Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 153

Upon completion of the review of your patent application, including the claims, which are covered in detail in Chapter 10, documents commonly known as the “formal papers” are completed and furnished to the USPTO along with the application. These papers constitute a Declaration (or Oath) that the inventor or inventor(s) sign, as described in Section 9.7.

Where the patent application has been prepared by a patent attorney or agent who will be responsible for the continued prosecution of the application through examination by the USPTO, a Power of Attorney form is executed by the inventor(s), providing the attorney or agent with the power to prosecute the application further on behalf of the inventor(s) or the applicant, such as the inventor’s employer.

If the invention is to be owned by a corporation or other entity or group of entities other than the inventor or inventors, an Assignment document is also signed by the inventors, granting all rights, title and interest, or portions thereof, of the invention and patent application to the assignee. The Assignment document, the formal papers, and the patent application are then submitted to the USPTO with the appropriate government filing fee. The Assignment document is recorded by the USPTO, and returned to your attorney.

An Application Data Sheet (ADS) is also filed with the application, identifying the title of the invention, the names and mailing address and country of residence of each inventor, correspondence information of the attorney or agent representing the inventor(s), prior patent applications related to the application being filed or upon which priority is based, foreign priority information, if applicable, and other information regarding the application. In addition, under the AIA and 37 CFR §1.605, it is now possible to designate as the applicant in the ADS the employer or other entity to whom the inventor(s) have assigned the invention, or to whom the inventor(s) are obligated to assign the invention pursuant to a contract or an employment agreement (the employment agreement is considered as a contract) or to a person who otherwise shows sufficient proprietary interest in the invention. The ADS is signed by the patent attorney or agent when completed.

In addition, to comply with the provision of the USPTO rules that the inventor and the inventor’s attorney must submit all material prior art that they are aware of to the Patent Examiner, it is normal practice for the patent attorney to prepare and file with the patent application, or shortly thereafter, an IDS, which lists all prior art known by the applicant and the attorney, for consideration by the Patent Examiner. The IDS consists of:

1 A list of all relevant U.S. patents and U.S. patent application publications known by the applicant and attorney for consideration by the Patent Examiner.

2 A legible copy of each foreign patent or patent application publication or portions thereof, and a legible copy of other literature information identified in the IDS.

3 An explanation of the relevance of any patent publication or other information not in the English language, and a copy of any translation of same if in the inventor(s) or attorney’s possession.

All the above formal documents are submitted to the USPTO along with the completed patent application to initiate the examination process. The IDS can also be submitted to the Patent Examiner at any time prior to the initial examination, without monetary penalty. Also, the inventor and the inventor’s attorney have a continuing obligation to submit material prior art they become aware of to the Patent Examiner up to the date the patent issues. This is an important point to remember, and cannot be stressed enough.

Your patent attorney will advise you that certain applicants may qualify for reduced government filing fees as “small entities” or “micro entities,” and what the criteria are for qualifying for the reduced fees. If the applicant(s) so qualify, the status of the applicant is provided with the initial information furnished to the USPTO when the patent application is filed.