Chapter Two – Obtaining the Patent Grant

Chapter two covers the process of applying for and obtaining a patent from the United States Patent and Trademark Office.  This process is known by applicants as patent prosecution and by the examining corps as patent examination.  A basic understanding of the process is essential because of the far-reaching effects that choices made during prosecution can have on the strength, validity, and enforceability of the resulting patent.

In this chapter, the Sorensen Cup Holder Patent (the ‘497 patent) is used as an in-depth example, or case study.  Patent protection helped bring this invention to market through a commercial enterprise while simultaneously allowing the public to use the knowledge disclosed in the patent to develop new and better cup holders.  In fact, the ‘497 patent has been referenced in dozens of utility and design patents as prior art, including some granted as recently as late 2007.

 

• The United States Patent and Trademark Office
  • 35 USC 1-42 establishes and enables the United States Patent and Trademark Office.
  • The Manual of Patent Examining Procedure, or MPEP, serves as the rulebook for patent examiners.
  • Title 37 of the Code of Federal Regulations codifies the rules for practicing before the Patent Office.
• International Patent Practice
  • The World Intellectual Property Organization, or WIPO, works to harmonize patent law between countries through multilateral treaties, the most important of which for patent law is the Patent Cooperation Treaty, or PCT.
  • The European Patent Office and Japan Patent Office are the largest patent offices outside the United States.
  • WIPO maintains a list of patent offices (also called “industrial property offices”) throughout the world.
• Sorensen Cup Holder Patent 5,425,497
• Topliff v. Topliff, 145 U.S. 156 (1892)
  • Patent 108,085
    
  • Patent 122,079
    
  • Patent 123,937
    
• Seattle Box Co., Inc. v. Indus. Crafting & Packing, Inc. (Seattle Box I), 731 F.2d 818 (Fed.Cir.1984)
  • Patent 4,099,617
    
  • Re-issue Patent 30,373
    
• Seattle Box Co., Inc. v. Indus. Crafting & Packing, Inc. (Seattle Box II), 756 F.2d 1574 (Fed.Cir.1985)
  • See patents for Seattle Box I
• Mentor Corp. v. Copoblast, Inc., 998 F.2d 992 (Fed.Cir.1993)
  • Patent 4,475,910
    
  • Re-issue Patent 33,206