reference characters. The different views should be

consecutively numbered figures. Reference numerals (and

letters, but numerals are preferred) must be plain,

legible and carefully formed, and not be encircled. They

should, if possible, measure at least one-eighth of an

inch (3.2 mm.) in height so that they may bear reduction

to one twenty-fourth of an inch (1.1 mm.); and they may be

slightly larger when there is sufficient room. They should

not be so placed in the close and complex parts of the

drawing as to interfere with a thorough comprehension of

the same, and therefore should rarely cross or mingle with

the lines. When necessarily grouped around a certain part,

they should be placed at a little distance, at the closest

point where there is available space, and connected by

lines with the parts to which they refer. They should not

be placed upon hatched or shaded surfaces but when

necessary, a blank space may be left in the hatching or

shading where the character occurs so that it shall appear

perfectly distinct and separate from the work. The same

part of an invention appearing in more than one view of

the drawing must always be designated by the same

character, and the same character must never be used to

designate different parts. Reference signs not mentioned

in the description shall not appear in the drawing, and

vice versa.

(g) Symbols, legends. Graphical drawing symbols and other

labeled and labeled representation are used must be

adequately identified in the specification. While

descriptive matter on drawings is not permitted, suitable

legends may be used, or may be required in proper cases,

as in diagrammatic views and flow sheets or to show

materials or where labeled representations are employed to

illustrate conventional elements. Arrows may be required,

in proper cases, to show direction of movement. The

lettering should be as large as, or larger than, the

reference characters.

(h) [Reserved]

(i) Views. The drawing must contain as many figures as may be

necessary to show the invention; the figures should be

consecutively numbered if possible in the order in which

they appear. The figures may be plain, elevation, section,

or perspective views, and detail views of portions of

elements, on a larger scale if necessary, may also be

used. Exploded views, with the separated parts of the same

figure embraced by a bracket, to show the relationship or

order of assembly of various parts are permissible. When

necessary, a view of a large machine or device in its

entirety, may be broken and extended over several sheets

if there is no loss in facility of understanding the view.

Where figures on two or more sheets form in effect a

single complete figure, the figures on the several sheets

should be so arranged that the complete figure can be

understood by laying the drawing sheets adjacent to one

another. The arrangement should be such that no part of

any of the figures appearing on the various sheets are

concealed and that the complete figure can be understood

even though spaces will occur in the complete figure

because of the margins on the drawing sheets. The plane

upon which a sectional view is taken should be indicated

on the general view by a broken line, the ends of which

should be designated by numerals corresponding to the

figure number of the sectional view and have arrows

applied to indicate the direction in which the view is

taken. A moved position may be shown by a broken line

superimposed upon a suitable figure if this can be done

without crowding, otherwise a separate figure must be used

for this purpose. Modified forms of construction can only

be shown in separate figures. Views should not be

connected by projection lines nor should center lines be

used.

(j) Arrangement of views. All views on the same sheet should

stand in the same direction and, if possible, stand so

that they can be read with the sheet held in an upright

position. If views longer than the width of the sheet are

necessary for the clearest illustration of the invention,

the sheet may be turned on its side so that the top of the

sheet with the appropriate top margin is on the right-hand

side. One figure must not be placed upon another or within

the outline of another.

(k) Figure for Official Gazette. The drawing should, as far as

possible, be so planned that one of the views will be

suitable for publication in the Official Gazette as the

illustration of the invention.

(l) Extraneous matter. Identifying indicia (such as the

attorney's docket number, inventor's name, number of

sheets, etc.) not to exceed 2 3/4 inches (7.0 cm.) in width

may be placed in a centered location between the side

edges within three-fourths inch (19.1 mm.) of the top

edge. Authorized security markings may be placed on the

drawings provided they are outside the illustrations and

are removed when the material is declassified. Other

extraneous matter will not be permitted upon the face of a

drawing.

(m) Transmission of drawings. Drawings transmitted to the

Office should be sent flat, protected by a sheet of heavy

binder's board, or may be rolled for transmission in a

suitable mailing tube; but must never be folded. If

received creased or mutilated, new drawings will be

required. (See 1.152 for design drawing, 1.165 for plant

drawings, and 1.174 for reissue drawings.)

The requirements relating to drawings are strictly

enforced, but a drawing not complying with all of the

regulations may be accepted for purpose of examination, and

correction or a new drawing will be required later.

Applicants are advised to employ competent draftsmen to

make their drawings.

MODELS, EXHIBITS, SPECIMENS

Models are not required in most patent applications since

the description of the invention in the specification and the

drawings must be sufficiently full and complete and capable of

being understood to disclose the invention without the aid of a

model. A model will not be admitted unless specifically

requested by the examiner.

A working model, or other physical exhibit, may be

required by the Office if deemed necessary. This is not done

very often. A working model may be requested in the case of

applications for patent for alleged perpetual motion devices.

When the invention relates to a composition of matter, the

applicant may be required to furnish specimens of the

composition, or of its ingredients or intermediates, for

inspection or experiment. If the invention is a microbiological

invention, a deposit of the micro-organism involved is

required.

EXAMINATION OF APPLICATIONS AND PROCEEDINGS IN THE PATENT AND

TRADEMARK OFFICE

Applications filed in the Patent and Trademark Office and

accepted as complete applications are assigned for examination

to the respective examining groups having charge of the areas

of technology related to the invention. In the examining group,

applications are taken up for examination by the examiner to

whom they have been assigned in the order in which they have

been filed or in accordance with examining procedures

established by the Commissioner.

Applications will not be advanced out of turn for

examination or for further action except as provided by the

rules, or upon order of the Commissioner to expedite the

business of the Office, or upon a verified showing which, in

the opinion of the Commissioner, will justify advancing them.

The examination of the application consists of a study of

the application for compliance with the legal requirements and

a search through United States patents, prior foreign patent

documents which are available in the Patent and Trademark

Office, and available literature, to see if the claimed

invention is new and unobvious. A decision is reached by the

examiner in the light of the study and the result of the

search.

Office Action

The applicant is notified in writing of the examiner's

decision by an "action" which is normally mailed to the

attorney or agent. The reasons for any adverse action or any

objection or requirement are stated in the action and such

information or references are given as may be useful in aiding

the applicant to judge the propriety of continuing the

prosecution of his application.

If the invention is not considered patentable subject

matter, the claims will be rejected. If the examiner finds that

the invention is not new, the claims will be rejected, but the

claims may also be rejected if they differ only in an obvious

manner from what is found. It is not uncommon for some or all

of the claims to be rejected on the first action by the

examiner; relatively few applications are allowed as filed.

Applicant's Response

The applicant must request reconsideration in writing, and

must distinctly and specifically point out the supposed errors

in the examiner's action. The applicant must respond to every

ground of objection and rejection in the prior Office action

(except that a request may be made that objections or

requirements as to form not necessary to further consideration

of the claims be held in abeyance until allowable subject

matter is indicated), and the applicant's action must appear

throughout to be a bona fide attempt to advance the case to

final action. The mere allegation that the examiner has erred

will not be received as a proper reason for such

reconsideration.

In amending an application in response to a rejection, the

applicant must clearly point out why he/she thinks the amended

claims are patentable in view of the state of the art disclosed

by the prior references cited or the objections made. He/she

must also show how the claims as amended avoid such references

or objections.

After response by applicant the application will be

reconsidered, and the applicant will be notified if claims are

rejected, or objections or requirements made, in the same

manner as after the first examination. The second Office action

usually will be made final.

Final Rejection

On the second or later consideration, the rejection or

other action may be made final. The applicant's response is

then limited to appeal in the case of rejection of any claim

and further amendment is restricted. Petition may be taken to

the Commissioner in the case of objections or requirements not

involved in the rejection of any claim. Response to a final

rejection or action must include cancellation of, or appeal

from the rejection of, each claim so rejected and, if any claim

stands allowed, compliance with any requirement or objection as

to form.

In making such final rejection, the examiner repeats or

states all grounds of rejection then considered applicable to

the claims in the application.

Interviews with examiners may be arranged, but an

interview does not remove the necessity for response to Office

actions within the required time, and the action of the Office

is based solely on the written record.

If two or more inventions are claimed in a single

application, and are regarded by the Office to be of such a

nature that a single patent should not be issued for both of

them, the applicant will be required to limit the application

to one of the inventions. The other invention may be made the

subject of a separate application which, if filed while the

first application is still pending, will be entitled to the

benefit of the filing date of the first application. A

requirement to restrict the application to one invention may be

made before further action by the examiner.

As a result of the examination by the Office, patents are

granted in the case of about two out of every three

applications for patents which are filed.

AMENDMENTS TO APPLICATION

Following are some details concerning amendments to the

application:

The applicant may amend before or after the first

examination and action as specified in the rules, or when and

as specifically required by the examiner.

After final rejection or action amendments may he made

canceling claims or complying with any requirement of form

which has been made but the admission of any such amendment or

its refusal, and any proceedings relative thereto, shall not

operate to relieve the application from its condition as

subject to appeal or to save it from abandonment.

If amendments touching the merits of the application are

presented after final rejection, or after appeal has been

taken, or when such amendment might not otherwise be proper,

they may be admitted upon a showing of good and sufficient

reasons why they are necessary and were not earlier presented.

No amendment can be made as a matter of right in appealed

cases. After decision on appeal, amendments can only be made as

provided in the rules.

The specifications, claims, and drawing must be amended

and revised when required, to correct inaccuracies of

description and definition of unnecessary words, and to secure

correspondence between the claims, the description, and the

drawing.

All amendments of the drawings or specifications, and all

additions thereto, must conform to at least one of them as it

was at the time of the filing of the application. Matter not

found in either, involving a departure from or an addition to

the original disclosure, cannot be added to the application

even though supported by a supplemental oath or declaration,

and can be shown or claimed only in a separate application.

The claims may be amended by canceling particular claims,

by presenting new claims, or by amending the language of

particular claims (such amended claims being in effect new

claims). In presenting new or amended claims, the applicant

must point out how they avoid any reference or ground rejection

of record which may be pertinent.

Erasures, additions, insertions, or alterations of the

papers and records must not be made by the applicant.

Amendments are made by filing a paper, directing or requesting

that specified changes or additions be made. The exact word or

words to be stricken out or inserted in the application must be

specified and the precise point indicated where the deletion or

insertion is to be made.

Amendments are "entered" by the Office by making the

proposed deletions by drawing a line in red ink through the

word or words canceled and by making the proposed substitutions

or insertions in red ink, small insertions being written in at

the designated place and larger insertions being indicated by

reference.

No change in the drawing may be made except by permission

of the Office. Changes in the construction shown in any drawing

may be made only by submitting new drawings. A sketch in

permanent ink showing proposed changes, to become part of the

record, must be filed for approval by the Office before the new

drawings are filed. The paper requesting amendments to the

drawing should be separate from other papers.

If the number or nature of the amendments render it

difficult to consider the case, or to arrange the papers' for

printing or copying, the examiner may require the entire

specification or claims, or any part thereof, to be rewritten.

The original numbering of the claims must be preserved

throughout the prosecution. When claims are canceled, the

remaining claims must not be renumbered. When claims are added

by amendment or substituted for canceled claims, They must be

numbered by the applicant consecutively beginning with the

number next following the highest numbered claim previously

presented. When the application is ready for allowance, the

examiner, if necessary, will renumber the claims consecutively

in the order in which they appear or in such order as may have

been requested by applicant.

TIME FOR RESPONSE AND ABANDONMENT

The response of an applicant to an action by the Office

must be made within a prescribed time limit. The maximum period

for response is set at 6 months by the statute which also

provides that the Commissioner may shorten the time for reply

to not less than 30 days. The usual period for response to an

Office action is 3 months. A shortened time for reply may be

extended up to the maximum 6 months period. An extension of

time fee is normally required to be paid if the response period

is extended. The amount of the fee is dependent upon the length

of the extension. If no reply is received within the time

period, the application is considered as abandoned and no

longer pending. However, if it can be shown that the failure to

prosecute was unavoidable or unintentional, the application may

be revived by the Commissioner. The revival requires a petition

to the Commissioner, and a fee for the petition, which should

be filed without delay. The proper response must also accompany

the petition if it has not yet been filed.

APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES AND TO

THE COURTS

If the examiner persists in the rejection of any of the

claims in an application, or if the rejection has been made

final, the applicant may appeal to the Board of Patent Appeals

and Interferences in the Patent and Trademark Office. The Board

of Patent Appeals and Interferences consists of the

Commissioner of Patents and Trademarks, the Deputy

Commissioner, the Assistant Commissioners, and the

examiners-in-chief, but normally each appeal is heard by only

three members. An appeal fee is required and the applicant must

file a brief to support his/her position. An oral hearing will

be held if requested upon payment of the specified fee.

As an alternative to appeal, in situations where an

applicant desires consideration of different claims or further

evidence, a new continuation application is often filed. The

new application requires a filing fee and should submit the

claims and evidence for which consideration is desired. If it

is filed before expiration of the period for appeal and

specific reference is made therein to the earlier application,

applicant will be entitled to the earlier filing date for

subject matter common to both applications.

If the decision of the Board of Patent Appeals and

Interferences is still adverse to the applicant, an appeal may

be taken to the Court of Appeals for the Federal Circuit or a

civil action may be filed against the Commissioner in the

United States District court for the District of Columbia. The

Court of Appeals for the Federal Circuit will review the record

made in the Office and may affirm or reverse the office's

action. In a civil action, the applicant may present testimony

in the court, and the court will make a decision.

INTERFERENCES

Occasionally two or more applications are filed by

different inventors claiming substantially the same patentable

invention. The patent can only be granted to one of them, and a

proceeding known as an "interference" is instituted by the

Office to determine who is the first inventor and entitled to

the patent. About 1 percent of the applications filed become

involved in an interference proceeding. Interference

proceedings may also be instituted between an application and a

patent already issued, provided the patent has not been issued

for more than one year prior to the filing of the conflicting

application, and provided that the conflicting application is

not barred from being patentable for some other reason.

Each party to such a proceeding must submit evidence of

facts proving when the invention was made. In view of the

necessity of proving the various facts and circumstances

concerning the making of the invention during an interference,

inventors must be able to produce evidence to do this. If no

evidence is submitted a party is restricted to the date of

filing the application as his earliest date. The priority

question is determined by a board of three Examiners-in-Chief

on the evidence submitted. From the decision of the Board of

Patent Appeals and Interferences, the losing party may appeal

to the Court of Appeals for the Federal Circuit or file a civil

action against the winning party in the appropriate United

States district court.

The terms "conception of the invention" and "reduction to

practice" are encountered in connection with priority

questions. Conception of the invention refers to the completion

of the devising of the means for accomplishing the result.

Reduction to practice refers to the actual construction of the

invention in physical form; in the case of a machine it

includes the actual building of the machine, in the case of an

article or composition it includes the actual making of the

article or composition, in the case of a process it includes

the actual carrying out of the steps of the process; and actual

operation, demonstration, or testing for the intended use is

also usually necessary. The filing of a regular application for

patent completely disclosing the invention is treated as

equivalent to reduction to practice. The inventor who proves to

be the first to conceive the invention and the first to reduce

it to practice will be held to be the prior inventor, but more

complicated situations cannot be stated this simply.

ALLOWANCE AND ISSUE OF PATENT

If, on examination of the application, or at a later stage

during the reconsideration of the application, the patent

application is found to be allowable, a notice of allowance

will be sent to the applicant, or to applicant's attorney or

agent, and a fee for issuing the patent is due within three

months from the date of the notice.

The issue fee is due within three months after a written

notice of allowance is mailed to the applicant. If timely

payment is not made the application will be regarded as

abandoned. See current fee schedule.

A provision is made in the statute whereby the

Commissioner may accept the fee late, on a showing of

unavoidable delay. When the issue fee is paid, the patent

issues as soon as possible after the date of payment, dependent

upon the volume of printing on hand. The patent grant then is

delivered or mailed on the day of its grant, or as soon

thereafter as possible, to the inventor's attorney or agent if

there is one of record, otherwise directly to the inventor. On

the date of the grant, the patent file becomes open to the

public. Printed copies of the specification and drawing are

available on the same date.

In case the publication of an invention by the granting of

a patent would be detrimental to the national defense, the

patent law gives the Commissioner the power to withhold the

grant of the patent and to order the invention kept secret for

such period of time as the national interest requires.

NATURE OF PATENT AND PATENT RIGHTS

The patent is issued in the name of the United States

under the seal of the Patent and Trademark Office, and is

either signed by the Commissioner of Patents and Trademarks or

has his name written thereon and attested by an Office

official. The patent contains a grant to the patentee and a

printed copy of the specification and drawing is annexed to the

patent and forms a part of it. The grant confers "the right to

exclude others from making, using or selling the invention

throughout the United States" and its territories and

possessions for the term of 17 years subject to the payment of

maintenance fees as provided by law.

The exact nature of the right conferred must be carefully

distinguished, and the key is in the words "right to exclude"

in the phrase just quoted. The patent does not grant the right

to make, use, or sell the invention but only grants the

exclusive nature of the right. Any person is ordinarily free to

make, use, or sell anything he pleases, and a grant from the

Government is not necessary. The patent only grants the right

to exclude others from making, using, or selling the invention.

Since the patent does not grant the right to make, use, or sell

the invention, the patentee's own right to do so is dependent

upon the rights of others and whatever general laws might be

applicable. A patentee, merely because he or she has received a

patent for an invention, is not thereby authorized to make, use

or sell the invention if doing so would violate any law. An

inventor of a new automobile who has obtained a patent thereon

would not be entitled to use the patented automobile in

violation of the laws of a State requiring a license, nor may a

patentee sell an article the sale of which may be forbidden by

a law, merely because a patent has been obtained. Neither may a

patentee make, use or sell his/her own invention if doing so

would infringe the prior rights of others. A patentee may not

violate the Federal antitrust laws, such as by resale price

agreements or entering into combination in restraints of trade,

or the pure food and drug laws, by virtue of having a patent.

Ordinarily there is nothing which prohibits a patentee from

making, using, or selling his/her own invention, unless he/she

thereby infringes another's patent which is still in force.

Since the essence of the right granted by a patent is the

right to exclude others from commercial exploitation of the

invention, the patentee is the only one who may make, use, or

sell the invention. Others may not do so without authorization

from the patentee. The patentee may manufacture and sell the

invention or may. license, that is, give authorization to

others to do so.

The term of a patent is 17 years. A maintenance fee is due

3 1/2, 7 1/2 and 11 1/2 years after the original grant for all

patents issuing from the applications filed on and after

December 12, 1980. The maintenance fee must be paid at the

stipulated times to maintain the patent in force. After the

patent has expired anyone may make, use, or sell the invention

without permission of the patentee, provided that matter

covered by other unexpired patents is not used. The terms may

not be extended except by special act of Congress except for

certain pharmaceuticals.

MAINTENANCE FEES

All utility patents which issue from applications filed on

and after December 12, 1980 are subject to the payment of

maintenance fees which must be paid to maintain the patent in

force. These fees are due at 3 1/2, 7 1/2 and 11 1/2 years from

the date the patent is granted and can be paid without a

surcharge during the "window-period" which is the six month

period preceding each due date, e.g., 3 years to 3 years and

six months, etc. See fee schedule for a list of maintenance

fees.

Failure to pay the current maintenance fee on time may

result in expiration of the patent. A six month grace period is

provided when the maintenance fee may be paid with a surcharge.

The grace period is the six month period immediately following

the due date. The Patent and Trademark Office does not mail

notices to patent owners that maintenance fees are due. If,

however, the maintenance fee is not paid on time, efforts are

made to remind the responsible party that the maintenance fee

may be paid during the grace period with a surcharge.

Patents relating to some pharmaceutical inventions may be

extended by the Commissioner for up to five years to compensate

for marketing delays due to Federal premarketing regulatory

procedures. Patents relating to all other types of inventions

can only be extended by enactment of special Federal

legislation.

CORRECTION OF PATENTS

Once the patent is granted, it is outside the jurisdiction

of the Patent and Trademark Office except in a few respects.

The Office may issue without charge a certificate

correcting a clerical error it has made in the patent when the

printed patent does not correspond to the record in the Office.

These are mostly corrections of typographical errors made in

printing.

Some minor errors of a typographical nature made by the

applicant may be corrected by a certificate of correction for

which a charge is made.

The patentee may disclaim one or more claims of this

patent by filing in the Office a disclaimer as provided by the

statute.

When the patent is defective in certain respects, the law

provides that the patentee may apply for a reissue patent. This

is a patent granted to replace the original and is granted only

for the balance of the unexpired term. However, the nature of

the changes that can be made by means of the reissue are rather

limited; new matter cannot be added.

Any person may file a request for reexamination of a

patent, along with the required fee, on the basis of prior art

consisting of patents or printed publications. At the

conclusion of the reexamination proceedings, a certificate

setting forth the results of the reexamination proceeding is

issued.

ASSIGNMENTS AND LICENSES

A patent is personal property and may be sold to others or

mortgaged; it may be bequeathed by a will, and it may pass to

the heirs of deceased patentee. The patent law provides for the

transfer or sale of a patent, or of an application for patent,

by an instrument in writing. Such an instrument is referred to

as an assignment and may transfer the entire interest in the

patent. The assignee, when the patent is assigned to him or

her, becomes the owner of the patent and has the same rights

that the original patentee had.

The statute also provides for the assignment of a part

interest, that is, a half interest, a fourth interest, etc., in

a patent. There may also be a grant which conveys the same

character of interest as an assignment but only for a

particularly specified part of the United States.

A mortgage of patent property passes ownership thereof to

the mortgagee or lender until the mortgage has been satisfied

and a retransfer from the mortgagee back to the mortgagor, the

borrower, is made. A conditional assignment also passes

ownership of the patent and is regarded as absolute until

canceled by the parties or by the decree of a competent court.

An assignment, grant, or conveyance of any patent or

application for patent should be acknowledged before a notary

public or officer authorized to administer oaths or perform

notarial acts. The certificate of such acknowledgment

constitutes prima facie evidence of the execution of the

assignment, grant, or conveyance.

Recording of Assignments

The Office records assignments, grants, and similar

instruments sent to it for recording, and the recording serves

as notice. If an assignment, grant, or conveyance of a patent

or an interest in a patent (or an application for patent) is

not recorded in the Office within three months from its date,

it is void against a subsequent purchaser for a valuable

consideration without notice, unless it is recorded prior to

the subsequent purchase.

An instrument relating to a patent should identify the

patent by number and date (the name of the inventor and title

of the invention as stated in the patent should also be given).

An instrument relating to an application should identify the

application by its serial number and date of filing, and the

name of the inventor and title of the invention as stated in

the application should also be given. Sometimes an assignment

of an application is executed at the same time that the

application is prepared and before it has been filed in the

Office. Such assignment should adequately identify the

application, as by its date of execution and name of the

inventor and title of the invention, so that there can be no

mistake as to the application intended.

If an application has been assigned and the assignment is

recorded, on or before the date the issue fee is paid, the

patent will be issued to the assignee as owner. If the

assignment is of a part interest only, the patent will be

issued to the inventor and assignee as joint owners.

Joint Ownership

Patents may be owned jointly by two or more persons as in

the case of a patent granted to joint inventors, or in the case

of the assignment of a part interest in a patent. Any joint

owner of a patent, no matter how small the part interest, may

make, use, and sell the invention for his or her own profit,

without regard to the other owner, and may sell the interest or

any part of it, or grant licenses to others, without regard to

the other joint owner, unless the joint owners have made a

contract governing their relation to each other. It is

accordingly dangerous to assign a part interest without a

definite agreement between the parties as to the extent of

their respective rights and their obligations to each other if

the above result is to be avoided.

The owner of a patent may grant licenses to others. Since

the patentee has the right to exclude others from making, using

or selling the invention, no one else may do any of these

things without his permission. A license is the permission

granted by the patent owner to another to make, use, or sell

the invention. No particular form of license is required; a

license is a contract and may include whatever provisions the

parties agree upon, including the payment of royalties, etc.

The drawing up of a license agreement (as well as

assignments) is within the field of an attorney at law,

although such attorney should be familiar with patent matters

as well. A few States have prescribed certain formalities to be

observed in connection with the sale of patent rights.

INFRINGEMENT OF PATENTS

Infringement of a patent consists in the unauthorized

making, using, or selling of the patented invention within the

territory of the United States, during the term of the patent.

If a patent is infringed, the patentee may sue for relief in

the appropriate Federal court. The patentee may ask the court

for an injunction to prevent the continuation of the

infringement and may also ask the court for an award of damages

because of the infringement. In such an infringement suit, the

defendant may raise the question of the validity of the patent,

which is then decided by the court. The defendant may also aver

that what is being done does not constitute infringement.

Infringement is determined primarily by the language of the

claims of the patent and, if what the defendant is making does

not fall within the language of any of the claims of the

patent, there is no infringement.

Suits for infringement of patents follow the rules of

procedure of the Federal courts. From the decision of the

district court, there is an appeal to the Court of Appeals for

the Federal Circuit. The Supreme Court may thereafter take a

case by writ of certiorari. If the United States Government

infringes a patent, the patentee has a remedy for damages in

the United States Claims Court. The Government may use any

patented invention without permission of the patentee, but the

patentee is entitled to obtain compensation for the use by or

for the Government.

If the patentee notifies anyone that is infringing the

patent or threatens suit, the one charged with infringement may

start the suit in a Federal court.

The Office has no jurisdiction over questions relating to

infringement of patents. In examining applications for patent,

no determination is made as to whether the invention sought to

be patented infringes any prior patent. An improvement

invention may be patentable, but it might infringe a prior

unexpired patent for the invention improved upon, if there is

one.

PATENT MARKING AND "PATENT PENDING"

A patentee who makes or sells patented articles, or a

person who does so for or under the patentee is required to

mark the articles with the word "Patent" and the number of the

patent. The penalty for failure to mark is that the patentee

may not recover damages from an infringer unless the infringer

was duly notified of the infringement and continued to infringe

after the notice.

The marking of an article as patented when it is not in

fact patented is against the law and subjects the offender to a

penalty.

Some persons mark articles sold with the terms "Patent

Applied For" or "Patent Pending." These phrases have no legal

effect, but only give information that an application for

patent has been filed in the Patent and Trademark Office. The

protection afforded by a patent does not start until the actual

grant of the patent. False use of these phrases or their

equivalent is prohibited.

DESIGN PATENTS

The patent laws provide for the granting of design patents

to any person who has invented any new, original and ornamental

design for an article of manufacture. The design patent

protects only the appearance of an article, and not its

structure or utilitarian features. The proceedings relating to

granting of design patents are the same as those relating to

other patents with a few differences.

See current fee schedule for the filing fee for a design

application. A design patent has a term of 14 years, and no

fees are necessary to maintain a design patent in force. If on

examination it is determined that an applicant is entitled to a

design patent under the law, a notice of allowance will be sent

to the applicant or applicant's attorney, or agent, calling for

the payment of an issue fee.

The drawing of the design patent conforms to the same

rules as other drawings, but no reference characters are

required.

The specification of a design application is short and

ordinarily follows a set form. Only one claim is permitted,

following a set form.

PLANT PATENTS

The law also provides for the granting of a patent to

anyone who has invented or discovered and asexually reproduced

any distinct and new variety of plant, including cultivated

sports, mutants, hybrids, and newly found seedlings, other than

a tuber-propagated plant or a plant found in an uncultivated

state.

Asexually propagated plants are those that are reproduced

by means other than from seeds, such as by the rooting of

cuttings, by layering, budding, grafting, marching, etc.

With reference to tuber-propagated plants, for which a

plant patent cannot be obtained, the term "tuber" is used in

its narrow horticultural sense as meaning a short, thickened

portion of an underground branch. The only plants covered by

the term "tuber-propagated" are the Irish potato and the

Jerusalem artichoke.

An application for a plant patent consists of the same

parts as other applications. A plant patent has term of 17

years.

The application papers for a plant patent and any

responsive papers pursuant to the prosecution must be filed in

duplicate but only one need be signed (in the case of the

application papers the original should be signed); the second

copy may be a legible copy of the original. The reason for

providing an original and duplicate file is that the duplicate

file is sent to the Agricultural Research Service, Department

of Agriculture for an advisory report on the plant variety.

The specification should include a complete detailed

description of the plant and the characteristics thereof that

distinguish the same over related known varieties, and its

antecedents, expressed in botanical terms in the general form

followed in standard botanical text books or publications

dealing with the varieties of the kind of plant involved

(evergreen tree, dahlia plant, rose plant, apple tree, etc.),

rather than a mere broad nonbotanical characterization such as

commonly found in nursery or seed catalogs. The specification

should also include the origin or parentage of the plant

variety sought to be patented and must particularly point out

where and in what manner the variety of plant has been

asexually reproduced. Where color is a distinctive feature of

the plant the color should be positively identified in the

specification by reference to a designated color as given by a

recognized color dictionary. Where the plant variety originated

as a newly found seedling, the specification must fully

describe the conditions (cultivation, environment, etc.) under

which the seedling was found growing to establish that it was

not found in an uncultivated state.

A plant patent is granted on the entire plant. It

therefore follows that only one claim is necessary and only one

is permitted.

The oath or declaration required of the applicant in

addition to the statements required for other applications must

include the statement that the applicant has asexually

reproduced the new plant variety.

Plant patent drawings are not mechanical drawings and

should be artistically and competently executed. The drawing

must disclose all the distinctive characteristics of the plant

capable of visual representation. When color is a

distinguishing characteristic of the new variety, the drawing

must be in color. Two duplicate copies of color drawings must

be submitted. Color drawings may be made either in permanent

water color or oil, or in lieu thereof may be photographs made

by color photography or properly colored on sensitized paper.

The paper in any case must correspond in size, weight, and

quality to the paper required for other drawings. Mounted

photographs are acceptable.

Specimens of the plant variety, its flower or fruit,

should not be submitted unless specifically called for by the

examiner.

The filing fee on each plant application and the issue fee

can be found in the fee schedule. For a qualifying small entity

filing and issue fees are reduced by half.

All inquiries relating to plant patents and pending plant

patent applications should be directed to the Patent and

Trademark Office and not to the Department of Agriculture.

The Plant Variety Protection Act (Public Law 91-577),

approved December 24, 1970) provides for a system of protection

for sexually reproduced varieties. for which protection was not

previously provided, under the administration of a Plant

Variety Protection Office within the Department of Agriculture.

Requests for information regarding the protection of sexually

reproduced varieties should be addressed to Commissioner, Plant

Variety Protection Office, Agricultural Marketing Service,

National Agricultural Library Bldg., Room 500, 10301 Baltimore

Blvd., Beltsville, Md. 20705-2351.

TREATIES AND FOREIGN PATENTS

Since the rights granted by a United States patent extend

only throughout the territory of the United States and have no

effect in a foreign country, an inventor who wishes patent

protection in other countries must apply for a patent in each

of the other countries or in regional patent offices. Almost

every country has its own patent law, and a person desiring a

patent in a particular country must make an application for

patent in that country, in accordance with the requirements of

that country.

The laws of many countries differ in various respects from

the patent law of the United States. In most foreign countries,

publication of the invention before the date of the application

will bar the right to a patent. In most foreign countries

maintenance fees are required. Most foreign countries require

that the patented invention must be manufactured in that

country after a certain period, usually three years. If there

is no manufacture within this period, the patent may be void in

some countries, although in most countries the patent may be

subject to the grant of compulsory licenses to any person who

may apply for a license.

There is a treaty relating to patents which is adhered to

by 100 countries, including the United States, and is known as

the Paris Convention for the Protection of Industrial Property.

It provides that each country guarantees to the citizens of the

other countries the same rights in patent and trademark matters

that it gives to its own citizens. The treaty also provides for

the right of priority in the case of patents, trademarks and

industrial designs (design patents). This right means that, on

the basis of a regular first application filed in one of the

member countries, the applicant may, within a certain period of

time, apply for protection in all the other member countries.

These later applications will then be regarded as if they had

been filed on the same day as the first application. Thus,

these later applicants will have priority over applications for

the same invention which may have been filed during the same

period of time by other persons. Moreover, these later

applications, being based on the first application, will not be

invalidated by any acts accomplished in the interval, such as,

for example, publication or exploitation of the invention, the

sale of copies of the design, or use of the trademark. The

period of time mentioned above, within which the subsequent

applications may be filed in the other countries, is 12 months

in the case of first applications for patent and six months in

the case of industrial designs and trademarks.

Another treaty, known as the Patent Cooperation Treaty,

was negotiated at a diplomatic conference in Washington, D.C.

in June of 1970. The treaty came into force on January 24,

1978, and is presently adhered to by 44 countries, including

the United States. The treaty facilitates the filing of

applications for patent on the same invention in member

countries by providing, among other things, for centralized

filing procedures and a standardized application format.

The timely filing of an international application affords

applicants an international filing date in each country which

is designated in the international application and provides (1)

a. search of the invention and (2) a later time period within

which the national applications for patent must be filed.

A number of patent attorneys specialize in obtaining

patents in foreign countries. In general, an inventor should be

satisfied that he could make some profit from foreign patents

or that there is some particular reason |or obtaining them,

before he attempts to apply for foreign patents.

Under United States law it is necessary, in the case.of

inventions made in the United States, to obtain a license from

the Commissioner of Patents and Trademarks before applying for

a patent in a foreign country. Such a license is required if

the foreign application is to be filed before an application is

filed in the United States or before the expiration of six

months from the filing of an application in the United States.

The filing of an application for patent constitutes the request

for a license and the granting or denial of such request is

indicated in the filing receipt mailed to each applicant. After

six months from the United States filing, a license is not

required unless the invention has been ordered to be kept

secret. If the invention has been ordered to be kept secret,

the consent to the filing abroad must be obtained from the

Commissioner of Patents and Trademarks during the period the

order of secrecy is in effect.

FOREIGN APPLICANTS FOR UNITED STATES PATENTS

The patent laws of the United States make no

discrimination with respect to the citizenship of the inventor.

Any inventor, regardless of his citizenship, may apply for a

patent on the same basis as a U.S. citizen. There are, however,

a number of particular points of special interest to applicants

located in foreign countries.

The application for patent in the United States must be

made by the inventor and the inventor must sign the oath or

declaration (with certain exceptions), differing from the law

in many countries where the signature of the inventor and an

oath of inventorship are not necessary. If the inventor is

dead, the application may be made by his executor or

administrator, or equivalent, and in the case of mental

disability it may be made by his legal representative

(guardian).

No United States patent can be obtained if the invention

was patented abroad before applying in the United States by the

inventor or his legal representatives or assigns on an

application filed more than 12 months before filing in the

United States. Six months are allowed in the case of a design

patent.

An application for a patent filed in the United States by

any person who has previously regularly filed an application

for a patent for the same invention in a foreign country which

affords similar privileges to citizens of the United States

shall have the same force and effect for the purpose of

overcoming intervening acts of others as if filed in the United

States on the date on which the application for a patent for

the same invention was first filed in such foreign country,

provided the application in the United States is filed within

12 months (six months in the case of a design patent) from the

earliest date on which any such foreign application was filed.

A copy of the foreign application certified by the patent

office of the country in which it was filed is required to

secure this right of priority.

If any application for patent has been filed in any

foreign country by the applicant or by his legal

representatives or assigns prior to his application in the

United States, the applicant must, in the oath or declaration

accompanying the application, state the country in which the

earliest such application has been filed, giving the date of

filing the application; and all applications filed more than a

year before the filing in the United States must also be

recited in the oath or declaration.

An oath or declaration must be made with respect to every

application. When the applicant is in a foreign country the

oath or affirmation may be before any diplomatic or consular

officer of the United States, or before any officer having an

official seal and authorized to administer oaths in the foreign

country, whose authority shall be proved by a certificate of a

diplomatic or consular officer of the United States, the oath

being attested in all cases by the proper official seal of the

officer before whom the oath is made.

When the oath is taken before an officer in the country

foreign to the United States, all the application papers

(except the drawing) must be attached together and a ribbon

passed one or more times through all the sheets of the

application, and the ends of the ribbons brought together under

the seal before the latter is affixed and impressed, or each

sheet must be impressed with the official seal of the officer

before whom the oath was taken.

If the application is filed by the legal representative

(executive, administrator, etc.) of a deceased inventor, the

legal representative must make the oath or declaration.

When a declaration is used, the ribboning procedure is not

necessary, nor is it necessary to appear before an official in

connection with the making of a declaration.

A foreign applicant may be represented by any patent

attorney or agent who is registered to practice before the

United States Patent and Trademark Office.

FEES AND PAYMENT

Following is a list of patent related fees and charges

which are payable to the Patent and Trademark Office:

Filing Fees Fee Small Entity Fee

if Applicable

Basic filing fee -- utility 710.00 355.00

Independent claims in excess

of three 74.00 37.00

Claims in excess of twenty 22.00 11.00

Multiple dependent claim 230.00 115.00

Surcharge--Late filing fee

or oath or declaration 130.00 65.00

Design filing fee 290.00 145.00

Plant filing fee 480.00 240.00

Reissue filing fee 710.00 355.00

Reissue independent claims

over original patent 74.00 37.00

Reissue claims in excess of

20 and over original patent 22.00 11.00

Non-English specification 130.00

Extension Fees

Extension for response

within first month 110.00 55.00

Extension for response

within second month 360.00 180.00

Extension for response

within third month 840.00 420.00

Extension for response

within fourth month 1,320.00 660.00

Appeals/Interference Fees

Notice of appeal 270.00 135.00

Filing a brief in support

of an appeal 270.00 135.00

Request for oral hearing 230.00 115.00

Issue Fees

Utility issue fee 1,170.00 585.00

Design issue fee 410.00 205.00

Plant issue fee 590.00 295.00

Miscellaneous Fees

Extension of term patent 1,000.00

Requesting publication of

SIR -- Prior to examiner's

action 820.00*

Requesting publication of

SIR -- After examiner's

action 1,640.00*

Certificate of correction 100.00

For filing a request for

reexamination 2,250.00

Statutory Disclaimer 110.00

Patent Petition Fees

Petitions to the Commissioner,

unless otherwise specified 130.00

Submission of an information

disclosure statement 200.00

Petition to institute a public

use proceeding 1,350.00

Petition to revive unavoidable

abandoned application 110.00 55.00

Petition to revive

unintentionally abandoned

application 1,170.00 585.00

Maintenance Fees:

Applications filed on or after December 12, 1980

Due at 3.5 years 930.00 465.00

Due at 7.5 years 1,870.00 935.00

Due at 11.5 years 2,280.00 1,410.00

Surcharge--Late payment

within 6 months 130.00 65.00

Surcharge after expiration 620.00

* Reduced by Basic Filing Fee Paid

PCT Fees - National Stage

Surcharge- Late filing fee

or oath or declaration 130.00 65.00

English translation -- after

twenty months 130.00

IPEA - U.S 640.00 320.00

ISA- U.S 710.00 355.00

PTO not ISA or IPEA 950.00 475.00

Claims meet PCT Article

33(1)-(4)-IPEA -- U.S. 90.00 45.00

Claims--extra independent

(over three) 74.00 37.00

Claims--extra total

(over twenty) 22.00 11.00

Claims--multiple dependent 230.00 115.00

For filing with EPO or

JPO search report 830.00 415.00

PCT Fees--International Stage

Transmittal fee 200.00

PCT search fee--no

U.S. application 620.00**

Supplemental search per

additional invention 170.00**

PCT search--prior

U.S. application 410.00**

Preliminary examination

fee--ISA was the U.S 450.00**

Preliminary examination

fee--ISA not the U.S 670.00**

Additional invention--ISA

was the U.S 140.00**

Additional invention--ISA

not the U.S 320.00**

PCT Fees to WIPO

Basic fee (first thirty pages) 525.00**

Basic supplemental fee

(for each page over thirty) 10.00**

Handling fee 161.00**

Designation fee per country 127.00**

PCT Fees to EPO

International search 1,635.00

** Effective December 27, 1991.

* WIPO fees subject to periodic change due to fluctuations

in exchange rate. Refer to Patent Official Gazette for current

amounts.

Patent Service Fees Fees

Printed copy of patent w/o color, regular service 3.00

Primed copy of patent w/o color expedited local

service 6.00

Printed copy of patent w/o color, ordered via EOS,

expedited service 25.00

Printed copy of plant patent, in color 12.00

Copy of utility patent or SIR, with color drawings 24.00

Certified or uncertified copy of patent application

as filed, regular service 12.00

Certified or uncertified copy of patent

application, expedited local service 24.00

Certified or uncertified copy of patent-related

file wrapper and contents 150.00

Certified or uncertified copy of document,

unless otherwise provided 25.00

For assignment records, abstract of title and

certification, per patent 25.00

Library Service 50.00

List of U.S. patents and SIRs in subclass 3.00

Uncertified statement re status of maintenance

fee payments 10.00

Copy of non-U.S. document 25.00

Comparing and Certifying Copies, Per Document,

Per Copy 25.00

Additional filing receipt, duplicate or corrected

due to applicant error 25.00

Filing a Disclosure Document 10.00

Local delivery box rental, per annum 50.00

International type search report 40.00

Self-service copy charge, per page 0.25

Recording each patent assignment, agreement or

other paper, per property 40.00

Publication in Official Gazette 25.00

Labor charges for services, per hour or fraction

thereof 30.00

Unspecified other services AT COST

Retaining abandoned application 130.00

Handling fee for incomplete or improper application 130.00

Automated Patent System (APS-text) terminal

session time, per hr 40.00

Patent coupons 3.00

APS text terminal session time, per hr., at the

PTDLS 70.00*

Handling fee for withdrawal of SIR 130.00

Patent Enrollment Fees

Admission to examination 300.00

Registration to practice 100.00

Reinstatement to practice 15.00

Copy of certificate of good standing 10.00

Certificate of good standing suitable for framing 20.00

Review of decision of Director, Office of

Enrollment and Discipline 130.00

Regrading of Examination 130.00

* Collection of the fee for APS-Text access at the PTDLs has

been suspended until further notice.

THE ABOVE PRICES ARE SUBJECT TO CHANGE WITHOUT NOTICE.

All payment of money required for Patent and Trademark

Office fees should be made in United States specie, Treasury

notes, national bank notes, post office money orders or postal

notes payable to the Commissioner of Patents and Trademarks, or

by certified checks. If sent in any other form, the Office may

delay or cancel the credit until collection is made. Postage

stamps are not acceptable. Money orders and checks must be made

payable to the Commissioner of Patents and Trademarks.

Remittances from foreign countries must be payable and

immediately negotiable in the United States for the full amount

of the fee required. Money paid by actual mistake or in excess,

such as a payment not required by law, will be refunded, but a

mere change of purpose after the payment of money, as when a

party desires to withdraw his application for a patent or to

withdraw an appeal, will not entitle a party to demand such a

return. Amounts of $1.00 or less will not be returned unless

specifically demanded, within a reasonable time.

Answers to Questions Frequently Asked

1. Q. What do the terms "patent pending" and "patent applied

for" mean?

A. They are used by a manufacturer or seller of an article to

inform the public that an application for patent on that

article is on file in the Patent and Trademark Office. The

law imposes a fine on those who use these terms falsely to

deceive the public.

2. Q. Is there any danger that the Patent and Trademark Office

will give others information contained in my application while

it is pending?

A. No. All patent applications are maintained in the strictest

secrecy until the patent is issued. After the patent is

issued, however, the Office file containing the application

and all correspondence leading up to issuance of the patent

is made available in the Files Information Room for

inspection by anyone, and copies of these files may be

purchased from the Office.

3. Q. May I write to the Patent and trademark Office directly

about my application after it is filed?

A. The Office will answer an applicants inquiries as to the

status of the application, and inform you whether your

application has been rejected, allowed, or is awaiting

action. However, if you have a patent attorney or agent the

Office will not correspond with both you and the attorney

concerning the merits of your application. All comments

concerning your application should be forwarded through your

attorney or agent.

4. Q. Is it necessary to go to the Patent and Trademark Office

to transact business concerning patent matters?

A. No; most business with the Office is conducted by

correspondence. Interviews regarding pending applications

can be arranged with examiners if necessary, however, and

are often helpful.

5. Q. If two or more persons work together to make an

invention, to whom will the patent be granted?

A. If each had a share in the ideas forming the invention, they

are joint inventors and a patent will be issued to them

jointly on the basis of a proper patent application. If on

the other hand one of these persons has provided all of the

ideas of the invention, and the other has only followed

instructions in making it, the person who contributed the

ideas is the sole inventor and the patent application and

patent shall be in his name alone.

6. Q. If one person furnishes all of the ideas to make an

invention and another employs him or furnishes the money for

building and testing the invention, should the patent

application be filed by them jointly?

A. No. The application must be signed by the true inventor, and

filed in the Patent and Trademark Office, in the inventors

name. This is the person who furnishes the ideas, not the

employer or the person who furnishes the money.

7. Q. Does the Patent and Trademark Office control the fees

charged by patent attorneys and agents for their services?

A. No. This is a matter between you and your patent attorney or

agent in which the Office takes no part. To avoid

misunderstanding you may wish to ask for estimate charges

for: (a) the search (b) preparation of the patent

application, (c) Patent and Trademark Office prosecution.

8. Q. Will the Patent and Trademark Office help me to select a

patent attorney or agent to make my patent search or to prepare

and prosecute my patent application?

A. No. The Office cannot make this choice for you. However,

your own friends or general attorney may help you in making

a selection from among those listed as registered

practitioners on the Office roster. Also, some bar

associations operate lawyer referral services that maintain

lists of patent lawyers available to accept new clients.

9. Q. Will the Patent and Trademark Office advise me as to

whether a certain patent promotion organization is reliable and

trustworthy?

A. No. The Office has no control over such organizations and

does not supply information about them. It is advisable,

however, to check on the reputation of invention promotion

firms before making any commitments. It is suggested that

you obtain this information by inquiring of the Better

Business Bureau of the city in which the organization is

located, or of the bureau of commerce and industry or bureau

of consumer affairs of the state in which the organization

has its place of business. You may also undertake to make

sure that you are dealing with reliable people by asking

your own patent attorney or agent or by inquiry of others

who may know them.

10. Q. Are there any organizations in my area which can tell me

how and where I may be able to obtain assistance in developing

and marketing my invention?

A. Yes. In your own or neighboring communities you may inquire

of such organizations as chambers of commerce, and banks.

Many communities have locally financed industrial

development organizations which can help you locate

manufacturers and individuals who might be interested in

promoting your idea.

11. Q. Are there any state government agencies that can help me

in developing and marketing of my invention?

A. Yes. In nearly all states there are state planning and

development agencies or departments of commerce and industry

which seek new product and new process ideas to assist

manufacturers and communities in the state. If you do not

know the names or addresses of your state organizations you

can obtain this information by writing to the governor of

your state.

12. Q. Can the Patent and Trademark Office assist me in the

developing and marketing of my patent?

A. The office cannot act or advise concerning the business

transactions or arrangements that are involved in the

development and marketing of an invention. However, the

Office will publish, at the request of a patent owner, a

notice in the Official Gazette that the patent is available

for licensing or sale. The fee for this is $20.



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