Patent prosecution is the term used to describe the patent application process from the point in time that the Patent Office, through an examiner, begins working on the application that is filed by the inventor or an attorney representing the inventor. Below is a description of how the process works for a United States national application. It is important to remember, however, the difference between a national (or domestic) application and a international application that is filed pursuant to the protocls established by the Patent Cooperation Treaty. An international application can be filed in the United States provided that at least one inventor is a US national or resident of the United States. International applications moving through the US Patent Office do not follow the process described below, although once the international application does enter what is called the national stage the process will be much the same.

Infringement and Provisional Damages

There is no action for infringement of your patent until it actually issues. However, through publication of your application, it may be possible to obtain provisional damages for the time between publication of the application and the issuance of the patent. Once your patent issues, infringement can give rise to treble damages and an award of attorney fees. During the phase from publication to issuance, only reasonable royalty damages can be awarded. Furthermore, a claim must survive and be substantially identical from publication to the issued patent.

A provisional patent application is not a patent, and furthermore, never becomes a patent, with the single rare exception noted below. It automatically expires after twelve months following the day of filing and cannot be revived.

It does provide a priority date for concurrent later-filed non-provisional applications for the content that is in the provisional. This means that references that could defeat the later-filed application as to the matter in the provisional (but which could not defeat the provisional filing date) will now not be utilized to defeat the later-filed application. Further, it does not subtract from the twenty year term of the later-filed application unless it is truly converted as discussed below.

A recent United States Supreme Court ruling is causing quite a stir in intellectual property circles. The case is KSR Int’l Co. v. Teleflex Inc., et al., 127 S. Ct. 1727 (2007).

Background

To obtain a patent, the invention must be useful, novel and non-obvious. See Patents. The first of these, utility, is present for nearly every invention. The second, novelty, generally requires that the invention claimed is not disclosed in full in a single reference (patents, published applications or any published document anywhere in the World), and the third, non-obviousness, generally requires that the invention as claimed is not fully disclosed in a combination of references. Previously, to reject a patent for obviousness though a combination of references required some suggestion or motivation in the references themselves (excluding the subject patent application) that would lead one skilled in the pertinent art to make the combination of their teachings.