Patent Prosecution

• Author: David R. Gerk - John M. Fleming
• Pages: 65-140

P A R T 2

Patent Prosecution

65

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.

I. ASPECTS OF PATENT PROSECUTION PRIOR TO

FILING

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

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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.