subject: After Filing An Application For Registration Of A Patent, What's Next? [print this page] After submitting an application for registration of patents in the U.S. Patent and Trademark Office (USPTO), a patent examiner will study the submission. The researcher will assess your application for registration of patents basing on several criteria.
The three main criteria for the analysis of an application for registration of a patent must pass in order to qualify for the grant of patents are as follows.
1. The invention is one of the types of inventions allowed by law.
2. The invention is for the first time, or "novel".
3. The invention is useful in the art of the invention.
The patent law allows four types of inventions to be registered as a patent:
1. A process is characteristically a scheme or system of steps for creating a concrete outcome.
2. A machine will be a device or other thing that is made or constructed, and not something occurring naturally.
3. An article of manufacture is something which is created by a manufacturing process.
4. A composition of matter is produced by combining multiple elements.
It is well known that an invention must be new or novel in order to be eligible for patent registration. I wish I could just give you a definition of what is considered new, but I can't do that. The reason I can't do that is because the patent law states the definition of newness as a negative, meaning that instead of saying what it is, the law says that it is new unless it runs afoul of one of the stated things that make it not new.
Going into details of what is new or not new has been strongly criticized in the U.S. Patent and Trademark Office and the courts. Because of these many conflicts, it is beyond the scope of this article to find all variations of what is new.
However, I can give you a general idea of what is new for patent purposes, You can think of something as being new under the law unless someone else invented it first or the invention was publicized or used more than one year before the application for patent registration was filed.
Another flavor of newness is what we call "obviousness". It is human nature that once you've seen what another person has created, your mind immediately starts thinking of how to either improve it or to come up with alternatives to it. Because of this, the patent law requires that in order to be eligible for patent, your invention cannot be obvious over the prior invention or group of inventions.
The non-obvious requirement for patent is stated by saying that if the new invention was "obvious" to a person who is of ordinary skill in the art of the invention, then the application for patent registration is not entitled to a patent. Again, this is a negative definition, stating what is non-obvious.
Patent examiners at the USPTO will evaluate the application using three basic criteria. But since each test must be applied to each application for registration of patents, targeting these criteria is complicated, so there are many rules and procedures to be followed by the examiner.
The guidance for the Examiner are in the form of rules that a Patent Examiner must follow in evaluating your application for patent registration. These are codified in the United States Code of Federal Regulations and the Code of Federal Rules. The USPTO also publishes their own 2,000 plus page Manual of Patent Examining Procedure that further explains the federal rules for the Examiner.
