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Patent prosecution

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United States Edit

Under the Patent Act of 1952, inventors must prepare and submit applications to the U.S. Patent and Trademark Office ("USPTO") if they wish to obtain patent protection.[1] USPTO officials known as examiners then assess whether the application merits the award of a patent.[2]

Requirements for patentability Edit

In deciding whether to approve a patent application, a USPTO examiner will consider whether the submitted application fully discloses and distinctly claims the invention.[3] In addition, the application must disclose the "best mode," or preferred way, that the applicant knows to practice the invention.[4] The examiner will also determine whether the invention itself fulfills certain substantive standards set by the patent statute. To be patentable, an invention must be useful, novel and nonobvious.[5]

The requirement of usefulness, or utility, is satisfied if the invention is operable and provides a tangible benefit." To be judged novel, the invention must not be fully anticipated by a prior patent, publication or other knowledge within the public domain.[6] A nonobvious invention must not have been readily within the ordinary skills of a competent artisan at the time the invention was made.[7]

Trade secrets Edit

U.S. law provides that until the patent is issued, the information contained in the application for a patent remains secret, and therefore may be protected as a trade secret. Information beyond that required for inclusion in the patent to meet the enablement and best mode requirements can also be reserved for trade secret protection.

References Edit

  1. The 1952 Patent Act, as amended, is codified in 35 U.S.C. §1 et seq.
  2. 35 U.S.C. §131.
  3. Id. §112.
  4. Id.
  5. Id. §101.
  6. Id. §102.
  7. Id. §103.

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