Word of the Week: Patent Prosecution

Each week we select a legal term or phrase that’s commonly misunderstood, interesting, or that gives a fancy name to a simple idea.

Grey haired and bushy-browed, crackpot scientist Dr. Emmett Brown (Doc) stands on his toilet, trying to hang a picture. Then, crash! Slipping on the wet porcelain, Doc tumbles, striking his head on the sink. Hours later, emerging into a foggy consciousness, a vision: “Yes…yes…THAT’S IT!” Doc eagerly gets busy. A month later, Doc emerges from his lab and proclaims: “I shall call it, the Flux Capacitor.”

Doc has invented something new and useful: a means for time travel. Besides changing his reputation as neighborhood wackjob, Doc recognizes that his invention is worth billions of dollars and worldwide acclaim. Therefore, Doc works with an attorney to draft a patent claim, which the attorney then files with the United States Patent and Trademark Office (USPTO). Doc and his Flux Capacitor have now begun the process of patent prosecution.

What does patent prosecution entail? It can be described as a series of negotiations between Doc, the inventor/claimant, and an examiner at the USPTO. The average claimant will wait two to three years before the USPTO issues its final decision. The Flux Capacitor, being the first means for time travel, will likely linger a tad longer. Within that time, Doc is entitled to two rejections, which he may then revise before either approval or final rejection. Over ninety per cent of all utility patents end at this point: either the USPTO awards the inventor patent protection or the claimant will abandon the claim after final rejection.

If Doc is rejected by the examiner but is certain that he can make a successful revision, Doc may pay another fee and receive a continuation. If Doc insists the examiner has wrongly rejected the Flux Capacitor, he may appeal the examiner’s rejection to the Board of Patent Appeals and Interferences (BPAI). If denied by the BPAI, Doc may file for ex parte review in the Court of Appeals for the Federal Circuit or commence civil action against the director of the USPTO. Great Scott! That’s a lot of procedure!

Doc will most certainly benefit from the 2011 America Invents Act, which, among other features, makes the US a first-to-file nation. The new system cleans up messy interference proceedings and streamlines the prosecution process. If Doc files first – which, being the first to invent a means for time travel, seems likely – he will have priority. It used to be that if greaseheads like Biff Tannen (What are you looking at? Say hi to your mom for me) sought to patent the same invention, the USPTO would declare interference and determine which inventor was first to practically adapt his patent, thus determining priority. Not anymore.

Commencing his successful patent prosecution, Doc acquires a ladder. Hanging his official United States Patent in the bathroom (to commemorate the site of his greatest idea), he asks his friend, Marty, “You want to cruise for chicks in my DeLorian?” Marty, knowing his girlfriend, Jennifer, would disapprove, glances at his watch and exclaims, “8:25! I’m late for school!”