Patent Prosecution

AuthorDavid R. Gerk - John M. Fleming
P A R T 2
Patent Prosecution
That reminds me to remark, in passing, that the very first official
thing I did, in my administration—and it was on the first day of it,
too—was to start a patent office; for I knew that a country without
a patent office and good patent laws was just a crab, and couldn’t
travel any way but sideways or backways.
— Mark Twain,
A Connecticut Yankee in King Arthur’s Court (1889)
While the prosecution of patent applications differs in many ways from
the prosecution of trademark applications, there are also many similari-
ties, or at least synergies, with the prosecution of trademark applications,
particularly with respect to some of the formalities and the handling of
examination and procedural matters. The similarities in some of the pro-
cedural operations and processing may not be overly surprising given
that the same bureau of the United States Government, the U.S. Patent
and Trademark Office (USPTO), is charged with the authority and re-
sponsibility to handle these administrative agency matters. Also, in many
instances, the particulars about office procedure may have distinct nu-
ances, but the concepts and general handling will be the same. Applicants
and representatives should reference the Manual of Patent Examining
Procedure (MPEP) as well as the relevant provisions of the United States
Code and Code of Federal Regulations when practicing before the USPTO.
While there are an almost infinite number of factual circumstances and
considerations practitioners could encounter or consider during the pro-
Part 2
66 Section 2, Part 2
curement process, this section will provide insight regarding many of the
more regularly encountered matters relating to patent prosecution.
A. How Does the Process Usually Start?
A number of manners exist for identifying subject matter that may be
patented. Most commonly for practitioners, an inventor and/or a com-
pany create some form of disclosure document that describes the
invention’s subject matter in some detail. The goal of a practitioner is to
wade through the documentation and materials to identify and optimize
potentially patentable subject matter. Whether the end result is a patent to
protect a commercial embodiment and/or to prevent others from imple-
menting a feature, a practitioner is charged with a number of tasks that
must be investigated before a patent application is even prepared.
B. Inventorship
One task for a practitioner when receiving and reviewing disclosure docu-
ments is identifying inventorship and ownership. Understanding the dif-
ference between these two concepts is important under U.S. patent law
practice. Under U.S. law, for any type of patent—whether it is a utility
patent, a plant patent, or a design patent—inventorship is defined solely
by the claims. An entire team of individuals might have worked in some
capacity on a project. The team may include designers, code writers,
individual managers, project managers, and testers, and the disclosure
materials provided may include input from each of these individuals.
Yet, the claims of an application for a patent will define the inventors.
As a rule, an inventor is one who: (1) conceives of at least one
portion of at least one claim of the patent application, and (2) reduces
that claim to practice. These two concepts together define who should
and should not be identified as an inventor. Understanding these concepts
will help ensure that a patent issued on the subject matter will not subse-
quently be vulnerable to an invalidity argument for failure to identify
proper inventorship.
Conception represents the inventor formulation of the definite and
permanent idea for solving a problem in such a way that a person skilled
in the relevant art could practice the invention by following the inventor’s
Patent Prosecution
conception. In other words, conception is the idea of the invention. It
may be considered the “eureka” moment. Who helped think up the fea-
tures of the invention? Did the project manager actually contribute to the
conception of the invention or did she merely oversee the entire project?
To complete an invention, there must be “a reduction to practice,” a
term of art meaning that the invention must have been applied and tested.
This may be an “actual” reduction to practice, which is when the inven-
tion is made and tested to determine that it works. However, reduction to
practice does not require the invention to be made. An invention can be
“constructively” reduced to practice by filing a patent application, whether
in the U.S. Patent & Trademark Office or another recognized foreign
patent office, claiming the invention. For purposes of invention, a con-
structive reduction to practice is considered to be equivalent to an actual
reduction to practice.
By knowing what defines an inventor, proper identification of
inventorship may be accomplished. There may be only one inventor,
which occurs when one person has conceived of the entire invention, i.e.,
each and every claim in the patent application. When more than one
person contributes to the conception of an invention, each person is con-
sidered to be a joint inventor. Joint inventors do not have to have physi-
cally worked together on the invention. However, there must have been
some collaboration, and each of the inventors must have worked on the
same subject matter and must have made some contribution to the con-
ception of the invention as it is claimed in the patent application. All of
the joint inventors do not have to be inventors of every claim, since
conception and reduction to practice are required of only one feature of
at least one claim. As such, even if an individual contributes a conception
and reduction to practice to only one claim in a patent application, that
individual is still a joint inventor of the entire patent application.
C. Problem to Be Solved
A second task for a practitioner in receiving and reviewing disclosure
documents is to understand the problem to be solved. A practitioner should
be analyzing the materials to appreciate how the inventors got from a
first point (the problem at hand and the prior manners for handling) to a
resulting point—(the invention for solving the problem). Because most,
if not all, inventions today are improvements of some kind, a practitioner
must comprehend the state of the art and what was happening in access-
ing and identifying patentable subject matter.

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