USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
1.3 Timeline for Grant Procedure The time required to obtain a patent can vary greatly depending on many factors, including the subject matter of a patent, the number of rejec- tions and appeals during patent prosecution and the type of USPTO examination programme. The USPTO has several patent application initiatives that can expedite patent applications meeting the respective programme requirements. For example, applications qualifying for Accelerated Examination may have a final disposition within 12 months. According to statistics provided by the USPTO, the average time for a final decision on a patent application is about two years, but some take several years. Patent applicants are not obliged to be repre- sented by a lawyer. However, the USPTO cau- tions that the patent application process is an undertaking requiring knowledge of patent law and rules, USPTO practices and procedures, as well as knowledge of the scientific or techni- cal matters involved in the particular invention. Because of the complexities involved, most inventors employ the services of registered pat- ent lawyers or patent agents. The cost associated with obtaining a patent var- ies based on many factors. Administrative fees imposed by the USPTO depend on the type of entity (large, small or micro), the number of claims in the application, the amount of time taken to respond to the USPTO rejections, the use of patent application initiative programmes and other procedural details. Lawyers’ fees in connection to the application may also vary depending on the complexity of the application and patent prosecution.
use the invention without undue experimenta- tion. Patent Prosecution The interaction between patent applicants (or their representatives) and the USPTO is called patent prosecution. During patent prosecution, an examiner at the USPTO will review the pat- ent application and information already avail- able to the public to determine whether the patent application meets the requirements for patenting based on the laws found in Title 35 of the US Code, the regulations listed in Title 37 of the Code of Federal Regulations and the guidance provided in the USPTO Manual of Pat- ent Examining Procedure. If the examiner finds evidence that the invention has already been publicly disclosed or discovers another reason that the application does not comply with the patent requirements, the examiner may issue a rejection describing the deficiencies of the pat- ent application. The applicant has an oppor- tunity to respond to the rejection, which may include amending the claims in the application, having a phone conference with the examiner and presenting arguments that the rejection was improper. This process may be repeated until the examiner issues a final rejection or allows the application. If the patent application is allowed, the USPTO issues a patent creating enforceable rights for the patentee. Trade Secrets By their nature, trade secrets are not disclosed publicly or registered with any agency. Informa- tion becomes a trade secret when the holder takes affirmative action to keep the information secret. This can include physical protection of the information, use of non-disclosure agree- ments or lawsuits to recover for misappropria- tion of the trade secrets.
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