You have a great idea. Is patenting the best way to protect it? How much do patents cost? How do you find out if your idea is patentable?
Robert M. Hunter Registered Patent Agent Robert M. Hunter, Ph.D.

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by Robert M. Hunter, Registered Patent Agent

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Obtaining patent protection involves following patent rules - if we use the term "rules" loosely to mean all of the laws, regulations and procedures to be followed in obtaining patent protection. These rules reflect interpretations of national constitutions and laws and/or international treaties that govern how patent applications are to be prepared and filed and how patent prosecution is to proceed. There is an order of precedence among patent rules. In the U.S., all patent laws must be consistent with the U.S. Constitution, all patent office regulations must be consistent with patent laws, all patent office procedures must be consistent with patent office regulations, and so on.

It is important to realize that patent rules are not "written in stone." Rather they evolve over time as national laws and treaties and court interpretations of those laws and treaties change. Often, new or revised patent rules are a result from judicial (court) challenges to then-current interpretations undertaken by patent professionals representing patent applicants and patent owners just like you. For this reason, it is important that patent applicants read patent regulations and procedures in light of what they really are: the legal position of a patent office. A patent office is just one parties to the process of negotiation that is patent prosecution. Thus, in formulating patent rules, patent offices tend to err, when they err at all, on the side of "conservatism" - that is, on the side of denying patent protection to an applicant who might actually deserve such protection. The wise applicant keeps this tendency on the part of patent offices in mind when he/she refers to the rules they promulgate. Furthermore, just as a good scientist always reads the source material (e.g., original papers, etcetera), a wise patent applicant always reads the original patent law or treaty, in addition to patent office interpretations of it. Those admonitions apply to each of the documents included in the Patent Partner knowledgebase is described below.


Manual of Patent Examining Procedure (MPEP)

The Manual of Patent Examining Procedure (MPEP) is the "bible" of U.S. Patent and Trademark Office (USPTO) patent examiners. It is published by the USPTO to "provide Patent and Trademark Office patent examiners, applicants, attorneys, agents, and representatives of applicants with a reference work on the practices and procedures relative to the prosecution of patent applications before the Patent and Trademark Office." In addition to detailed information on USPTO practices and procedures, the MPEP contains the following reference material concerning U.S. laws, the Patent Cooperation Treaty and the Paris Convention as appendices:

U.S. Regulations Concerning Reporting Inventions to Research Sponsors

These regulations were published by the Assistant Secretary of Commerce for Technology Policy of the U.S. Department of Commerce as 37 CFR Part 401 - Rights to Inventions Made by Nonprofit Organizations and Small Business Firms under Government Grants, Contracts, and Cooperative Agreements.   They establish reporting requirements that are applicable to nonprofit organizations and small businesses conducting federally-funded research and development and allocation of patent rights to inventions that were either conceived or first actually reduced to practice during a Government-funded project.

Information on this topic is also available at Interagency Edison.

PCT Applicant's Guide

The PCT Applicant's Guide is published by the World Intellectual Property Organization (WIPO) to assist those preparing international patent applications under the Patent Cooperation Treaty (PCT)Volume I addresses issues that often arise during the international phase.  Annexes provide information on contracting nation states and sample forms.

European Patent Convention (EPC)

The European Patent Convention (EPC) is the agreement among European nation states that established the European patent system and governs the activities of the European Patent Office. Patent applications filed with the EPO either directly or via the PCT route must comply with the EPC.

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