Draft Patent Rights Training Course - Miami University · Web viewI. Nature of a Patent and Patent...

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Patent Rights Training Course

I. Nature of a Patent and Patent Rights

A. A patent is a personal property grant that the Government gives an inventor. The grant confers the right to exclude others from making, using, offering for sale, or selling the invention throughout the U.S., provided that maintenance fees are paid, for a term generally of 20 years from the earliest date the application was filed with the U.S. Patent and Trademark Office (PTO).

1. Three Types of Patents

a. Utility Patents- are granted to inventors who discover or invent any new and useful process, machine, article of manufacture or compositions of matter, or any new improvement to such inventions. Examples include Velcro hooks and loop fasteners, semiconductor manufacturing processes, new drugs. Pressman, David, Patent It Yourself, 9 th Edition , Nolo Press, Berkeley, CA, 2002

b. Design Patents – are granted to anyone who invents a new, original and ornamental design (including a computer screen). Uniqueness must be purely ornamental. If functional, the inventor must apply for a utility patent. ibid

c. Plant Patent – granted to asexually reproduced plants but both sexually and asexually reproducible plants can be covered by utility patents.

2. Requirements for Patentability

a. An invention must be new (novel and unobvious). That is, the invention is patentable only if (i) the invention was neither known nor used by others in the U.S., nor patented or described in a printed publication before the applicant’s invention; OR (ii) the invention was patented or described in a printed publication in the U.S. or a foreign country or in public use or on sale in the U.S. less than one year prior to the application for patent.

b. If the invention is publicly disclosed (not disclosed pursuant to a non-disclosure agreement (NDA) or put on sale, the

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inventor has one year from the public disclosure date to file for a patent.

c. Foreign patent filing laws are more stringent than U.S. patent filing laws. Filing must be on or before the date of public disclosure or public use. ANY type of disclosure not covered by an NDA (whether by word of mouth, demonstration, advertisement or article in a journal), by the inventor or anyone acting for him/her can prevent the inventor-applicant from getting a patent.

d. AN INVENTOR MUST NOT DISCLOSE THE INVENTION TO ANY PERSON WITHOUT OBTAINING FROM THAT PERSON A PROPERLY SIGNED NON-DISCLOSURE AGREEMENT.

II. How to Patent and What to Consider When Thinking About Patenting

A. Documenting Conception of the Invention

1. An inventor should not start to develop, build and test or disclose an invention before he/she has documented and dated the development process. The document (either notebook or other disclosure document) must record the chronological order of the development and should be signed by at least two trustworthy people who have witnessed and understood the invention. IN PATENT LAW, DATES ARE DECISIVE. IT IS ESSENTIAL THAT AN INVENTOR SIGN AND DATE EACH STEP OF THE PROCESS AND KEEP RECORDS OF ALL FILING DATES.FURTHER, PROVIDED THAT THERE ARE THE PROPER NDAs IN PLACE, A WITNESSED, DATED AND SIGNED RECORD OF THE INVENTION WILL NOT CONFLICT WITH TRADE SECRET PROTECTION BUT WILL BOLSTER OWNERSHIP CLAIMS IN THE EVENT OF A THEFT OF TRADE SECRETS.

a. David Pressman in Patent It Yourself says that there are six reasons why it is legally important to promptly and properly record the conception and development of the invention.

i. In case of a third party legal challenge in the PTO review process on the grounds that either the applicant is not the inventor or that a third party simultaneously and independently came up with the invention or that there is prior art. A dated, signed


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and witnessed invention description can be proof against interference.

ii. Proof in case of theft.

iii. Proof in case of confusion of invention.

iv. Antedate References- The PTO will reject a patent application where there is prior art that can demonstrate that the invention is not original. Signed, dated and witnessed records can challenge claims of prior art.

v. Proof to support costs for tax or other purposes.

vi. To avoid ownership disputes.

B. Two Types of Procedural Filings: Regular and Provisional

1. Inventor’s Query: build and test first and then file a full (regular) patent application or file a provisional patent application?

2. Each inventor must make a strategic decision as to whether he/she should build and test his/her invention, develop the patentable claims and file a patent application OR file a provisional patent application before building and testing the invention. A provisional application is NOT a patent application but a short version of a patent application with a fixed twelve-month term that can be used to establish an early filing date for a subsequent patent application.

3. In order for an invention to be patentable, it must be new as defined in the patent law. To reiterate, U.S. patent law provides that an invention cannot be patented if: “(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 “(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 application for patent in the United States . . .”

“…In determining priority of invention…there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one


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who was first to conceive and last to reduce to practice, from a time prior to conception by the other.” 35 U.S.C. 102(g)(1).

3. See Attachment B for Interference Actions and Priority Time Charts.

C. Requirements for a Patent Application (a regular and not provisional patent application)

1. Four statutory requirements:

a. Statutory classes:(i) process

(ii) machine

(iii) article of manufacture

(iv) composition or

(v) a “new use” of one of the above

b. Utility

c. Novelty

d. Non-obviousness

2. There must be specifications and the specifications must have a claim (or claims) particularly pointing out and distinguishing the subject matter of the invention.

a. THE WRITTEN CLAIMS ARE CRITICAL to EVERY patent application. They define the scope of the protection afforded by the patent. Narrow claims will afford the inventor limited, narrow protection around which third parties may be able to develop non-infringing products. Overbroad claims risk challenge in the PTO review by third parties of prior art or obviousness and may result in rejection of the application.

b. Claims may be presented in independent form or in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim, which refers back to more than one other claim, is considered a “multiple dependent claim.”


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3. Drawings are generally required for non-provisional patent applications.

4. Filing fee

5. The filing date of an application for patent is the date on which a specification (including at least one claim) and any drawings necessary to understand the subject matter sought to be patented are received in the USPTO; or the date on which the last part completing the application is received in the case of a previously incomplete or defective application.

6. Oath- An applicant must swear an oath or declaration as to the inventors and must disclose any information that could affect the examination or validity of the application. The applicant must disclose all relevant prior art, any disadvantages of the invention and any other information the examiner might want to know. Failure to disclose all relevant information or to be truthful will likely result in the patent being found invalid.

D. Provisional Application for a Patent

1. Since 1995, the PTO has offered inventors the option of filing a provisional application for patent before filing a full patent application.

2. Provisional application allows filing without a formal patent claim, oath or declaration, or any information disclosure statement of prior art. It provides the means to establish an early effective filing date in a non-provisional patent application.

3. Features

a. Provides simplified filing with a lower initial investment with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent.

b. Establishes an official United States patent application filing date for the invention.

c. Permits one year’s authorization to use "Patent Pending" notice in connection with the invention.

d. Begins the Paris Convention priority year.


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e. Enables immediate commercial promotion of the invention with greater security against having the invention stolen.

e. Preserves application in confidence without publication. f. Permits applicant to obtain USPTO certified copies.

g. Allows for the filing of multiple provisional applications for patent and for consolidating them in a single non-provisional application for patent.

h. Provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).

4. Warnings and Cautions about Filing a Provisional Patent Application (before filing the regular patent application)

a. The provisional application is NOT examined on its merits.

b. The provisional application will become abandoned (terminated) 12 months from its filing date unless it is converted to a non-provisional patent application. That is, the inventor must be able to reduce the invention to practice and verify its claims within the twelve-month term of the provisional patent application.

c. An applicant whose invention is "in use" or "on sale" in the U.S. during the one-year provisional-application pendency period may lose more than the benefit of the provisional application filing date if the one-year provisional-application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention.

d. A claim for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date (whichever is later).

E. Publication of Patent Applications

1. The PTO is required to publish patent applications for most plant and utility patent applications. An applicant may request that the application not be published, but only if the invention has not been and will not be the subject of an application filed in a foreign


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country that requires publication 18 months after filing (or earlier claimed priority date) or under the Patent Cooperation Treaty.

2. Publication occurs after expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application. Following publication, the Office no longer holds the application for patent in confidence and any member of the public may request access to the entire file history of the application.

III PTO Review Process (as described by the PTO)

A. Filing and Initial Examination. The examination of the application consists of a study of the application for compliance with the legal requirements and a search through U.S. patents, publications of patent applications, foreign patent documents, and available literature, to see if the claimed invention is new, useful and nonobvious and if the application meets the requirements of the patent statute and rules of practice. The examiner in the light of the study and the result of the search reaches a decision.

B. Office Action The PTO notifies the applicant in writing of its action. If the PTO rejects the application, the Office Action will state the reasons for an adverse action or requirement and the PTO will give “information or references … as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.”

C. Amendments to Application The applicant may amend his/her application before or after the first examination and Office Action in accordance with the PTO rules. After final rejection or action, amendments may be made canceling claims or complying with any requirement of form that has been made in an Office Action.

Per the PTO, “The specifications, claims, and drawing must be amended and revised when required, to correct inaccuracies of description and definition or unnecessary words, and to provide substantial correspondence between the claims, the description, and the drawing. All amendments of the drawings or specifications, and all additions thereto must not include new matter beyond the original disclosure. Matter not found in either, involving a departure from or an addition to the original disclosure, cannot be added to the application even though supported by a supplemental oath or declaration, and can be shown or claimed only in a separate application”. a separate page, a marked-up version entitled “Version” with markings to show changes made…The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When claims


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are added by amendment or substituted for canceled claims, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented.”

D. Time for Reply and Abandonment. The maximum period for the applicant’s reply is six months but the PTO may shorten the time for reply to not less than 30 days. The usual period for reply to an Office action is three months. Extensions of time are generally not available after an application has been allowed. If no reply is received within the time period, the application is considered ‘abandoned and no longer pending’. However, if it can be shown that the failure to prosecute was unavoidable or unintentional, the PTO may revive the application.

E. Appeal to the Board of Patent Appeals and Interferences and to the Courts


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Attachment A

From the PTO Website on Patentability

Novelty and unobviousness are requirements of Patent Law. Any difference may suffice. Must be unobvious as compared with prior art.

Patent cannot be obtained for an idea or suggestion. A complete description of the invention is required. For utility patents the application must detail how to make and use the invention along with claims that define the invention

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if: “(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 “(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 application for patent in the United States . . .”

If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost. The inventor must file on the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries.

Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.


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Attachment B

INTERFERENCE ACTIONS AND THE PRIORITY OF INVENTIONS

An interference is an inter partes proceeding directed at determining the first to invent as among the parties to the proceeding, involving two or more pending applications naming different inventors or one or more pending applications and one or more unexpired patents naming different inventors. The United States is unusual in having a first to invent rather than a first to file system first of many to reduce an invention to practice around the same time will be the sole party to obtain a patent unless another was the first to conceive and couple a later-in-time reduction to practice with diligence from a time just prior to when the second conceiver entered the field to the first conceiver's reduction to practice. See the priority time charts below illustrating this point. Upon conclusion of interference, subject matter claimed by the losing party that was the basis of the interference is rejected under the Patent laws unless the acts showing prior invention were not in this country.

It is noted that the law requires that whoever invents or discovers is the party who may obtain a patent for the particular invention or discovery (applicant/applicants) set forth the requirement that the actual inventor(s) be the party who applies for a patent or that a patent be applied for on behalf of the inventor. Where it can be shown that an applicant has "derived" an invention from another, a rejection under the law is proper. (Although derivation and priority of invention both focus on inventorship, derivation addresses originality, i.e., who invented the subject matter, whereas priority focuses on which party invented the subject matter first.).

PRIORITY TIME CHARTS

The following PTO priority time charts illustrate the award of invention priority in several situations. The time charts apply to interference proceedings and are also applicable to declarations or affidavits filed with the application. An applicant does not have to show that the invention was not abandoned, suppressed, or concealed from the time of an actual reduction to practice to a constructive reduction to practice because the length of time taken to file a patent application after an actual reduction to practice is generally of no consequence except in an interference proceeding.

For purposes of analysis under the Regulations, the conception and reduction to practice of the reference to be antedated are both considered


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being on the effective filing date of domestic patent or foreign patent or the date of printed publication.

In the charts, C = conception, R = reduction to practice (either actual or constructive), Ra = actual reduction to practice, Rc = constructive reduction to practice, and TD= commencement of diligence

Example 1

A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under the Regulations, because A conceived the invention before B and constructively reduced the invention to practice before B reduced the invention to practice. The same result would be reached if the conception date were the same for both inventors A and B.

Example 2

A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under the Regulations, if A can show reasonable diligence from TD (a point just prior to B's conception) until Rc because A conceived the invention before B, and diligently constructively reduced the invention to practice even though this was after B reduced the invention to practice.


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Example 3

A is awarded priority in an interference in the absence of abandonment, suppression, or concealment from Ra to Rc, because A conceived the invention before B, actually reduced the invention to practice before B reduced the invention to practice, and did not abandon, suppress, or conceal the invention after actually reducing the invention to practice and before constructively reducing the invention to practice.

A antedates B as a reference in the context of a declaration or affidavit filed under the Regulations because A conceived the invention before B and actually reduced the invention to practice before B reduced the invention to practice.

Example 4

A is awarded priority in an interference if A can show reasonable diligence from TD (a point just prior to B's conception) until Ra in the absence of abandonment, suppression, or concealment from Ra to Rc, because A conceived the invention before B, diligently actually reduced the invention to practice (after B reduced the invention to practice), and did not abandon, suppress, or conceal the invention after actually reducing the invention to practice and before constructively reducing the invention to practice.


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A antedates B as a reference in the context of a declaration or affidavit filed under the Regulations because A conceived the invention before B, and diligently actually reduced the invention to practice, even though this was after B reduced the invention to practice.

(http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2138htm)


http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2138htm

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Attachment C

Patentability, 35 U.S.C. 101-103

§101. Inventions patentable

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title [35 USC §§1 et seq.].

§102. Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless--

(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

(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

(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 this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371 (c) of this title, before the invention thereof by the applicant for patent, or

(f) he did not himself invent the subject matter sought to be patented, or

(g)(1) during the course of an interference conducted 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


http://www.bitlaw.com/source/35usc/1.html

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inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

§103. Conditions for patentability; non-obvious subject matter

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

(b) (1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if

(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and

(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.

(2) A patent issued on a process under paragraph (1)--

(A) shall also contain the claims to the composition of matter used in or made by that process, or

(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.

(3) For purposes of paragraph (1), the term "biotechnological process" means-

(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to--


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(i) express an exogenous nucleotide sequence,

(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or

(iii) express a specific physiological characteristic not naturally associated with said organism;

(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and

(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

(c). Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this

title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.

35 U.S.C. 111 Application.

(a) IN GENERAL.-

(1) WRITTEN APPLICATION.-An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.

(2) CONTENTS.-Such application shall include-

(A) a specification as prescribed by section 112 of this title;

(B) a drawing as prescribed by section 113 of this title; and

(C) an oath by the applicant as prescribed by section 115 of this title.


http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_115.htm#usc35s115



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(3) FEE AND OATH.-The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

(4) FAILURE TO SUBMIT.-Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

(b) PROVISIONAL APPLICATION.-

(1) AUTHORIZATION.-A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include-

(A) a specification as prescribed by the first paragraph of section 112 of this title; and

(B) a drawing as prescribed by section 113 of this title.

(2) CLAIM.-A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.

(3) FEE.-

(A) The application must be accompanied by the fee required by law.

(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.

(4) FILING DATE.-The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.





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(5) ABANDONMENT.-Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.

(6) OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.-A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) of this title or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c) of this title.

(8) APPLICABLE PROVISIONS.-The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.

35 U.S.C. 112 Specification.

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.

Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.















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A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

35 U.S.C. 113 Drawings.

The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.

35 U.S.C. 114 Models, specimens.

The Director may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention.

When the invention relates to a composition of matter, the Director may require the applicant to furnish specimens or ingredients for the purpose of inspection or experiment.

35 U.S.C. 115 Oath of applicant.

The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; and shall state of what country he is a citizen. Such oath may be made before any person within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign


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country in which the applicant may be, whose authority is proved by certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. Such oath is valid if it complies with the laws of the state or country where made. When the application is made as provided in this title by a person other than the inventor, the oath may be so varied in form that it can be made by him. For purposes of this section, a consular officer shall include any United States citizen serving overseas, authorized to perform notarial functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C. 4221).


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PTO Frequently Asked Questions

1. What do the terms “patent pending” and “patent applied for” mean?

A. They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.

2. Is there any danger that the USPTO will give others information contained in my application while it is pending?

A. Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file. After the patent is issued, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone, and copies of these files may be purchased from the Office.

3. May I write to the USPTO directly about my application after it is filed?

A. The Office will answer an applicant’s inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent of record in the application file the Office will not correspond with both you and the attorney/agent concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.

4. Is it necessary to go to the USPTO to transact business concerning patent matters?

A. No. Most business with the Office is conducted by written correspondence. Interviews regarding pending applications can be arranged with examiners if necessary and are often helpful.

5. If two or more persons work together to make an invention, to whom will the patent be granted?

A. If each had a share in the ideas forming the invention as defined in the claims – even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has


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provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.

6. If a first person furnishes all of the ideas to make an invention and a second person employs the first person or furnishes the money for building and testing the invention, should the patent application be filed by the first and second persons jointly?

A. No. The application must be signed by the true inventor, and filed in the USPTO, in the inventor’s name. This is the person who furnishes the ideas (e.g. the first person in the above fact pattern), not the employer or the person who furnishes the money.

7. Does the USPTO control the fees charged by patent attorneys and agents for their services?

A. No. This is a matter between you and your patent attorney or agent in which the Office takes no part. To avoid misunderstanding you may wish to ask for estimate charges for: (a) the search (b) preparation of the patent application, and (c) USPTO prosecution.

8. Will the USPTO help me to select a patent attorney or agent to make my patent search or to prepare and prosecute my patent application?

A. No. The Office cannot make this choice for you. However, your own friends or general attorney may help you in making a selection from among those listed as registered practitioners on the Office roster. Also, some bar associations operate lawyer referral services that maintain lists of patent lawyers available to accept new clients.

9. Will the USPTO advise me as to whether a certain patent promotion organization is reliable and trustworthy?

A. No. The Office has no control over such organizations. The Office will publish complaints regarding invention promoters and replies from the invention promoters. The Office will not undertake any investigation of the invention promoters. Questions or complaints should be directed to the Mail Stop 24; Director of the U.S. Patent and Trademark Office; P.O. Box 1450; Alexandria, VA 22313-1450 or call at (703) 306-5568.

It is advisable, however, to check on the reputation of invention promotion firms before making any commitments. It is suggested that you obtain this information from the Better Business Bureau of the city in which the organization is located, or from the bureau of commerce and industry or bureau of consumer affairs of the state in which the organization has its place of business. You may also undertake to make sure that you are dealing with reliable people by asking your own patent attorney or agent or by asking others who may know them.


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10. Are there any organizations in my area which can tell me how and where I may be able to obtain assistance in developing and marketing my invention?

A. Yes. In your own or neighboring communities you may inquire of such organizations as chambers of commerce and banks. Many communities have locally financed industrial development organizations, that can help you locate manufacturers and individuals who might be interested in promoting your idea.

11. Are there any state government agencies that can help me in developing and marketing of my invention?

A. Yes. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of your state organizations you can obtain this information by writing to the governor of your state.

12. Can the USPTO assist me in the developing and marketing of my patent?

A. No. The Office cannot act or advise concerning the business transactions or arrangements that are involved in the development and marketing of an invention. The Office, however, will publish for a fee, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. In addition, the Office of Independent Inventor Programs (OIIP) was established in March 1999 in order to meet the special needs of independent inventors. The OIIP establishes new mechanisms to better disseminate information about the patent and trademark processes and to foster regular communication between the USPTO and independent inventors.


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RELATED ISSUES AND ADDITIONAL TOPICS

Non-Disclosure Agreements and Trade Secret Protection

Weak versus Strong Patents

The Patent Search

Writing Claims

Putting the Application Together


Draft Patent Rights Training Course - Miami University · Web viewI. Nature of a Patent and Patent...

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