InventHelp Sales Representative - Alonzo Rivera

Patent Application Amendments

NOTICE: The content of this page contains material from the United States Patent and Trademark Office Web site and is intended for purely informational use. It should in no way be construed as any type of legal advice whatsoever. InventHelp® cannot and does not perform legal services associated with the seeking of patent protection. InventHelp® does offer invention patent services by referring clients to an independent patent attorney or agent.

Amendments to Patent Applications

The applicant may amend before or after the first examination and action as specified in the rules, or when and as specifically required by the examiner.

After final rejection or action, amendments may be made canceling claims or complying with any requirement of form which has been made in an Office action. The admission of any such amendment or its refusal, and any proceedings relative thereto, shall not operate to relieve the application from its condition as subject to appeal or to save it from abandonment. If amendments touching the merits of the application are presented after final rejection, or after appeal has been taken, or when such amendment might not otherwise be proper, they may be admitted upon a showing of good and sufficient reasons why they are necessary and were not earlier presented.

No amendment can be made as a matter of right in appealed cases. After decision on appeal, amendments can only be made as provided in the rules.

The specifications, claims, and drawing must be amended and revised when required, to correct inaccuracies of description and definition or unnecessary words, and to provide substantial correspondence between the claims, the description, and the drawing. All amendments of the drawings or specifications, and all additions thereto must not include new matter beyond the original disclosure.

No change in the drawing may be made except by permission of the Office. Changes in the construction shown in any drawing may be made only by submitting new drawings.

Time for Reply and Abandonment

The reply of an applicant to an action by the Office must be made within a prescribed time limit. The maximum period for reply is set at six months by the statute which also provides that the Director may shorten the time for reply to not less than 30 days. The usual period for reply to an Office action is three months. A shortened time for reply may be extended up to the maximum six-month period. If no reply is received within the time period, the application is considered as abandoned and no longer pending. However, if it can be shown that the failure to prosecute was unavoidable or unintentional, the application may be revived by the Director.

Appeal to the Board of Patent Appeals and Interferences and to the Courts

If the examiner persists in the rejection of any of the claims in an application, or if the rejection has been made final, the applicant may appeal to the Board of Patent Appeals and Interferences in the United States Patent and Trademark Office. An appeal fee is required and the applicant must file a brief to support his/her position. An oral hearing will be held if requested upon payment of the specified fee.

As an alternative to appeal, in situations where an applicant desires consideration of different claims or further evidence, a request for continued examination CRCE or a continuation application is often filed. The continuation application is a new application which requires a filing fee and the applicant should include the claims and evidence for which further consideration is desired.

If the decision of the Board of Patent Appeals and Interferences is still adverse to the applicant, an appeal may be taken to the Court of Appeals for the Federal Circuit or a civil action may be filed against the Director in the United States District Court for the District of Columbia.

Interferences

Occasionally two or more applications are filed by different inventors claiming substantially the same patentable invention. The patent can only be granted to one of them, and a proceeding known as an "interference" is instituted by the Office to determine who is the first inventor and entitled to the patent. About one percent of the applications filed become involved in an interference proceeding. Interference proceedings may also be instituted between an application and a patent already issued, provided the patent has not been issued nor the application been published, for more than one year prior to the filing of the conflicting application, and provided also that the conflicting application is not barred from being patentable for some other reason.

Each party to such a proceeding must submit evidence of facts proving when the invention was made. In view of the necessity of proving the various facts and circumstances concerning the making of the invention during an interference, inventors must be able to produce evidence to do this. If no evidence is submitted a party is restricted to the date of filing the application as his/her earliest date.

The inventor who proves to be the first to conceive the invention and the first to reduce it to practice will be held to be the prior inventor, but more complicated situations cannot be stated this simply.

Allowance and Issue of Patent

If, on examination of the application, or at a later stage during the reconsideration of the application, the patent application is found to be allowable, a notice of allowance will be sent to the applicant, or to applicant's attorney or agent of record, if any, and a fee for issuing the patent is due within three months from the date of the notice. If timely payment of the issue fee is not made, the application will be regarded as abandoned.

When the issue fee is paid, the patent issues as soon as possible after the date of payment, dependent upon the volume of printing on hand. On the date of the grant, the patent file becomes open to the public for applications not opened earlier by publication of the application.

Nature of Patent and Patent Fees

The patent contains a grant to the patentee, and a printed copy of the specification and drawing is annexed to the patent and forms a part of it. The grant confers "the right to exclude others from making, using, offering for sale or selling the invention throughout the United States or importing the invention into the United States" and its territories and possessions for which the term of the patent shall be generally 20 years from the date on which the application for the patent was filed in the United States.

The exact nature of the right conferred must be carefully distinguished, and the key is in the words "right to exclude" in the phrase just quoted. The patent does not grant the right to make, use, offer for sale or sell or import the invention but only grants the exclusive nature of the right.

Maintenance Fees

All utility patents which issue from applications filed on and after December 12, 1980 are subject to the payment of maintenance fees which must be paid to maintain the patent in force. These fees are due at 3½, 7½ and 11½ years from the date the patent is granted.

Failure to pay the current maintenance fee on time may result in expiration of the patent.


Back to Patent Information

 

Find an InventHelp Office Near You!
Click Here For More Information
Get Our FREE Inventors Newsletter
Click For FREE Inventor Information or Call 1-800-INVENTION