A Training Tool for Administrative Staff


Susan Stiles







The Patent Professional’s Handbook is geared toward Patent Professionals or Administrative Staff (“Paralegal”), who are not licensed, but provide service for the administrative side of the Registered Patent Practitioner (“Practitioner”).


1.1       What is a Patent?

So the inventor has come up with a conception for a new invention.  How will the Practitioner keep competitors from unfairly capitalizing on the inventor’s invention?  The answer is to get a patent for the invention.


Patent law is a sub-set of the broad category of intellectual property (IP) law.  IP law serves to protect creations of the mind, whether they are intangible or ethereal products.  In addition to patents, there are several other types of IP, such as trademarks, copyrights, and trade secrets.  This Handbook will focus on patents.


A patent document delineates an inventor’s conception of an invention in sufficient detail such that the public can make and use the invention.  This is part of the quid pro quo of the patent system.  In return for the full disclosure of the invention, the inventor has the right to exclude others from making, using and selling, importing, offer to sell his/her invention.  The continual disclosure of new ideas through the patent system is designed to promote a constant evolution of technology, both in serving as a foundation for new ideas and in motivating innovation in concurrent technology to avoid infringement.


Once issued, a patent gives the patent owner the right to exclude other people from making, using, and selling, importing, offering to sell the invention claimed in the patent.  Contrary to popular belief, however, obtaining a patent may not enable the inventor to make, use, or sell his/her invention, if his/her patented invention incorporates patented inventions of others.


There are essentially three categories for patent protection:  utility, design, and plant.  The most common type of patents are utility patents, which are granted for any new and useful process, machine, manufacture, composition of matter, or improvements.  Design patents protect the non-functional appearance or design of a manufactured article.  Plant patents are granted for a new and distinct variety of plant.


This Handbook will focus on utility and design patents, as these are the most common in traditional patent practice and the ones most likely to be encountered by the inventor.  However, the Paralegal should be aware of other types of patents and IP protection, especially since the guidance provided in this Handbook may not be applicable to the other types of patents and IP protection.  Accordingly, the Paralegal should consult with a Practitioner in these instances to determine the appropriate prosecution methodology for the inventive subject matter.


The USPTO is an agency of the U.S. Government that examines patent and trademark applications with authority to grant patents and trademark registrations.  The term “USPTO” will be used throughout this Handbook refer to the U.S. Patent and Trademark Office, the Patent and Trademark Office, the Patent Office, or just the Office.


1.2       A Patent Story

As you become experienced in the field of patent prosecution, the terminology commonly employed will become second nature to you.  However, the variety of specialized terms may seem daunting.  To assist in your understanding, this Handbook will endeavor to explain the parlance associated with the patent practice, as well as variations, in an appropriate place in this Handbook.  In Sections 1.2.1 to 1.2.3, certain fundamental terminology, which will be used throughout the remainder of this Handbook, is introduced.


We present in Sections 1.2.1 to 1.2.3 a patent prosecution story for a typical invention.  The following is by no means intended to be exhaustive, as various deviations, additions, and omissions from the following story are possible and often occur.  Rather, it is meant to be informative for the Paralegal on what to expect in typical patent prosecution, from beginning to end.


1.2.1      Preparing and Filing the Patent Application


Steve is working on his car during a hot day in August.  He is trying to change the oil in his car, but, between the heat and the cramped engine interior, he is having trouble removing the oil filter using the oil filter wrench he bought at the local auto supply store.  In a moment of desperation, he yanks too hard on the wrench and bangs his head on the engine hood.  While recovering from his injury, Steve has a moment of inspiration and conceives an idea for a new oil filter wrench which will, among other things, prevent him from banging his head in the future.  He immediately begins to think about obtaining a patent for his new oil filter wrench.


In order to obtain a patent, a patent application must be filed with the USPTO.  An inventor may draft the patent application himself/herself or consult with a Practitioner.  When working with a Practitioner, an inventor may draft an invention disclosure, which documents the relevant details of the invention.  Such relevant details usually include a background of the invention, how it was developed, the components and description of the invention, and whether or not the invention was discussed with others.  The Practitioner will interview the inventor to obtain the relevant details of the invention before drafting the patent application.


A Practitioner is a person who has been licensed and given a registration number by the USPTO to represent clients in matters related to patent prosecution before the USPTO.  To be licensed, a Practitioner must (i) possess the requisite scientific and technical training, (ii) take and pass a registration examination to demonstrate knowledge of USPTO practice and procedure, and (iii) possess good moral character and repute.  A Practitioner may be a Patent Agent (a Practitioner who does not have a law degree or who is not a member of a State bar) or a patent attorney (a member of a State bar).  The Practitioner may employ the assistance of Paralegals in the drafting and subsequent prosecution of the patent application for the Practitioner’s supervision and review.


Note:  The Paralegal cannot give legal advice and the Practitioner has the ultimate responsibility to supervise and be responsible for the work that is being done on the client’s behalf.


Steve meets with a Practitioner who is a patent attorney in California.  Steve has not had a chance to write down any details of his invention, but is very excited about getting a patent.  “There’s nothing like this out there on the market,” Steve tells the Practitioner.  The Practitioner proceeds to interview him about the details of the invention and confirms that he has not told anyone else about the invention.  The details of the interview are documented by the Practitioner and appended to a file for Steve’s matter.  The Practitioner and Steve agree on a budget for the patent application, after which the Practitioner begins work on drafting a suitable patent application. 


In general, the patent application includes several parts related to the invention and several formal aspects.  The formal aspects will be addressed in greater detail later in this Handbook.  The specification, together with the drawings, describes the invention in sufficient detail that the public can recreate the invention from the application.  The abstract provides a brief summary of the invention and is often used to determine the relevance of the patent in a specific information (or patent) search.  The claims are the most important part of the patent application, as they set forth the legal definition (and uniqueness) of the invention the inventor wants to protect.


The Practitioner finishes the draft patent application, including the claims.  Because Steve asserts that no one else has ever done this, the Practitioner drafts fairly broad claim language.  The Practitioner then submits the draft application to Steve for review.  Steve notices a few errors in the application and also wants to include some additional ideas that were not discussed in the interview.  He makes a note of the changes on the draft application and sends it back to the Practitioner.  The Practitioner has her assistant, Joyce, make the appropriate changes and also instructs Joyce to prepare Declaration and Power of Attorney forms for the patent application for Steve’s signature. 


After Joyce completes the changes, she forwards the patent application to Steve for final review and execution of the Declaration and Power of Attorney forms.  Steve reads the final draft application and is pleased with the results.  Having read the application, he signs the Declaration attesting that the invention is indeed his.  He also signs the Power of Attorney giving the Practitioner the power to represent him before the USPTO.


Effective September 16, 2012, the USPTO revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the Applicant, and to permit a person who otherwise shows proprietary interest in the matter to file and prosecute an application for patent as the Applicant on behalf of the inventor(s).


The patent owner (or the Applicant, if the application is not assigned) may designate a Practitioner to receive USPTO correspondence and prosecute the application on behalf of the inventor by filing a Power of Attorney with the USPTO.  After filing a Power of Attorney, the USPTO will only communicate with the designated representative or someone who has authority, unless the Power of Attorney is subsequently revoked.


Joyce receives the executed Declaration and Power of Attorney from Steve and notes his approval of the final draft.  She then prepares the application for filing with the USPTO by uploading the patent application to the USPTO electronic filing system (“EFS-Web”).  The Practitioner reviews the patent application for formal requirements one last time, signs the appropriate transmittal, and files the application via EFS-Web.  The USPTO immediately indicates receipt of Steve’s patent application and assigns its Application Number 99/999,999.


The patent application can be filed in person, by mail, or electronically via the EFS-Web.  The EFS-Web employed by the USPTO will be explained in details later.


The other options will also be explained to a lesser extent in appropriate sections.  Once the application is received, the USPTO assigns an application number, which consists of a two-digit series code followed by a six-digit number.  All subsequent correspondence directed to the USPTO must include the patent application number, as well as the first named inventor, filing date, and a confirmation number assigned by the USPTO.


1.2.2   Examining the Patent Application


The USPTO sends Steve’s application to the Office of Patent Application Processing (“OPAP”) to make sure it complies with certain formal requirements.  OPAP confirms that the basic formal requirements are present and sends an Official Filing Receipt to the Practitioner, who instructs Joyce to confirm that the information on the Official Filing Receipt matches the information in the file for Steve’s matter.


When the USPTO receives a patent application, it examines the application for compliance with the relevant patent laws and rules.  The Manual of Patent Examining Procedure (“MPEP”) is a guide for patent applicants, Practitioners, the public and USPTO personnel on the patent statutes, rules of practice, policy, and procedure for patent prosecution.  When in doubt on how to proceed with a pending patent matter, the Paralegal should always consult with the Practitioner for guidance.


The USPTO consists of several divisions, each of which plays an important part in making the prosecution of patent applications more efficient.  Once OPAP reviews the patent application and determines that it complies with certain formal requirements, it is then forwarded for examination on the merits.  The Office of Licensing and Review (“L&R”) also reviews for foreign licensing and national security purposes before going to Examiner.


The USPTO sends a copy of Steve’s application to the publication division.  The publication division prepares the application for publication by the USPTO eighteen (18) months after the filing date. 


Unless the Patent Applicant (Inventor or Assignee) requests nonpublication of his or her patent application, the USPTO will publish patent applications eighteen (18) months from the earliest filing date.  Each published application has a publication number. The published application includes the abstract, specification and claims of the patent application and drawings.  Nonpublication should not be requested if the Patent Applicant desires to submit for patents in a foreign country.  A request can be made for nonpublication at the time of filing, but if a counterpart foreign application or international application under the Patent Cooperation Treaty (“PCT”) is to be filed, it would be improper to file such a request if inventor knows at the time of filing request, a foreign or PCT application will be filed.  See Chapter 11 – Publication of Patent Applications.


Simultaneously, the application is routed to Examiner Monroe, who specializes in the art of oil filter wrenches.  Examiner Monroe will pick up Steve’s application for examination in the order it was received.


The examination divisions of the USPTO are organized into Technology Centers (“TC”) based on basic technology areas, such as biotechnology, chemistry, electrical, computers, communications, and mechanical.  There is also a TC which examines design applications and another TC which handles plant applications.  One or more Group or Center Directors are in charge of each TC.  Each TC is further subdivided into Art Units (“AU”) based on more specific technologies.  Each AU is supervised by a Supervisory Patent Examiner (“SPE”).


Each AU is composed of 10 or more Patent Examiners, who have scientific and technical training.  The Patent Examiners within an AU are the ones who actually examine a particular patent application.  An examiner may be a Primary Examiner or an Assistant Examiner.  Primary Examiners are experienced examiners who have been certified by the USPTO to make independent decisions on patentability of patent claims, and thus have the authority to sign official USPTO communications without supervisory review.  Assistant Examiners are less experienced and do not have the authority to sign official USPTO communications.  Accordingly, Assistant Examiners work under the supervision of an SPE or Primary Examiner.


A Legal Instruments Examiner (“LIE”) serves as an assistant to an Examiner (Assistant and Primary Examiners as well as SPE’s).  In particular, the LIE forwards communication from the patent application (or representative) to the Examiner and vice versa.  The LIE also reviews communication for compliance with certain formal requirements, such as compliance with amendment guidelines.


After two years, Steve is getting anxious that he has not received an update on the status of his patent application.  The Practitioner reassures Steve that this time frame is normal.  Serendipitously, Examiner Monroe picks up Steve’s case for examination.  Examiner Monroe reads Steve’s specification and claims, after which he performs a prior art search for the claimed subject matter.  Examiner Monroe finds a single patent reference, issued to Noah, which discloses an oil wrench having all of the elements of the broad claims in Steve’s patent application.  He prepares a first Non-Final Office Action rejecting Steve’s claims as being anticipated by Noah’s patent.  The Practitioner receives the Non-Final Office Action and forwards it to Steve for his review. 


After the initial examination, the Examiner assigned to examine a patent application will perform a prior art search for the claimed invention.  The purpose of the search is to find any references that predate the Applicant’s filing date, anticipate the claimed subject matter, or render the claims obvious.  These references need not be patents, but can be any type of publication or disclosure dated prior to the filing date of the patent application.  If the Examiner finds a reference that discloses all of the elements of the Applicant’s claim, the Examiner can reject the claims as being anticipated.  If the Examiner finds references disclosing some of the elements of the claimed subject matter, the references can be combined with other prior art references to reject the claims for obviousness.


Steve receives a copy of the Non-Final Office Action forwarded by the Practitioner.  After his initial shock over the rejection wears off, he realizes that there is a key distinction between his oil filter wrench and Noah’s oil filter wrench.  This distinction was not in the claims, but it was disclosed in the written description of the invention (the specification of the patent application). After consulting with Steve, the Practitioner rewrites the claims to emphasize this distinction and prepares an Amendment to the claims with remarks to distinguish the amended claims from Noah’s invention.  After approval of the Amendment by Steve, the Practitioner signs the Amendment and has Joyce efile the signed Amendment with the USPTO via EFS-Web.  


After receiving a Non-Final Office Action from the USPTO, the Practitioner has a chance to respond to the rejections or objections noted therein.  Rejections are based on statute or judge-made law (e.g., obviousness-type double patenting) and are typically directed to the claims, while objections are based on rules and typically relate to formal matters.  The Practitioner may request reconsideration of the patent application and file a response to the Office Action with or without changes to the specification, claims, or drawings.  Changes that are made are termed Amendments.  The response includes remarks supporting the changes and arguments as to why the Examiner’s rejections or objections are in error.  This response is labeled an “Amendment”.  A response without any amendments is labeled a “Response”.


After the Amendment is filed, it is routed to Examiner Monroe by the LIE for his AU.  Within two (2) months, Examiner Monroe reviews the Amendment and agrees that Noah’s patent is deficient with regard to the new feature in Steve’s claims.  Examiner Monroe performs an additional prior art search for this new feature.  Examiner Monroe finds a Japanese patent to Oshi which discloses the new feature.  The translated abstract of Oshi’s patent clearly suggests the new feature and the attending advantages.  Examiner Monroe prepares a Final Rejection, rejecting Steve’s claims as being obvious over Noah’s patent in view of Oshi’s patent (a rejection for obviousness).  The LIE then forwards the Final Rejection by mail or electronically together with Oshi’s Japanese patent to the Practitioner, who receives the Final Rejection and Japanese patent, and notes the new ground of rejection.  The Practitioner reports the Office Action to Steve with a copy of the Office Action for his review.  She advises Steve that the Examiner has made a new ground of rejection and that the action is Final.  She also advises Steve of his options after a Final Rejection. 


After an Amendment or Response is submitted to the USPTO, the Examiner will evaluate the changes and/or arguments in view of the prior Office Action.  The Examiner may perform an additional search based on the changes and/or arguments.  The Examiner may continue to reject the claims on the same grounds, or may make a new ground of rejection and issue a Final Rejection.  A Final Rejection significantly limits further prosecution, and the application will go abandoned unless a Request for Continued Examination (“RCE”) or an appeal of the final rejection is filed or an Amendment is filed placing the claims in condition for allowance as a patent.


Steve receives the reporting letter and copies of the Final Rejection and the Oshi patent from the Practitioner.  He is shocked and dismayed by this latest rejection.  The Practitioner consults with Steve about the options set forth in her reporting letter.  Unfortunately, it does not appear that an appeal is a plausible route, as Oshi’s patent does suggest this new feature and in combination with the disclosure of Noah’s oil filter wrench, the Examiner has presented a prima facie case of obviousness taken alone.  However, the Practitioner notices another feature in the specification that does not appear to be suggested by Noah or Oshi, or in combination.  The Practitioner suggests filing an Amendment After Final to amend the claims by adding the new feature.  Steve agrees.  The Practitioner revises the claims as discussed and drafts Remarks corresponding thereto.  After Steve has reviewed and approved the Amendment After Final, the Practitioner signs the After Final Amendment and has Joyce efile the signed Amendment in the USPTO via EFS-Web.


After a Final Rejection is received, the prosecution options for the Practitioner are limited.  The Practitioner can file an Amendment After Final, but such Amendments are not entered as a matter of right.  Rather, the Examiner has discretion to permit the Amendment to be entered.  The Examiner will only enter the Amendment if it places the application in condition for allowance without further examination.  Such Amendments are typically very time sensitive, since the application will go abandoned if certain actions are not taken within six (6) months from the issuance of the Final Rejection.


The Amendment After Final is routed to Examiner Monroe by the LIE for his AU.  Within 10 days, Examiner Monroe reviews the Amendment and agrees that the combination of Noah’s patent and Oshi’s patent is deficient with regard to the new feature of Steve’s claims.  However, the Examiner notes that he would have to do an additional search to evaluate the patentability of this new feature.  Accordingly, he prepares an Advisory Action stating that the claim amendments have not been entered because they require further search and consideration.  The LIE then forwards the Advisory Action to the Practitioner within 30 days after the Practitioner submitted the Amendment After Final. 


The Practitioner receives the Advisory Action and reports the Advisory Action to Steve for his review and also advises Steve of his options.


The Practitioner advises Steve that the Advisory Action and is not a determination of the patentability of the revised claims.  She suggests filing a Request for Continued Examination, commonly referred to as an RCE, to have Examiner Monroe consider these new amendments to the claims.  Steve agrees.  The Practitioner instructs Joyce to prepare the RCE.  After it is prepared, the Practitioner reviews and signs the RCE.  At the Practitioner’s direction, Joyce efiles the signed RCE and pays the appropriate fees via EFS-Web.


To have amended claims denied entry after a final rejection and in order to prevent an application from going abandoned, the Practitioner must file an RCE and pay the appropriate fees.  Another option, if the Practitioner considers the Examiner’s final rejection to be in error, is to file a Notice of Appeal with payment of the appropriate fees.  In practice, an RCE continues prosecution of the application and removes the finality of the Final Rejection.  Any Amendments submitted with the RCE are thus entered as a matter of right.  If any Amendments submitted after the Final Rejection was not entered, these Amendments are entered with the filing of the RCE.  The Examiner would either allow the claims or continue to reject the claims in a Non-Final Office Action.


The USPTO also has a separate adjudicating body for resolving legal disputes between the Examiner and the Practitioner on a particular patent application.  This body is called the Patent Trial and Appeal Board (“PTAB”) and is composed of a number of Administrative Patent Judges (“APJ”).  When a patent application continues to be rejected by an Examiner, for example, after a Final Rejection, the Practitioner may appeal the Examiner’s decision of unpatentability to the PTAB, if the Practitioner believes the Examiner’s decision is in error.


The LIE receives the RCE, changes the status of the application, and enters the previously filed Amendment After Final.  The LIE then forwards the Amendment to Examiner Monroe.  Within two (2) months, Examiner Monroe reviews the Amendment and, after conducting a prior art search, determines that the claims as amended are patentable.  Examiner Monroe therefore issues a Notice of Allowance indicating that the claims proposed in the RCE are allowable over the prior art of record.  The LIE takes the Notice of Allowance and appends a “Notice of Allowance and Fees Due” form before sending it to the Practitioner.  After she receives the Notice of Allowance, she forwards a copy of the Notice of Allowance and Fees Due form to Steve. 


Steve is ecstatic and instructs the Practitioner to pay the Issue Fee. She instructs Joyce to review the application file history to make sure all formal matters are in compliance (or have been met).  After confirming that the application is in good order, the Practitioner signs the Issue Fee Transmittal.  At the Practitioner’s direction, Joyce efiles the signed Issue Fee Transmittal and pays the appropriate Issue Fee via EFS-Web.


If the Examiner finds that the claims pending in an application are patentable over the prior art, the Examiner issues a Notice of Allowance.  After the Notice of Allowance is issued, prosecution is effectively closed.  However, for a patent to issue from the patent application, the Issue Fee must be paid within three (3) months from the date of the Notice of Allowance.  The time is not extendable.  If the Issue Fee is not timely paid, the patent application becomes abandoned.


1.2.3   Issuing the Patent

After payment of the Issue Fee, the Practitioner receives an Issue Notification from the USPTO indicating the date the patent will issue and the patent number.  When the patent issues, the Practitioner receives a formal copy of the Patent Grant and forwards it to Steve and advises him that he can begin enforcing his patent and that he will need to pay maintenance fees at 3 ½ years, 7 ½ years, and 11 ½ years to keep his patent in force.


A Patent Grant is a formal document issued by the USPTO which grants patent rights to the Patent Owner.  The USPTO grants patents every Tuesday, regardless of whether the Tuesday is a national holiday.  Each patent granted is assigned a patent number.


In order for the patent to remain in force, the USPTO requires the payment of a maintenance fee at 3 ½, 7 ½, and 11 ½ years.  There is a 6-month grace period for each maintenance fee.  Thus, if the maintenance fee is not paid by the 4, 8, or 12 year marks, the patent will lapse and be unenforceable.


Note:  The maintenance fees increase significantly the longer the patent is in force.