The Patent Process at the USPTO

thickbugΛογισμικό & κατασκευή λογ/κού

28 Οκτ 2013 (πριν από 4 χρόνια και 9 μέρες)

131 εμφανίσεις

1

The Patent Process at the USPTO

Ram R.
Shukla

and Angela Ortiz

Resource Supervisory Patent Examiners

Elijah J. McCoy
-

Detroit Satellite Office

United States Patent and Trademark Office

300 River Place, Detroit, MI 48207

(313) 446
-
4800

ram.shukla@uspto.gov

angela.ortiz@uspto.gov

www.uspto.gov

Forms Of Intellectual Property
Protection


Patents


granted by U.S.
Patent & Trademark Office


Trademarks

-

registered
with U.S. Patent & Trademark
Office


Copyrights

-


registered by
Library
of Congress


Trade Secrets

2

A grant by the U.S. Government
conferring to an inventor the right to
exclude others from the:


manufacture


sale or offering for sale


use


or importation of
her/his invention
in/into
the U.S.

Letters

Patent

What is a Patent?

3

What is a Trademark?



Trademarks
-

symbols or slogans that
represent goods or services
-

can last
indefinitely as long as they are not allowed
to become generic



Term


10
-
year term with 10
-
year renewal
terms


4

What is a Copyright
?

Copyright

-

Library of Congress


Protects “original works of
authorship” including literary,
dramatic, musical, artistic and
certain other intellectual
works.


Term
-

Author’s life + 70 years

5

What is a Trade Secret?

Trade Secrets
-

based on contracts
-

may offer
protection indefinitely


“FORMULA”

“RECIPE”

6

Patent Fundamentals

U.S. system is a quid pro
quo


The inventor
discloses

the invention to the government
in
specific terms


The government grants
exclusive rights

to the inventor

Constitutional Authority


Congress shall have the power…”to promote the progress of
science and useful arts by securing for limited times to
authors and inventors the exclusive right to their respective
writings and disclosures…” U.S. Const. art 1, sect 8 cl 8

7

Facts



Fiscal Year 2011
-

536,013
utility, design, & plant
applications received.


Fiscal Year
2012

-

564,354
utility, design, & plant
applications received(5.3% increase)


Fiscal
Year
2013 as of March
-

269,337
utility, design
patents, & plant patents received


8

What Is The Effective Life Of A
Patent ?

Term
-

20 years
from filing
(applications filed
after June 8, 1995)

9

Design Patents

Design patents protect the way an
object appears

10

What Can Be Patented ?


Machine


Article of manufacture


Process


Composition of matter


Improvements in any of
the above

11

What Cannot Be Patented?

Inventions which:


are NOT NEW (lack novelty)


were “made PUBLIC” more than
one year prior to patent
application filing date


are OBVIOUS variations of
known technology


lack UTILITY (or usefulness)


are not CLEAR
(incomprehensible)

12

Who May Apply For A U.S.
Patent?






Anyone...from anywhere may apply, with
only one exception*


Application must normally be in
the inventor’s name.

13

Who May Not Apply ?

Officers and employees of the U.S.
Patent & Trademark Office

14

United States Patent and Trademark
Office Alexandria, VA

15

16

Patents Nationwide Workforce

Satellite Office Model



Regional examiners assigned to an Art Unit at
Headquarters (HQ)


Regional examiners remain at Satellite Office


HQ SPE will review and sign Office Actions


HQ SPE will be rating official for regional examiners


Training done at regional facility using current
collaboration systems


Incoming patent applications and follow
-
on papers
will still be filed to HQ

17

18

Elijah J. McCoy Satellite Office

300 River Place,
Detroit

Patents Nationwide Workforce: Regional Office

Elijah J. McCoy

19


Detroit Office Features for
Business

Public Search


Public Search terminal(s) connected to USPTO’s
internal search tools offer access to the world’s
leading databases of prior art to search patentability

Communication
with USPTO Examiners and
Management


Conference rooms to support video conference and
live interviews between inventors, practitioners and
patent examiners


USPTO personnel available live and by video
-
conference to answer
questions

Small Business Assistance


Hotline
access to USPTO inventor assistance center

20

Patent Examination


Read and
understand
specification


Determine patentability


Determine whether
spec is adequate


Write/mail a legal office
action on the patentability


Determine scope of
the claim



Respond to applicants
response


Search existing
technology for
claimed invention


Issue patent or
abandonment

21

Examination Process

Allowance

First
Examination

First

Examination

Notice

of

Allowance

Second
Examinatio
n

Amendment

Second

Examination

Appeal
Process

Appeal Brief

Appeal

Process

Rejection

22

Patent “Claims”


The “heart” of the patent grant.


Specific definition of the invention.


Metes and bounds of the patent
coverage

23

Patent “Claims”


US
8,000,000

Visual Prosthesis configured to provide
neural stimulation for the creation of
artificial vision

24

Claims


Example (
cont
)

US PATENT 8,000,000

A Visual Prosthesis apparatus comprising:


A camera for capturing a video image;


A video processing unit associated with the camera, the video processing
unit configured to convert the video image to stimulation patterns, the
video processing unit is configured to stop transmitting the stimulation
patterns to the retinal stimulation system when the retinal stimulation
system does not transmit valid back telemetry data; and


A retinal stimulation system configured to stop stimulating neural tissue in a
subject’s eye, and return an error signal to the video processing unit,
based on the stimulation patterns when an error is detected in a forward
telemetry received from the video processing unit.



25

Examiner Tools


PALM


P
atent
A
pplication
L
ocating and
M
onitoring


EAST


E
xaminer
A
utomated
S
earch
T
ool


WEST


W
eb
-
based
E
xaminer
S
earch
T
ool


OACS


O
ffice
A
ction
C
orrespondence
S
ubsystem (
eRed

folder)


IFW


I
mage
F
ile
W
rapper


eDAN



e
lectronic
D
esktop
A
pplication
N
avigator


MADRAS

26

USPTO Initiatives for Expedited
Examination of Applications


Accelerated Examination
http
://
www.uspto.gov/patents/process/file/accelerated/index.jsp



Track One
http
://
www.uspto.gov/patents/init_events/Track_One.jsp



Patent
Prosecution Highway
http
://
www.uspto.gov/patents/init_events/pph/index.jsp

27

USPTO Initiatives for Compact
Prosecution and Pendency Reduction


Quick Path Information Disclosure Statement (QPIDS)
http
://
www.uspto.gov/patents/init_events/qpids.jsp



After
Final Consideration Pilot (
AFCP)
http
://
www.uspto.gov/patents/init_events/afcp.jsp


28

29

USPTO Resources for Inventors


Patent Assistance Center


Trademark Assistance Center


Inventors Eye eNewsletter


On
-
line chats, Bi
-
monthly


Experts answer questions


Transcripts on
-
line

USPTO Resources for Inventors

Pro Bono Pilot Program


Pilot in Minnesota


Both private and corporate attorney
involvement


Bundled and unbundled services


501 (c)(3) administrator


LegalCORPS of Minneapolis


Matches clients with volunteer attorneys


Inventors investment of time and money


USPTO Certification training, patent search,
financial limit plus $1000 admin cost

30

USPTO Resources for Inventors


Ombudsman Program


enhance
the USPTO’s ability to assist applicants
with
issues that arise during patent application
prosecution



when there is a breakdown in the normal
prosecution process, the Ombudsman Program can
assist in getting the process back on
track



USPTO is now creating a Small Business specific
ombudsman program


Email:
OmbudsmanProgram@uspto.gov


31

Inventor Resources

USPTO

http://www.uspto.gov/


32


First
-
time Filers
S
tart
H
ere!



Search Patents

File an Application or Documents

Check Status of an Application

33

http://www.uspto.gov/patents/index.jsp



IP Awareness Assessment Tool



34

Check your Awareness of
the various aspects of IP

10 Categories of IP Covered:


Utility Patents


Trademarks


Copyrights


Trade Secrets


Design Patent


IP Strategies & Best
Practices


Using Technology of Others
Licensing Technology to
Others International IP
Rights and IP Asset Tracking

http://www.uspto.gov/inventors/assessment/

AIA Enactment

Timeline

35

Reexamination transition for
threshold

Tax strategies are deemed
within prior art

Best mode

Human organism
prohibition

OED
s
tatute
of
limitations

Day of Enactment

Sept 16, 2011

Prioritized
Examination

15% transition
Surcharge


10 Days

Sept 26, 2011

Reserve
Fund


Electronic
filing
incentive


Inventor’s
oath/declaration


Preissuance
submission


Supplemental
examination


Citation
of prior art in a
patent file


Inter
partes
review


Post
-
grant
review


Transitional

post
-
grant review
program for covered
business method
patents


First inventor to file


Derivation
proceedings


Repeal
of
statutory
i
nvention
registration


New patent fees


Micro entity
discount


Oct 1, 2011

6
0 Days

Nov 15, 2011

12 Months

Sept 16, 2012

18 Months

Mar 2013

Provisions are enacted

AIA Impact on pre
-
AIA 35 U.S.C. 102

Pre
-
AIA 35 U.S.C. 102

A

person shall be entitled to a patent unless


AIA 35 U.S.C. 102

Concordance

(a)

the invention was known or used by others in this country, or patented or described in a printed publication in this or a
foreign country, before the invention thereof by the applicant for patent, or


102(a)(1)

(b)
The invention was patented or described in

a printed publication in this or a foreign country or in public use or on sale
in this country, more than one year prior to the date of the application for patent in the United States, or

(c)

He has abandoned the invention, or


No corresponding

provision


(d)

The invention

was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the
applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in thi
s
country on an application for patent or inventor’s certificate filed more than twelve months before the filing date of the
application in the United States, or

(e)
The invention

was described in

(1)
An application for patent, published under section 122(b), by another filed in the United States before the invention
by the applicant for patent or

(2)
A patent granted on an application for patent by another filed in the United States before the invention by the
applicant for patent, except than an international application filed under the treaty defined in section 351(a) shall have
the effects for the purposes of this subsection of an application filed in the United States only if the international
application designated the United States and was published under Article 21(2) of such treaty in the English
language, or

102(a)(2)

(f)

He did not himself invent the subject matter sought to be patented, or

101 and 115

(g)


(1)
during the course of an interference conduced

under section 135 or section 291, another inventor involved therein
establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made
by such other inventor and not abandoned, suppressed, or concealed, or

(2)
Before such person’s invention thereof, the invention was made in this country by another inventor who had not
abandoned, suppressed, or concealed it.





No corresponding

provision


36

Abandonment of invention

Premature foreign patenting


Prior invention by another

Derivation

AIA Statutory Framework

37

Prior

Art

35 U.S.C. 102(a)

(Basis for Rejection
)

Exceptions

35 U.S.C. 102(b)

(Not Basis

for Rejection
)

102(a)(1)

Disclosure

with Prior
Public Availability Date

102(b)(1)


(A)

Grace Period Disclosure by Inventor or
Obtained from Inventor

(B)

Grace Period Intervening

Disclosure by
Third Party

102(a)(2)

U.S. Patent,

U.S. Patent Application,
and PCT Application
with Prior Filing

Date

102(b)(2)

(A)

Disclosure Obtained from Inventor

(B)

Intervening

Disclosure by Third Party

(C)

Commonly

Owned Disclosure


Otherwise Available to the Public”


Introduced by the AIA; no corresponding
language in pre
-
AIA 35 U.S.C. 102



Catch
-
all to account for other means of making
an invention publicly available

38

AIA Resources


Statutory Framework
Chart:
http://
www.uspto.gov/aia_implementation/FITF_card.pdf




FAQs:
http
://
www.uspto.gov/aia_implementation/faqs_first_inventor.jsp




Examiner Introductory Video:

http://helix
-
1.uspto.gov/asxgen/AIA Close
Cpt.wmv




Examiner Overview Training Slides: (available on AIA micro
-
site soon)



Examiner Follow
-
up Video: (available
on AIA micro
-
site
soon)

39

AIA Help


1
-
855
-
HELP
-
AIA (1
-
855
-
435
-
7242
)



HELPAIA@uspto.gov



www.uspto.gov/AmericaInventsAc
t

40

Thank You

41