Legal Definitions - patent application

A patent application is a formal request submitted by an inventor to a government patent office, such as the U.S. Patent and Trademark Office (USPTO), to obtain a patent for their invention. This request typically includes a detailed written description of the invention, often accompanied by drawings, a formal statement of what the inventor claims as new and unique (called "claims"), and the payment of a filing fee.

• Example 1: A software engineer develops a new algorithm for secure data encryption. She prepares a detailed document explaining the algorithm, its unique features, and how it improves existing methods, then submits it to the USPTO with the required forms and fees.

  Explanation: This illustrates a patent application as the formal submission of an invention's details to the patent office to seek legal protection.

• Example 2: A team of biochemists invents a novel compound that effectively targets a specific type of cancer cell. They compile their research, chemical formulas, experimental results, and a clear explanation of the compound's mechanism of action into a submission for patent protection.

  Explanation: This demonstrates a patent application as the comprehensive package of information an inventor provides to the patent office to describe their new discovery.

• Example 3: An industrial designer creates an innovative, ergonomic tool for mechanics that significantly reduces strain. He commissions technical drawings, writes a comprehensive description of the tool's design and function, and files these documents with the patent office.

  Explanation: This shows a patent application as the formal process of presenting an invention, including its design and functionality, to secure exclusive rights.

Types of Patent Applications:

An allowed application is a patent application for which a patent examiner at the USPTO has determined that all the claims describing the invention meet the legal requirements for patentability. This means the invention is considered new, useful, and non-obvious, and the patent is ready to be issued once final fees are paid.

• Example 1: After several rounds of communication and minor adjustments to the claims, a startup receives a "Notice of Allowance" for their application covering a new drone navigation system. This indicates the USPTO examiner agrees their invention is patentable.

  Explanation: The "Notice of Allowance" signifies that the application has been approved by the examiner, making it an allowed application.

• Example 2: A university researcher's application for a new method of purifying water has successfully passed examination. The patent office sends official notification that the application is "allowed," paving the way for the patent to be issued once final fees are paid.

  Explanation: The official notification of "allowed" status confirms that the invention has met all patentability criteria.

An application for a reissue patent is a request made by a patent holder to the patent office to correct or change an already issued patent. This is typically done to fix errors, clarify the scope of the patent's claims, or broaden the claims if done within two years of the original patent's issue date.

• Example 1: A company discovers a minor clerical error in the original patent for their specialized medical device, where a chemical formula was misprinted. They file an application for a reissue patent to correct this mistake without affecting the patent's core protection.

  Explanation: This demonstrates using a reissue application to fix a factual error in an already granted patent.

• Example 2: After their patent for a new type of solar panel was issued, inventors realize that the initial claims were too narrow and didn't fully cover all aspects of their invention, potentially allowing competitors to easily circumvent it. Within the two-year window, they file a reissue application to broaden the scope of their claims.

  Explanation: This shows a reissue application being used to expand the legal protection of an invention by broadening its claims within the permitted timeframe.

A child application is a patent application that is filed later than an earlier, related application (known as the "parent application") and shares some of the same subject matter. It is part of a chain of applications that maintain a connection to the original filing date, allowing the inventor to pursue different aspects or variations of their invention.

• Example 1: A company initially files a broad patent application for a new type of electric vehicle battery. Later, they file a "child application" specifically detailing a novel cooling system for that battery, ensuring it benefits from the earlier filing date of the main battery patent.

  Explanation: The cooling system application is a child application because it builds upon and is related to the earlier battery application, inheriting its priority date.

• Example 2: An inventor has an application pending for a new type of robotic arm. During the examination process, they decide to file a separate "child application" focusing solely on a unique gripper mechanism that was described in the original but deserves its own distinct patent protection.

  Explanation: The gripper mechanism application is a child application, spun off from the broader robotic arm application to claim a specific inventive feature.

A Continued-Prosecution Application (CPA) is a type of request, primarily for applications filed before May 29, 2000. It allowed an applicant to abandon a patent application after it received a final rejection and immediately reopen a new case using the same file and information as the original. This was a way to continue the examination process without losing the original filing date. (For applications filed after this date, a "Request for Continued Examination" (RCE) is used instead).

• Example 1: In 1999, an inventor's application for a specialized engine part received a final rejection from the USPTO. To avoid losing the original filing date and continue arguing for patentability, they filed a CPA to restart the examination process with new arguments and claim amendments.

  Explanation: The CPA allowed the inventor to continue pursuing the patent after a final rejection, preserving the original filing date.

• Example 2: A company had a patent application for a new manufacturing process pending since the late 1990s. After receiving a final office action, they used a CPA to submit additional evidence and arguments, effectively keeping the application alive and under review without having to file an entirely new application.

  Explanation: This illustrates the use of a CPA to extend the examination of an application and submit further information after a final decision.

A continuing application is a broad category of patent applications that are filed while an earlier, related application (the "parent application") is still pending. These applications share common subject matter with the parent and benefit from its original filing date, allowing inventors to pursue different aspects or variations of their invention. This category includes continuation, continuation-in-part, divisional, and reissue applications.

• Example 1: A tech company files an initial patent application for a novel virtual reality headset. While that application is still being reviewed, they file a "continuing application" to specifically claim a new haptic feedback system they developed for the headset, ensuring both aspects are protected.

  Explanation: The haptic feedback system application is a continuing application because it is filed while the main headset application is pending and relates to the same core invention.

• Example 2: An inventor submits a patent application for a unique type of biodegradable plastic. Later, while the first application is pending, they discover a new, more efficient manufacturing process for that plastic. They file a "continuing application" to cover this new process, linking it to the original plastic invention.

  Explanation: The application for the new manufacturing process is a continuing application, allowing the inventor to add new, related inventive subject matter while maintaining the priority of the original plastic invention.

A Convention application is a patent application filed in a country that is a member of an international treaty, such as the Paris Convention or the Patent Cooperation Treaty (PCT). This allows an applicant to claim the filing date of an earlier application filed in another member country, providing a grace period to file in multiple countries without losing priority.

• Example 1: A German company first files a patent application for a new automotive safety system in Germany. Within 12 months, they file a "Convention application" in Japan, claiming the benefit of their German filing date under the Paris Convention, ensuring their invention is protected in both markets.

  Explanation: By filing a Convention application, the company secures the priority date from their initial German filing for their Japanese application, as both countries are part of the Paris Convention.

• Example 2: An American inventor files a provisional patent application in the U.S. A few months later, they decide to seek protection in Canada and Mexico. They file "Convention applications" in those countries, referencing their U.S. filing date to establish priority under international agreements.

  Explanation: The applications in Canada and Mexico are Convention applications because they leverage the earlier U.S. filing date under international treaty provisions.

A divisional application is a type of continuing application filed when a patent examiner determines that the original application describes more than one distinct invention. The applicant is then required to choose one invention to pursue in the original application, and they can file "divisional applications" for the other inventions, maintaining the original filing date.

• Example 1: An inventor files a patent application for a new type of smart home device that includes both a unique motion sensor and an innovative voice recognition system. The examiner rules that these are two separate inventions. The inventor then files a "divisional application" specifically for the voice recognition system, while continuing to pursue the motion sensor in the original application.

  Explanation: The voice recognition system application is a divisional application, created to pursue a separate invention identified by the examiner, while retaining the original filing date.

• Example 2: A company submits a patent application for a new agricultural drone that features a novel spraying mechanism and an advanced crop analysis sensor. The USPTO issues a "restriction requirement," stating these are distinct inventions. The company files a "divisional application" for the crop analysis sensor, ensuring both inventions are protected under the original filing date.

  Explanation: The crop analysis sensor application is a divisional application, filed in response to the examiner's requirement to separate distinct inventions within the initial application.

A grandparent application is the very first patent application in a chain of at least three related applications (e.g., parent, child, grandchild applications) that all share common subject matter and maintain a claim to the earliest filing date.

• Example 1: A researcher files an initial patent application for a foundational genetic sequencing technique (the "grandparent application"). Later, they file a "parent application" for a specific diagnostic test using that technique, and then a "child application" for a kit to perform that test. All three applications trace their priority back to the grandparent.

  Explanation: The initial genetic sequencing technique application is the grandparent because it's the earliest in a series of three or more related applications.

• Example 2: A company develops a new material for lightweight aircraft construction and files the initial patent (the "grandparent application"). Subsequently, they file a "parent application" for a specific manufacturing process for that material, and then a "child application" for a particular aircraft component made from it, all linked to the original material patent.

  Explanation: The patent for the new material is the grandparent application, providing the foundational priority date for the subsequent related applications.

An informal application is a patent application that does not meet the specific formatting or presentation requirements set by the patent office. While it might contain all the necessary inventive information, its physical or digital presentation is flawed (e.g., illegible text, incorrect paper size, missing signatures). Such an application can usually be corrected while retaining its original filing date.

• Example 1: An inventor submits a patent application where some of the technical drawings are blurry and difficult to read. The USPTO notifies them that it is an "informal application" due to legibility issues, requiring them to resubmit clearer drawings.

  Explanation: The blurry drawings make the application informal, as it fails to meet the clarity requirements for presentation.

• Example 2: A small business owner files an application, but accidentally prints the entire specification on both sides of the paper, which is against patent office rules. The application is deemed "informal," and they must resubmit it in the correct single-sided format.

  Explanation: Printing on both sides violates a formatting rule, making the application informal despite the content being correct.

An International Application, also known as a PCT application (where PCT stands for Patent Cooperation Treaty), is an application filed under the Patent Cooperation Treaty. This allows an inventor to seek patent protection for an invention simultaneously in many countries by filing a single application. This streamlines the initial filing and search process, providing more time to decide in which specific countries to pursue national patents.

• Example 1: A multinational electronics company invents a new smartphone component. Instead of filing separate applications in dozens of countries immediately, they file a single "PCT application" to initiate the patent process globally, giving them 30 months to decide on national filings.

  Explanation: The single PCT application allows the company to begin the patent process in multiple countries efficiently, deferring the decision on specific national filings.

• Example 2: A biotechnology startup in Canada develops a groundbreaking medical diagnostic tool. To explore market opportunities worldwide, they file an "International Application" under the PCT, which allows them to conduct a global patent search and examination before committing to expensive national phase filings in specific countries like the U.S., Europe, and Japan.

  Explanation: The PCT application provides a unified approach to seeking patent protection across many territories, simplifying the initial stages of international patenting.

An International Application Designating the United States is an application filed under the Patent Cooperation Treaty (PCT) where the applicant specifically indicates that they are seeking patent protection for their invention within the United States, in addition to potentially other PCT member countries.

• Example 1: A British inventor files a PCT application in London, and among the countries they select for potential patent protection, they explicitly "designate the United States." This means their international application will eventually proceed into the U.S. national patent system if they choose to pursue it.

  Explanation: By designating the U.S., the inventor signals their intention to seek a U.S. patent through the international PCT process.

• Example 2: A Japanese automotive company files an international application with the World Intellectual Property Organization (WIPO) and includes the U.S. as a designated country. This signifies their intent to eventually obtain a