Patent ProsecutionOpposition is a process provided by some patent law systems in which a third party can oppose the grant of a patent in an attempt to prevent the grant (or revoke the grant of) a patent. In the European Patent Office, for example, any person may file opposition to the grant of a European patent within nine months from grant. The search and examination process is principally conducted between the patent office and the Applicant. However, in some patent law systems it is possible for interested third parties to file opinions on the patentability of an application which may be taken into account by the patent office. This may take the form of a formal pre-grant opposition inter partes procedure or it may simply be an opportunity of filing observations as a third party. Reform legislation is set to create an opposition system in the United States. However, if the examiner and the applicant cannot reach agreement regarding the patentability of the application, the applicant may lodge an appeal to either the patent office or to a court of law, asserting that his or her patent application was wrongly rejected. For such an appeal to be successful, the applicant must prove that the patent office was incorrect in its application of the law, in interpreting the claims of the patent application, or in its interpretation and application of the prior art vis a vis the patent application. If the appeal is successful, the patent office or court may order that a patent be issued based on the application, or that the patent office correct its examination of the application if the patent office is found to have been incorrect. Otherwise, if the applicant is not found convincing, the rejection of the patent application may be upheld. An applicant is free to abandon an application during the search and examination process. This may be done if, for example, prior art is revealed that will prevent the grant of a patent and the Applicant decides to save cost by terminating the application. An application may be deemed abandoned by the Patent Office if the Applicant fails to meet any of the requirements of the application process, for example replying to an Examination Report. Also, in the United States, if two patent applications are filed which set forth claims directed to the same subject matter, the patent office may declare an "interference" and require that each of the parties appear before the patent office to determine who was the earliest to discover the claimed invention. This "interference practice" is not followed in most other jurisdictions, because it is obviated by the "first-to-file" system used in most countries. During an interference, parties may submit evidence supporting their contention to be the earliest inventor, and the patent office issues a decision following the trial-like interference process. Generally, an applicant is free to abandon his or her patent application at any time, and in many jurisdictions may "disclaim" his or her patent even after the patent is issued. Such abandonment may occur during the prosecution process, such as when the applicant is unable to convince the patent office to withdraw a rejection of his or her patent application. Further, abandonment is often held to have occurred if the applicant fails to respond within a certain time period to an office action issued by the patent office, or if the applicant specifically expresses his or her intention to abandon the application. Most patent applications have at least two components, including a general, written description of the invention and at least one "embodiment" thereof, and a set of "claims," written in a special style that defines exactly what the applicant regards as the particular features of his or her invention. These claims are used to distinguish the invention from the existing prior art, and are compared by the patent office to the prior art before issuing a patent. A search is conducted by the patent office for any prior art that is relevant to the application in question and the results of that search are notified to the Applicant in a search report. Generally the examiner conducting the search indicates in what aspect the documents cited are relevant (novelty, inventive step, background) and to what claims they are relevant. The materials searched vary depending on the patent office conducting the search, but principally cover all published patent applications and technical publications. A preliminary, non-binding, opinion on patentability may be provided with the search report in order to indicate to the Applicant the Patent Office's thoughts on an application such that they can decide how to proceed at an early stage. Search and examination is the principal part of the prosecution of a patent application leading to grant. The search report is typically published with the patent application, 18 months after the earliest priority date, or if it is not available at that time it is published once it is available. After drafting an application for patent, complying with any further rules (such as having the inventor or inventors review the application prior to filing), and obtaining the applicant's permission, the practitioner then files the patent application with the patent office. Usually, the practitioner seeks to file the application as soon as possible, because in a majority of jurisdictions (such as Europe and Japan) if two or more applications for the same subject matter are filed, then only the party who filed first will be entitled to seek a patent. This is known as the "first-to-file rule". In other jurisdictions (such as the United States, which uses a first-to-invent rule), early filing may prevent the use of certain materials from being applied against the patent application as prior art while the patent application is pending before the patent office. If the Examiner finds that the application does not comply with any requirements an examination report (Office Action in the US) is issued drawing the Examiner's objections to the attention of the Applicant and requesting that they be addressed. The Applicant may respond to the objections arguing in support of the application, and/or making amendments to the application to bring it in to conformity. Alternatively, if the Examiner's objections are valid and cannot be overcome, the application may be abandoned. | |
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