PowerPoint Presentation

Presented by: Peter Grant, LibrarianState Library, Archives & Public Records, a division of the Secretary of State

Patent Basics 2016

Arizona State Library,Archives and Public RecordsOutline

Types of intellectual propertyRequirements for patentability3 types of patentsProvisional applicationsWhat it costsStepsSearchSources for free helpTips for working with an attorney or agent

Arizona State Library,Archives and Public RecordsIntellectual PropertyFour basic types:

TrademarksCopyrightsTrade SecretsPatents

Arizona State Library,Archives and Public Recordstrademarks

Arizona State Library,Archives and Public RecordsWhat is a trademark?A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.

Lanham Act (Trademark Act of 1946). Passed by Congress on July 5, 1946. Took effect July 5, 1947

Arizona State Library,Archives and Public RecordsWhat is a trademark?

Arizona State Library,Archives and Public RecordsCopyright

Arizona State Library,Archives and Public RecordsWhat is a Copyright?Copyright is a form of protection provided to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.

The copyright protects the form of expression rather than the subject matter of the writing.

U.S. Constitution: Article 1, Section 8, Clause 8To 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 Discoveries.

Arizona State Library,Archives and Public RecordsWhat is a Copyright?

Sonnett Number 18William Shakespeare

Shall I compare thee to a summer's day?Thou art more lovely and more temperate:Rough winds do shake the darling buds of May,And summer's lease hath all too short a date:Sometime too hot the eye of heaven shines,And often is his gold complexion dimmed,And every fair from fair sometime declines,By chance, or nature's changing course untrimmed:But thy eternal summer shall not fade,Nor lose possession of that fair thou ow'st,Nor shall death brag thou wander'st in his shade,When in eternal lines to time thou grow'st,So long as men can breathe, or eyes can see,So long lives this, and this gives life to thee.

Arizona State Library,Archives and Public RecordsTrade Secrets

Arizona State Library,Archives and Public RecordsWhat is a trade secret?all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if

(A) the owner thereof has taken reasonable measures to keep such information secret; and

(B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, the another person who can obtain economic value from the disclosure or use of the information.

Defend Trade Secrets Act of 2016

Arizona State Library,Archives and Public RecordsWhat is a trade secret?

Arizona State Library,Archives and Public RecordsPatents

Arizona State Library,Archives and Public RecordsWhat is a patent?The grant of a property right to the inventor, issued by the United States Patent and Trademark Office.

A patent obtained in the U.S. gives the patent holder the right, for a limited time, to exclude others from making, using, offering to sell, selling, or importing into the U.S. the subject matter that is within the scope of protection granted by the patent.

U.S. Constitution: Article 1, Section 8, Clause 8To 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 Discoveries.

Arizona State Library,Archives and Public RecordsWhat does a patent cover?

any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

Arizona State Library,Archives and Public RecordsPatentability Requirementsany new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

Process - a process, act, or method, and primarily includes industrial or technical processes

Composition of matter - chemical compositions and may include mixtures of ingredients as well as new chemical compounds

Arizona State Library,Archives and Public RecordsNoveltythe claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention

the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

Arizona State Library,Archives and Public RecordsNon-obviousnessmust be sufficiently different from what has been used or described before that it may be said to be non-obvious 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.

Arizona State Library,Archives and Public RecordsNon-obviousnessNikon does not explain persuasively why a person of ordinary skill in the art could not have....

Case IPR2013-00362 (p26)

Arizona State Library,Archives and Public RecordsWhat cannot be patentedLaws of nature Physical phenomenaAbstract ideasMere ideas or suggestionsA complete description of the actual machine or other subject matter for which a patent is sought is required

Arizona State Library,Archives and Public RecordsSoundex

Index where names entered are grouped phonetically, rather than alphabetically

Names with the same sound, but different spellings will be grouped together

Stewart= S363Stuart= S363

1 = b, f, p, v 2 = c, g, j, k, q, s, x, z3 = d, t4 = l5 = m, n6 = r

Arizona State Library,Archives and Public Records3 Types of patents

Arizona State Library,Archives and Public Records3 Types of Patents

UtilityDesignPlant

Arizona State Library,Archives and Public RecordsUtilitymay be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;

Term: 20 years from date of filing

Arizona State Library,Archives and Public RecordsDesignmay be granted to anyone who invents a new, original, and ornamental design for an article of manufacture;

Term: 15 years from date of filing

Patent Law Treaties Implementation Act (PLTIA) of 2012

Arizona State Library,Archives and Public RecordsPlantmay be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant

Rooting CuttingsGrafting and BuddingBulbsApomictic SeedsDivision SlipsRhizomesCormsNucellar Embryos Tissue CultureRunners

Term: 20 years from date of filing

The present invention has been found to retain its distinctive characteristics through successive asexual propagations via stolons.

-US PP24,512

Arizona State Library,Archives and Public RecordsPlantPlant Patent (USPTO)U.S. Plant Protection Act of 1930Asexually reproduced (excluding tuber)20 years

Plant Variety Protection Act (USDA)Plant Variety Protection Act of 1970Sexually reproduced (including tubers)20 years

Arizona State Library,Archives and Public RecordsProvisionalNot a type of patent, a type of application

Arizona State Library,Archives and Public RecordsProvisional Patent applicationIs not a provisional patentIs not examinedNot required to have a formal patent claimProvides the means to establish an early effective filing date in a later filed nonprovisional patent applicationAllows the term "Patent Pending" to be applied in connection with the description of the inventionUtility only no provisional design patents12 months from the date the provisional application is filed

Arizona State Library,Archives and Public RecordsProvisional patent applicationTo be complete, a provisional applicationmust alsoinclude the filing fee as set forth in37 CFR 1.16(d)and a cover sheet identifying:the application as a provisional application for patent;the name(s) of all inventors;inventor residence(s);title of the invention;name and registration number of attorney or agent and docket number (if applicable);correspondence address; andany U.S. Government agency that has a property interest in the application.

Arizona State Library,Archives and Public RecordsProvisional patent applicationA filing date will be accorded to a provisional application only when it contains a written description of the invention, complying with all requirements of35 U.S.C. 112(a).

35 U.S.C. 112(a)In General.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 or joint inventor of carrying out the invention.

http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent

Arizona State Library,Archives and Public RecordsWhat a patent costsDepends Invention, USPTO, Attorneys, Agents

Arizona State Library,Archives and Public RecordsInvention

ComplexityNumber of claimsDetailed drawingsPrior art

Arizona State Library,Archives and Public RecordsUSPTO Fee Schedule

Arizona State Library,Archives and Public RecordsUSPTO FeesRegularSmallMicroFiling: Provisional$260$130$65 (optional)Filing: Non-provisional utility$280$70$70Search Fee$600$300$150Examination Fee$720$360$180Issue fee$960$480$240 ($640)Maintenance Fee 3.5 years$1600$800$400Maintenance Fee 7.5 years$3600$1800$900Maintenance Fee 11.5 years$7400 ($15420)$3700$1850 ($3790)

Arizona State Library,Archives and Public RecordsMicro entityQualify as a USPTO-defined small entity.Not be named on more than four previously filed applications.Not have a gross income more than three times the median household income in the previous year from when the fee(s) is paid.* Not be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor.

*2014 Median household income: $53,657(Reported by U.S. Census, September 2015)

Arizona State Library,Archives and Public RecordsAttorney feesAttorneyRate (Median 2012)All$350 / hr.Private firm partner$425 / hr.Solo practitioner$288 / hr.Original nonprovisional application on invention of minimal complexity$6500US design patent application $1500Novelty Search$2000

AIPLA Report of the Economic Survey 2013

Arizona State Library,Archives and Public RecordsWhats the difference?AttorneysAgents*USPTO June, 201633,354*11,103*

Passed the Patent Bar(Technical qualification)Passed the Patent Bar(Technical qualification)Passed a state barNo state-level licensureJuris Doctorate degreeNo Juris DoctoratePatents, trademarks, contracts, court proceedingsPatent prosecution only

Arizona State Library,Archives and Public RecordsStepsThe Patent Process

Arizona State Library,Archives and Public RecordsPatent Process

SearchType of patent / applicationFiling strategyDrafting of applicationUSPTO examines applicationPatent is granted

http://www.uspto.gov/patents-getting-started/patent-process-overview#step1http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/utility-patent/patent-process-0

Arizona State Library,Archives and Public RecordsFiling Strategies

Arizona State Library,Archives and Public RecordsFiling StrategiesFaster Examinations - USPTOPetition to make special: Age and HealthPrioritized ExaminationAccelerated ExaminationExpedited Examination of a Design

Arizona State Library,Archives and Public RecordsFiling Strategies

Prioritized ExaminationAccelerated ExaminationExpedited Examination of a DesignPlaced ahead of other filingsAhead of other filings and faster examination processAhead of other filings and faster examination process

No pre-exam searchPre-examination search requiredPre-examination search required

Non-provisional Utility onlyNon-provisional Utility onlyDesign

Arizona State Library,Archives and Public RecordsFiling StrategiesForeign FilingsPCT ApplicationCommon application for 148 countriesWhere do you plan to make it?Where do you plan to sell it?

Arizona State Library,Archives and Public RecordsSearch

Arizona State Library,Archives and Public RecordsUSPTO: AppFT, Patft, and PAIRFree resources for your patent search

Arizona State Library,Archives and Public RecordsAppFT - http://patft.uspto.gov/Published patent applicationsAll published patent applications since March 2001All patent applications are automatically published after 18 months, unless applicant opts-out (5.9%)

Coverage

Arizona State Library,Archives and Public RecordsPatFT - http://patft.uspto.gov/Published United States PatentsFull text searching 1976-present1790-1975 searchable by Issue Date, Patent Number, and Current Classification

Coverage

Arizona State Library,Archives and Public RecordsPatFT - http://patft.uspto.gov/Quick search (choose field)Advanced Search (build a query)Search field explanations and search tipsHelp

Features

Arizona State Library,Archives and Public RecordsPublic PAIR - http://portal.uspto.gov/pair/PublicPairIssued or published patent applicationsForeign priority documents referred to by a U.S. application2001-presentPatent wrapApplicationExaminer searchCorrespondenceCoverage

Arizona State Library,Archives and Public RecordsPublic PAIR - http://portal.uspto.gov/pair/PublicPairRetrieve by:Application NumberPatent Number PCT NumberPublication Number International Design Registration NumberFeatures

Arizona State Library,Archives and Public RecordsNon-USPTO: Espacenet, Freepatents online and LensFree resources for your patent search

Arizona State Library,Archives and Public RecordsEspacenet - http://http://worldwide.espacenet.com/

Can search CPC scheme with keywords

Help

Features

Arizona State Library,Archives and Public RecordsFree Patents OnlineSearch tutorial: step-by-stepGlossaryAlerts to new patents

Features

Arizona State Library,Archives and Public RecordsThe Lens

Represents data graphicallyUser-friendly structured search formHyperlinks to non-patent literature (5 million)Knowledge database

Features

Patent Knowledge QuizHow To Read a PatentBoolean Logic Tutorial

Arizona State Library,Archives and Public RecordsSearchPatent Classification

Arizona State Library,Archives and Public RecordsKeywordsToo broadToo narrowBritish spellings or termsTypos or OCR errorsMultiple meaningsTerm of art may not be usedTerm of art may not yet exist

Photo Credit: Aqazi1411

Photo Credit: Albert Jankowski

Arizona State Library,Archives and Public RecordsMultiple TermsAutomobileVehicle bodyVehicle exteriorVehiclePassenger carAutomobile vehiclePortion of a vehicle exteriorMotor carMotor vehicle bodyMotorcarSports carMotor-vehicleExterior surface configuration of a vehicleSurface configuration of a vehicle bodySurface configuration of a vehicle, toy and miscellaneous consumer products incorporating the design

Design patent titles

Arizona State Library,Archives and Public RecordsClassificationAllows you to find all of the patents in a class together

Three major systemsCPCUSPCLocarno

Arizona State Library,Archives and Public RecordsClassificationCPC

Arizona State Library,Archives and Public RecordsCPCCooperative Patent Classification SystemAll U.S. utility patents issued from January 2015 CPC onlyUsed for U.S. Patents from January 201385% of worlds patentshttp://www.cooperativepatentclassification.org/

Arizona State Library,Archives and Public RecordsClassificationUSPC

Arizona State Library,Archives and Public RecordsUSPCUnited States Patent Classification SystemAll U.S. patents issued up to January 2013Concurrent with CPC until January 2015Used for U.S. Design PatentsStatic (No new classes being added)http://www.uspto.gov/patents-application-process/patent-search/classification-standards-and-development

Arizona State Library,Archives and Public RecordsClassificationLocarno

Arizona State Library,Archives and Public RecordsLocarnoAlso known as the International Classification of Industrial DesignsBegan 1968, now on the 10th edition32 classes, 219 subclassesAlphabetical list of 7157 goodsUsed by 53 countries (June 2014)Hague Express databasehttp://www.wipo.int/classifications/locarno/en/

Arizona State Library,Archives and Public RecordsLive USPTO Database Demohttp://www.uspto.gov/

Arizona State Library,Archives and Public RecordsResources for Assistance

Arizona State Library,Archives and Public RecordsPatent Pro Bono programCovers all 50 statesAdministered through regional officesAttorney or agent will draft and prosecute your patent at no charge (USPTO fees still apply)http://www.uspto.gov/patents-getting-started/using-legal-services/pro-bono/inventorshttp://www.calawyersforthearts.org/CIAP

Arizona State Library,Archives and Public RecordsPatent Law clinicLisa Foundation Patent Law Clinic (ASU)Law students (under faculty supervision) https://www.law.asu.edu/clinics/TheClinicalProgram/LisaFoundationPatentLawClinic.aspx

Arizona State Library,Archives and Public RecordsPro Se assistance programDoes not provide legal advice or draft your patentDedicated personnel for assisting pro se applicantsIn-person assistance for the general public at USPTO HeadquartersTargeted support to connect applicants with relevant resources and informationhttp://www.uspto.gov/patents-getting-started/using-legal-services/pro-se-assistance-program

Arizona State Library,Archives and Public RecordsTips for working with an attorney

Arizona State Library,Archives and Public Recordsworking with an attorneyHow many patents have you prosecuted?What are the estimated costs?How will you keep me informed?Do you have references?http://www.uspto.gov/ip/boards/oed/practitioner/agents/index.jsp

Arizona State Library,Archives and Public RecordsWorking with an attorneyCan search issued patents by attorney, agent or firmLink on the advanced search page of PatFT for how to structureMay be under individuals or firms name (or both)

Arizona State Library,Archives and Public RecordsQuestions?

Arizona State Library,Archives and Public RecordsOther5642.463Other19452.56