1 John Calvert Supervisory Patent Examiner [email protected].
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Transcript of 1 John Calvert Supervisory Patent Examiner [email protected].
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WHAT IS A PATENT ?
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.Letters Letters PatentPatent
General InformationGeneral Information
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WHAT CAN BE PATENTED ?WHAT CAN BE PATENTED ?
MACHINE ARTICLE OF MANUFACTURE PROCESS COMPOSITION OF MATTER IMPROVEMENTS IN ANY OF THE
ABOVE
General InformationGeneral Information
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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 adequately described or enabled Are mere abstract ideas,laws of nature or natural
phenomena Are not clearly and concisely claimed
General InformationGeneral Information
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WHO MAY APPLY FOR A U.S. PATENT ?WHO MAY APPLY FOR A U.S. PATENT ?
Application must normally be in the inventor’s name.
Anyone...from anywhere may apply, with only one exception*
General InformationGeneral Information
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WHO MAY NOT APPLY ?WHO MAY NOT APPLY ?
Officers and employees of the U.S. Patent & Trademark Office
General InformationGeneral Information
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Types of Applications
Provisional Application
Non-Provisional Application
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Provisional Applications
Provisional Application
Is NOT Examined
Does NOT mature to a PATENT
Pendency lasts only 12 MONTHS
Establishes earliest Date of Priority for your invention
Simple filing requirements
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Provisional Applications
Provisional Application - Cont’ Filing Requirements:
Signed Cover Letter - available online Detailed ENABLING description of Invention including any
necessary Drawings. Must be in compliance with 35 USC 112 1st Paragraph
fee
Biggest Benefit: Adds up to ONE Year to Patent Term Gives time to perfect the filing of the Non-Provisional
Application Interim Patent Pending Rights
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Non-Provisional Applications
More complex filing requirements
Is examined by a Patent Examiner
May mature to a Patent
Last 20 years from date of filing
Can claim benefit to filing date of Provisional Application (if Provisional Application was previously filed)
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Non-Provisional Application
Application Requirements Written Description (Specification) Claim(s) - at least one Drawing(s) (usually required) Executed Oath and Declaration Fee
Filing Date Date Received in the USPTO Express Mail Certificate Certificate of Mailing will NOT establish filing Date
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Other Parts - Recommended
Transmittal Sheets Application Transmittal Fee Transmittal
Express Mail label Prior Art - Information Disclosure Statement Nucleotide or Amino Acid sequences - when
necessary Application Data Sheet - Print EFS
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Arrangement of ApplicationTitle,
Cross-Reference to Related Applications,
Statement Regarding Federally Sponsored Research or Development,
Background of the Invention,
Brief Summary of the Invention,
Brief Description of the Drawings,
Detailed Description of the Invention,
Claims,
Abstract, &
Drawings
Sequence or Computer Program Listings
Parts, Form and Content
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Application Preparation
Accurate Title
Our Example: IMPROVED PAPER CLIP
TITLE: PAPER CLIP WITH LATERAL SERATED INDENTATIONS FOR GRIPPING
Proper headings in written disclosure presented as double spaced document
Use generic terminology - avoid trade names
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Generic Terminology
Liquid Paper correction fluid
Mylar polyester film
Velcro hook and loop fastener
Lycra expanded polyurethane
Xerox electrophotographic copying machine
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Example of Disclosure Format
TITLE
PAPER CLIP WITH LATERAL SERATED INDENTATIONS FOR GRIPPING
BACKGROUND OF THE INVENTIONThis invention relates to paper clips…
SUMMARY OF THE INVENTIONThe invention is directed to a unique paper clip…
BRIEF DESCRIPTION OF THE DRAWINGSFIG 1 is a perspective view of…
DETAILED DESCRIPTION OF THE INVENTIONReferring to the figures of drawings…
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Abstract of the Disclosure
Limit to concise explanation of invention
do not use legal language (said, comprise, means, etc.)
provide structure not merits of invention
write as a quick look at the invention to draw interest
should be limited to a single paragraph Limit the Abstract to between 50 and 150 words
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Inventor Declaration
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Transmittal Letter
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Certificate of Mailing[Use for Post-Filing Correspondence]
I hereby certify that this correspondence is beingdeposited with the United States Postal Service withsufficient postage as first class mail in an envelopeaddressed to:
Assistant Commissioner for PatentsWashington, D.C. 20231on _________. (Date)
Typed or printed name of person signing thiscertificate: ___________________________Signature: ___________________________
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Certificate of Transmission[Cannot be used for application filing]
I hereby certify that this correspondence is being facsimiletransmitted to the United States Patent and TrademarkOffice, Fax No.(703) ____ - _______ on_________________ (Date).
Typed or printed name of person signing this
certificate: ___________________________
Signature: ___________________________
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Information Disclosure Statement [IDS]
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Assignment of Application
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Filing your Application
Use express mail [37 CFR 1.10] Include a self addressed post card identifying
all papers mailed to PTO (i.e., 14 pages of Specification, 5 claims, 3 drawings, etc.)
Identify the first page of all papers with applicant’s name and title of invention
Make copies of all correspondence to and from the PTO
Include all necessary Fees
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Forms of intellectual property protection
COPYRIGHTS - Library of Congress
TRADEMARKS - U.S. Patent & Trademark Office
PATENTS - U.S. Patent & Trademark Office
TRADE SECRETS
General InformationGeneral Information
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Forms of intellectual property protection
TRADEMARK - U.S. Patent & Trademark Office
Word, phrase, symbol or design, which identifies and distinguishes the source of the goods or services of one party from those of others.
Term - 10-year term with 10-year renewal terms
General InformationGeneral Information
Trade Secrets
Not protected by U.S. laws
No recourse for infringement
Works only if product cannot be reverse engineered
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Forms of intellectual property protection
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
General InformationGeneral Information
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Resources
http://www.uspto.gov 1-800-PTO-9199