General Information Concerning Patents


Welcome! You Are Here arrow3 Articles/How To/General Information Concerning Patents.


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 patent ability. 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 utilisation 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
operative ness, 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 reorganised 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
utilisation 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 sub classes 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 loose leaf book containing a list of all
the classes and sub classes 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 sub classes.
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
patent ability 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 counsellor 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 Centre 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 organisations, 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 sub classes. 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 endeavour. 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 sub classes 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 organised 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 reader
printers 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 inconvenience.

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 Centre

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
Centre 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 Centre
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 recognised 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
practising 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 practising law.

Some individuals and organisations that are not registered advertise
their services in the fields of patent searching and invention marketing and
development. Such individuals and organisations 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 authorisation 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 authorisation.

The Patent and Trademark Office has the power to disbar, or suspend
from practising 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 authorised 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 notarised.

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 post
office 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 organisation), 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 utilised 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 patent ability 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 delineation 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 labelled and
labelled 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 labelled
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 centre
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 centred location between the
side edges within three-fourths inch (19.1 mm.) of the top edge. Authorised
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 micro biological 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.

Applicants 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 applicants action must appear throughout to be a bona fide attempt to
advance the case to final action. The mere allegation that the examiner has
eared 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 applicants 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 cancelling
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 cancelling 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 cancelled
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 cancelled, the remaining claims must not be
renumbered. When claims are added by amendment or substituted for cancelled
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
applicants 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 defence, 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 authorised 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 authorisation from the patentee. The patentee may manufacture and
sell the invention or may. license, that is, give authorisation 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 pre marketing 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 re examination 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 re examination proceedings, a
certificate setting forth the results of the re examination 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 re transfer 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 cancelled 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 authorised to
administer oaths or perform notarial acts. The certificate of such
acknowledgement 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 unauthorised 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 applicants 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 a sexually 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.

A sexually 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 non
botanical characterisation 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 a sexually reproduced. Where
colour is a distinctive feature of the plant the colour should be positively
identified in the specification by reference to a designated colour as given
by a recognised colour 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 a sexually 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 colour is a distinguishing characteristic of the new variety, the
drawing must be in colour. Two duplicate copies of colour drawings must be
submitted. Colour drawings may be made either in permanent water colour or
oil, or in lieu thereof may be photographs made by colour photography or
properly coloured on sensitised 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 centralised filing procedures and a
standardised 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 specialise 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 authorised 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
re examination 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 colour, regular service 3.00

Primed copy of patent w/o colour expedited local
service 6.00

Printed copy of patent w/o colour, ordered via EOS,
expedited service 25.00

Printed copy of plant patent, in colour 12.00

Copy of utility patent or SIR, with colour 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

Labour 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 Enrolment 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
Enrolment and Discipline 130.00

Re grading 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 organisation is reliable and trustworthy?

A. No. The Office has no control over such organisations 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 organisation is located, or of the
bureau of commerce and industry or bureau of consumer affairs of the state in
which the organisation 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 organisations 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 neighbouring communities you may inquire of such
organisations as chambers of commerce, and banks. Many communities have
locally financed industrial development organisations 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 organisations 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.



------------ END ------------

You are heresignpostArticles/How To/General Information Concerning Patents

arrow_upTop of Page

dog2