Patent Invention

While the patent application is pending, the Inventor has the duty to provide all known references that may affect patentability of the invention to the patent examiner. References are submitted in the form of an Information Disclosure Statement (IDS).

Frequently, the results of a patent search are provided as the IDS. The patent examiner considers the IDS during examination. There seems to be a trend when litigating patents to evaluate whether an Inventor fulfilled the duty to disclose appropriate references. Litigators have recently been arguing Inventors conducted fraud to obtain the issued patent as discussed onĀ post.

Patent Examination

Patent examiners will review the patent application to ensure the statutory requirements are met. Typically 35 USC 101, 102, 103 and 112. Frequently, inventions are initially rejected over one or more of the statutory requirements (as intepretted by the patent examiner) in what is referred to as an Office Action. A response to the office action can be filed.

The following are typical responses:

  • Providing Arguments that distinguish the invention from the arguments and documents cited in the Office Action;
  • Amending the patent application to distinguish the invention from the arguments and documents cited in the Office Action;
  • A combination of Amendments and Arguments;

Abandoning the application

The patent examiner evaluates the Amendments and Arguments and may issue another Office Action rejecting all or part of the invention or may provide a notice of allowance.

Issued Patent

A patent will issue once all pending claims have been deemed allowable and the issue fee is paid.

Patent Maintenance Fees

An inventor must pay maintenance fees periodically to keep the patent valid. Find much more information about patenting an invention fromĀ

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