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U.S. PATENTLAW 17the applicant is never allowed to introduce new matter
into the application.
The examiner often makes a subsequent Office Action
“final.” Certain rules apply when the applicant replies to a
final Office Action—for example, new claims cannot nor-
mally be added, and only certain amendments of a limited
nature are permitted—but a “final” Office Action is not as
final as it sounds.
If some claims are allowed in an Office Action, an ap-
plicant can, in his or her reply, cancel the rejected claims,
permitting a patent to issue with the allowed claims. A new
application, called a “continuation” can then be filed with
the rejected claims. (Note that this continuation applica-
tion must be filed while the parent application is pending,
that is, before the parent issues as a patent with the al-
lowed claims).
Alternatively, if no claims are allowed, the applicant,
in response to a Final Office Action, may file aRequest for
Continued Examination. For the equivalent cost of filing a
new application, the applicant is allowed to continue pros-
ecution without the finality of the final office action. In
older cases, filed before May 29, 2000, the applicant may,
while the first application is pending, file a continuation-
type application, called aContinued Prosecution Appli-
cationand allow the first application to become aban-
doned.
During the course of prosecution, it may be desirable
to file a new set of claims while allowing the original ap-
plication to proceed. For example, the applicant may de-
termine that aspects of the original application not pre-
viously claimed may be worth pursuing and may file the
same specification with a different set of claims, claiming
priority to the first application. This second application is
also known as a continuation application. It has its own
filing date, but because it claims priority to the first appli-
cation, it will expire (under the current statute) 20 years
from the application date of the first application (or the
date of the earliest application in the priority chain). If
new matter is added to the specification of a continua-
tion, for example, an improvement or a new configura-
tion, the new application is called a continuation-in-part
(CIP). A patent issuing on a CIP application, like other
utility patents, expires 20 years from the first application
to which the CIP claims priority.
In some cases, an examiner may decide that the claims
of an application really describe two or more inventions,
each requiring its own prior art search. In this case, the ex-
aminer may issue arestriction requirementin which the
examiner divides the various claims into different groups,
each pertaining to a different invention. The applicant is
then required to elect one of the groups and to cancel or
amend the remaining claims. The canceled claims can be
filed (while the original application is still pending) in one
or more applications known as “divisional” applications.
As with continuations, each divisional application has its
own filing date, but each must claim priority to the parent
and therefore has a term of 20 years from the filing date of
the parent (or the earliest filed application in the priority
chain).
Eventually, the applicant hopes, each application
(including parent, continuations, CIPs, divisionals) is
allowed. For a given allowed patent application, theapplicant pays an issue fee, and soon thereafter the patent
issues and is then in force. Although the term of a patent
is 20 years from the priority date, “maintenance” fees
must be paid at specific intervals from the date of issue or
the patent expires. Specifically, these intervals are 3 years
and 6 months, 7 years and 6 months, and 11 years and
6 months. A 6-month grace period is available for a sur-
charge.Appealing an Examiner’s Decision
If the applicant is unsatisfied with the examiner’s conclu-
sions as to unpatentability, the applicant can appeal to
the Board of Patent Appeals and Interferences within the
Patent and Trademark Office. Each appeal is heard by at
least three members of the board. An applicant who is un-
happy with the board’s decision may further appeal to the
U.S. Court of Appeals for the Federal Circuit (CAFC). The
CAFC makes a decision based only on the record from the
appeal to the board. Alternatively, an unhappy applicant
may file a civil suit against the director of the USPTO in
the U.S. District Court for the District of Columbia. Unlike
appeals to the CAFC, new evidence may be presented in
addition to the record from the appeal to the board.Publication and Provisional Rights
Applications filed on or after November 29, 2000, are pub-
lished roughly 18 months from the priority date, unless
the applicant specifically requests nonpublication, certi-
fying at the same time that the invention has not been and
will not be the subject of an application filed in another
country. Early publication can be requested. Applications
filed prior to November 29, 2000, but still pending as of
that date are not typically published, but publication may
be requested.
If a published application eventually issues as a patent,
with claims that are “substantially identical” to those pub-
lished in the application publication, the owner of the
patent may be entitled to a reasonable royalty, from the
time of the publication date up to the issue date, from
someone who makes, uses, offers for sale, or sells the
claimed invention in the United States or who imports the
claimed invention into the United States and who has ac-
tual notice of the published patent application. The rights
to these royalties are known asprovisional rights.Patent Term—How Long Does a Patent Last?
Patent protection begins on the day a patent issues. Be-
cause of a change in law in 1994 to conform to the
Uruguay Round of the General Agreement on Tariffs and
Trade (GATT), when a patent expires depends on when
the application was filed. Prior to the change in law, the
term of a U.S. utility patent was 17 years from the issue
date. Now, however, any U.S. utility patents issuing from
an application filed on or after June 8, 1995, are valid for
20 years from the priority date, that is, the date of the
earliest application to which the application claims pri-
ority (the earliest filing date in a chain of continuation
and divisional applications). Utility patents which were
still in force on June 8, 1995, or applications filed prior to
that date but still pending, receive the best of both worlds
(with regard to patent term): either 17 years from the issue
date or 20 years from the priority date, whichever is later.