Patents – An Overview

March 15th, 2016

Heidi R. Kelley Supervisory Patent Examiner – TC1700 Chemical and Material Arts

Setting the Stage

Objectives •  Patent basics •  Process of Filing a Patent Application •  Resources for Inventors, Innovators, and

Entrepreneurs

USPTO Alexandria Headquarters

Satellite Office Program

What is a Patent? •  A Property Right

– Right to exclude others from making, using, selling, offering for sale or importing the claimed invention

– Limited term – Territorial: protection only in territory that

granted patent; NO world-wide patent

Why get a Patent? •  A patent can:

–  Help to gain entry into, and deter others from, a market

–  Attract investors –  Be used as a marketing tool to promote unique aspects of

a product –  Be asserted against an infringer or competitor –  Be used as collateral to obtain funding and increase

leveraging power –  Create revenue – sell or license like other property

•  Patents are a form of property that can add value to a company’s assets

Pre-filing Decisions •  Should I file an application?

– Prior art search – Business plan – who will buy the invention?

•  When should I file? •  Where should I file? •  What type of application(s) to file? •  Who should prepare the application(s)?

Who Should File the Application? A Patent application can be filed by any of:

– Assignee (owner) of the invention – Person with sufficient proprietary interest –  Inventor!

Roadmap to Filing a Patent Application Video at https://www.youtube.com/watch?v=kmvAeCL0IHQ

What happens after I get my patent? •  Licensing •  Enforcement •  More innovation and competition •  Administrative Trials •  Litigation •  Etc…

When should you file? United States is a First Inventor to File System!

•  Looking for international protection? –  You must file before public disclosure

•  Only want U.S. protection? –  You can file within one year after your public disclosure

–  Better practice is to file a provisional application before disclosure

What should you file? •  Types of US Patents

– Utility: any new and useful process, article of manufacture, machine, or composition, or improvement thereof

– Design: a new original, and ornamental design for an article of manufacture

– Plant: any distinct and new variety of plant that is invented or discovered and asexually reproduced

Types of Patent Applications Provisional: •  One year period

•  Filed for filing date priority for later-filed non-provisional •  Not examined, so no patent

•  Not allowed for design

Non-Provisional: •  20-year patent protection from filing date

•  Examined for patentability

•  Claims required

Non-Provisional Utility Patents A utility patent may be granted for a new, nonobvious and useful (35 U.S.C. 101): •  Process •  Machine •  Article of manufacture •  Composition of matter •  Improvement of any of the above Non-provisional utility applications are the most common type of application received by the USPTO

What Does a Non-Provisional Utility Application Include?

•  Title •  Abstract

–  no more than 150 words •  Drawings

–  if necessary to explain invention •  Background of the Invention •  Brief Summary of the Invention •  Brief Description of the Drawings •  Detailed Description

–  how to make and use the claimed invention •  Claims

–  define your property right

Patent Examination Process Overview

USPTO Pre-Exam

Application is filed by Inventor or Assignee

Notice of Allowance

USPTO Grants Patent

APPLICANT EXAMINER

Amendment and/or argument

Appeal

Rejection and/or objection

Abandonment

Important Questions for Claim Drafting Prior to writing claims answer these questions:

!  What is the invention? !  What are the pieces and parts that make up the invention? !  How do the pieces and parts relate to one another? !  Do you have more than one invention?

!  Apparatus, machine, composition of matter ! Method of Making or Using

!  Are there multiple versions of each invention?

Help for Applicants

RESOURCES AND OPTIONS

STOPfakes.gov One-stop shop for U.S. government tools and resources (from multiple agencies) on intellectual property rights (IPR) Provides information and assistance on IPR protection including:

IPR protection in the U.S. IPR protection abroad How to report counterfeit and falsely labeled goods

Resources – USPTO on the web

www.uspto.gov

Features of the website

Apply online for a patent using EFS-Web Obtain status of a patent application Determine when an application will be picked up for examination (First Office Action Estimator) Access details of all currently pending published patent applications (Public PAIR) Search US patent database Search patent classification Download forms and fee schedules Information about Pro Se and Pro Bono programs Inventors Assistance Center (AIC), IP Awareness Assessment Tool, Patents Ombudsman Program, scam prevention

Inventor & Entrepreneurs Resources

Wide variety of resources to help Independent Inventors and Entrepreneurs Pro Se, Pro Bono, Education & Information, Current Events, State Resources, and more http://www.uspto.gov/learni ng-and-resources/inventors- entrepreneurs-resources

Provide access to resources such as PubEAST and PubWEST, examiner-based search systems Direct you to information and explain the application process and fee schedule Demonstrate how to use search tools to conduct a patent or trademark search Show you a directory of local patent attorneys who are licensed to practice before the USPTO Offer classes on intellectual property (varies by location) Offer assistance on how to do historical research patents and trademarks Show you how to track current research by company or nonprofit Help you find assignee information and much more

Pro Bono Program In general there are 3 basic requirements: Income below a certain threshold Knowledge of the patent system Possession of an actual invention (not just an idea) More information can be found at: http://www.uspto.gov/patents- getting-started/using-legal- services/pro-bono/patent-pro- bono-program

Pro Se Assistance Program

The Pro Se Assistance Program offers various services to the public, including: Dedicated personnel for assisting Pro Se Applicants Walk-in assistance for the general public at USPTO headquarters in Alexandria, VA Targeted support to connect applicants with relevant resources and information Online resources More information can be found at: http://www.uspto.gov/patents-getting-started/using- legal-services/pro-se-assistance-program

Basic Fees

Utility (Large Entity / Small Entity / Micro Entity) Basic filing fee: $280 / $140 / $70 Search fee: $600 / $300 / $150 Examination fee: $720 / $360 / $180 Issue fee: $960 / $480 / $240 Non-electronic filing fee: $400 / $200 / $200

Design (Large Entity / Small Entity / Micro Entity) Basic filing fee: $180 / $90 / $45 Search fee: $120 / $60 / $30 Examination fee: $460 / $230 / $115 Issue fee: $560 /$ 280 / $140

Micro Entity (75% reduction in most fees) The AIA defines a micro entity as an applicant who certifies that he/she: 1.  Qualifies as a small entity 2.  Has not been named as an inventor on more than 4

previously filed patent applications 3.  Did not, in the calendar year preceding the calendar year in

which the applicable fee is paid, have a gross income exceeding 3 times the median household income

4.  Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income.

Certification of Micro Entity Status Form PTO/SB/15A http://www.uspto.gov /sites/default/files/for ms/sb0015a.pdf

IP Awareness Assessment Tool •  The IP Assessment includes the 5 general categories that are included in all assessments.

•  IP Strategies & Best Practices International IP Rights

•  IP Asset Tracking Licensing Technology to Others Using Technology of Others

•  There are 5 additional categories that all can take or, which may be customized through a Pre-assessment.

•  Copyrights Design Patents Trademarks Trade Secrets Utility Patents

•  http://www.uspto.gov/inve •  n

tors/assessment/

Patent Application Initiatives

You can get to the program pages by

selecting a tile.

There are numerous programs that may speed up the examination process

http://www.uspto.gov/patent/initiatives/uspto-patent-application-initiatives-timeline

Track One – Prioritized Examination •  Goal to provide a final disposition within

twelve months, on average, of prioritized status being granted.

•  Fee – $4000/$2000 small entity as of 3/1/2015

•  Claim Limits – 4 Independent, no more than 30 claims

Resources •  Comprehensive Information and Training Material for First Inventor to File:

http://www.uspto.gov/patent/laws-and-regulations/america-invents-act-aia/patents-examination

•  Inventor Resources: http://www.uspto.gov/learning-and-resources/inventors-entrepreneurs-resources

•  IP Awareness Assessment Tool: http://www.uspto.gov/inventors/assessment/index.html

•  Patent Litigation: http://www.uspto.gov/patents-maintaining-patent/patent-litigation/patent-litigation

•  Pro Se Assistance Program: http://www.uspto.gov/patents-getting-started/using-legal-services/pro-se-assistance-program

•  Pro Bono Program: http://www.uspto.gov/patents-getting-started/using-legal-services/pro-bono

•  Manual of Patent Examining Procedure (MPEP): http://www.uspto.gov/patent/laws-and-regulations/manual-patent-examining-procedure

Thank You! Heidi R. Kelley, Esq. Supervisory Patent Examiner Heidi.Kelley@USPTO.gov