Suppose you’re an inventor and you’ve just created the next great widget. You want to patent it before Steve Jobs steals your idea, so you file a patent application with the U.S. Patent and Trademark Office (PTO). You exchange a bunch of correspondence with them, and eventually they issue you a patent. We call this whole process patent prosecution. As an inventor, you are allowed to handle all of this yourself, but if your invention truly is great, then you’re probably better off hiring a patent professional to help you through the process.

In order to prosecute applications before the PTO on behalf of an inventor, one must pass the patent bar, which is separate from the normal state bar one must pass to practice law. Sitting for the patent bar doesn’t require one to have a law degree, but there are requirements for technical degrees and such. Someone who has passed the patent bar but is not a lawyer is a patent agent while a lawyer who has passed the patent bar is referred to as a patent lawyer. Law firms also employ people who have the technical background to be a patent agent but have not (yet) passed the patent bar; such people are generally called technical advisors, though they may have a different title.

In order to qualify for a patent, a new widget must be novel and, more importantly, a non-obvious improvement or combination of existing devices. All of the existing devices in the same field as the new widget is referred to as the state of the art, and devices that are similar to the widget comprise prior art.

When the PTO evaluates your patent application,  the patent examiner looks at the state of the art and the prior art to evaluate novelty and obviousness. The examiner, as a representative of the PTO, issues an office action that details his comparison of the widget to the prior art and his reasons for approving or denying your application. In the event the application is denied, the inventor or his representative (i.e. patent professional) files a response to the office action and argues that his invention is, in fact, novel and non-obvious. The two sides go back and forth until the patent is allowed or the inventor decides that continued prosecution and appeals aren’t worth his money.

Questions or suggestions? Let me hear them in the comments.