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The final section of a patent is the most important but also potentially the most confusing to persons not familiar with patent law. This section is the patent claims. The claims of the patent are the numbered sentences at the end of the patent that actually define what is protected by the patent; if an invention is not in the claims then it is not protected. Any part of the invention disclosed in the specification but not contained in the claims will not be protected by that patent.
Indeed, if something is disclosed in the specification but not in the claims it may constitute a dedication to the public of the disclosed but unclaimed subject matter, thereby making it impossible to ever obtain a patent on those portions. Therefore, it is crucial that every aspect of the invention that an inventor wants protected is included in the claims.
Yet even with the clear guidelines that all the protected subject matter must be contained in the claims, the claims themselves may be incomprehensible without a firm understanding in patent law. Imagine trying to read a story in a language that you are not fluent in; you may know at least one translation of each of the words, but without a full understanding of all possible definitions and how the words and sentences interrelate it is difficult to completely understand what is being said.
This can be especially dangerous in attempting to decipher the scope of protection of a patent because the wrong interpretation may open an individual or company to millions of dollars of liability. As discussed below, this is an important reason to seek specialized help when dealing with patents
Obtaining a patent is done through the USPTO through a process known as prosecuting the patent. Prosecuting a patent typically begins with filing an application with the USPTO. The application can be a standard patent application or a provisional application. A provisional application is similar to a standard patent application but the USPTO does not examine the application.
Instead it serves to hold a priority date for one year which allows the filer to decide whether to pursue the application. The provisional application is often an attractive option for small and mid-sized game companies as it costs significantly less then filing a normal non-provisional application. If the filer ultimately determines to go ahead with a regular application it gives one year to raise funds for the application process.
Once a standard patent application is filed or a provisional application is converted to a standard application after one year, an examiner of the USPTO will examine the application to determine whether the claims contained in the application should be allowed. When the examiner has made her determination regarding the patent she will issue what is known as an Office Action.
The Office Action sets forth the USPTO’s decision regarding the patentability of the subject matter of the application. In this decision the patent can either be allowed, rejected for failing to meet the requirements of the statute, or objected to for failing to comply with the rules and formalities of the patent statute. If the patent application is allowed the patent is then allowed to issue. On the other hand, if the examiner finds that the application is unacceptable then the applicant has an opportunity to address the examiner’s concerns either by arguing that the examiner is wrong or by amending the application to comply with the patent statute.
It is rare that a patent will issue on the first office action. More commonly, several exchanges between the examiner and the applicant are required before both parties can agree on a specification and claims that are allowable.
This is not a perfect process. Examiners frequently have less than 8 hours to review a patent and the relevant prior technology before making a determination on whether a patent should be granted. This can lead to patents not getting allowed that should be allowed, and patents being allowed that on closer examination should not have been allowed.
To some degree this is addressed by the applicant’s duty of candor to disclose anything that it is aware of that will help the USPTO make its decision fairly and efficiently. However, unlike some foreign countries, the applicant has no duty to make an affirmative search for art that may be relevant to the determination. This has created in the United States a situation where it is often better to do no searching so as not to find anything that may potentially prevent a patent from issuing.
The timeline to obtain a patent can seem very daunting. From the time a patent application is submitted to the PTO to the grant of the patent can take several years. This can be both beneficial and detrimental to a patent applicant. It can be beneficial because this allows the applicant to spread the cost of the prosecution of the patent out through many years. While this may help the applicant financially it may not be the best strategy because of how the term of the patent is calculated. Generally the patent term is 20 years from the filing date of the patent.3 This is important because although an issued patent expires 20 years from application for the patent, no protection is provided by the patent until it actually issues.
3 Although this can be extended based upon delay by the USPTO (delay attributable to the applicant will not increase the term of the patent), 20 years is a good rule of thumb.