Welcome back to patent law. This is part two. How do you get a patent? In this part, we're going to cover all of the various aspects of how you go from this idea, this invention that you have to actually turning it into a patent. We're going to talk about the process, the patent prosecution process that you go through. Then we're going to work through each of the standards briefly that are the requirements for whether or not an invention is patentable under the law. So, let's dive right in to patent prosecution. So, patent prosecution is the process by which the patentability of your invention is evaluated. This process usually begins even before you file a patent application or even create a patent application, which is the first step in any patent prosecution process. In any process of obtaining a patent, is to consider carefully whether your invention meets the standards of patentability. We're going to talk about these in this part. But think about whether your invention is truly new, whether it has something that's worth it to you to try to get protection over because obtaining a patent is a long process. It can be difficult. There are going to be setbacks. It can require a substantial amount of resources and so, therefore, it's always important before you begin to think about it and think carefully about how your invention relates to what other things have gone before. What sort of competing ideas that are out there? What are your plans for the patent? How are you going to use it? Do you need to use it to protect a particular product? Do you hope to license it? All of those aspects need to be considered when you evaluate the patentability of your invention. So once you do that, once you've considered whether your patent meets at least your own internal standards for patentability, the next thing you do is you move on to prepare and file a patent application. Patent applications now are filed with the US Patent and Trademark Office, which is an administrative agency that is in Washington, DC. You create a patent document, use PDF, they accept PDFs. You upload it to the patent office and that is what's called filing your patent application. Your patent application, and we'll talk about this throughout the part, has a number of elements of it that are required and certain standards that it has to meet. But in general, what you're doing is creating a document, creating a set of diagrams, drawing some texts material into a PDF document, filing it with the PTO. Once the PTO obtains it, it will be sent into the system, sent into the process. US Patent and Trademark Office is an office located in Alexandria, Virginia. It has about 10,000 employees, about 8,000 of which are patent examiners. Once you file your patent application, it will be assigned to a particular examiner or sometimes more than one depending on the particular technology and the complexity of your invention. The process will go something like this. After a while, the examiner will respond to your patent application. There are a few types of responses that you can obtain. The most general and the basic one is what's called an office action. An office action is also typically known as a rejection. Almost always the first thing that the patent office is going to do, that the patent examiner is going to do, is reject your patent for a particular reason. The claim doesn't meet a particular standard or patentability or maybe you haven't provided some important piece of information that's required under the law. So, upon a rejection, you'll get this in the mail, sometimes by email depending on how you've opted to do this, and you will have an opportunity then to respond. That begins then the patent prosecution process. A sort of back and forth process between you and the patent examiner or your attorney and the patent examiner covering this office action, these rejections, these problems or potential problems with your patents. The examiner can offer other notices as well. Perhaps a drawing, he doesn't understand or she doesn't understand. Maybe it's missing again a particular part. Maybe there are fees that you need to pay. You could also have an interview with the examiners. Examiners will often request an opportunity to talk verbally with a patent applicant to try to understand better what he or she is actually invented, what he or she actually means by the particular invention that's been created. All of these things are intended to allow the examiner to determine with as much certainty as possible whether the invention actually meets the standards for patentability. Eventually, a patent examiner will issue one of two things. One is a notice of allowance. Meaning, the patent claims that have been worked on over the period of time have finally met a particular standard and they are ready to be allowed and that therefore, the patent will be granted in that form shortly thereafter, or alternatively, an examiner can offer a final rejection. A final rejection is what that sounds like, which is the patent examiner says, "Look, I really don't think that these claims are going to make it. This is a final rejection. You can no longer sort of respond and try to work with it again." So, importantly, even a final rejection is not really final in the patent law because there are two types of applications that you can later file even after a final rejection. One is called a continuation application, which basically is a do-over. You take the prior application, you essentially re-date it and refile it. In some cases, you can take advantage of the earlier filing date depending on certain circumstances. You essentially get another go-round with the examiner. It is more often however that what you do is a continuation in part, which is you add some new material, change some things about the patent. Maybe you add some disclosure, maybe you add more information in the patent document that was required, and then you refile. Then the process basically starts over again, where the patent gets assigned, the patent application gets assigned to examiner and examiner will respond. You'll go back and forth for a while and eventually be a notice of allowance or some sort of final rejection. Whereupon this can file, this can start all over again. In fact, it turns out that most 70 percent, sometimes more of patent applications actually result in at least some claims being allowed. So, the odds are pretty good when you file a patent application that you will get some kind of a patent. It may not be the patent claims that you originally filed and the patent application may have gone through several iterations in terms of these continuation applications, but in most cases, you're probably going to get some kind of patent out of the process at the other end.
