PATENTS:AN INTRODUCTION & OVERVIEW Technology Association of Georgia January 2014 Elizabeth L. Dougherty Director of Inventor Education, Outreach, & Recognition

Agenda Patent Basics Patent Process, Examination Current Patent News, Initiatives, Resources

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 in/into the U.S. Letters Patent

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

What is the Value of a Patent? Incentive to Invent Security for Investment New Technology Resources Ensure that Investment of Time and Money is Rewarded to Continue Future Incentive Stimulation Accelerates Development Strengthens National Economy Creation of Assets (To Sell or License, Collateral for Financing) Building Block for Future Inventions Source of Historical Information

What drives invention? Improvements on known technology A better way of doing things Long felt need Invention leads to disruptive technology or simple improvements

Types of Patents Utility New and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof Design Any new, original and ornamental design Plant Whoever invents or discovers and asexually produces any distinct and new variety of plant

Utility Applications Provisional Not examined or published One-year time limit Only for utility Non-Provisional Examined: claims required, written description must meet requirements Published Unless request for non-publication at filing 18 months from earliest filing date Can become a patent

Design Patent Applications Design patents protect the way an object appears, ornamental features of invention No provisional application 14 year term, from issue No maintenance fees

Plant Patent Applications Plant patents protects asexually produced plant varieties

Parts, Form and Content Arrangement of Application Title 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 11

Parts, Form and Content Claims Must commence on a separate sheet Must particularly point out and distinctly claim the subject matter which applicant regards as his/her invention or discovery Must conform to the invention as set forth in the remained or the specification there must be antecedence of the terms and phrases found in the written description for the claims The claims shall be numbered consecutively in Arabic numerals The original numbering of the claims must be preserved throughout the prosecution of the application when claims are cancelled the remaining claims must not be renumbered 12

Basic Fees Utility Basic filing fee $280/$140/$70 Search Fee $600/$300/$150 Examination fee $720/$360/$180 Issue $960/$480/$240 Design Basic filing fee $ 180/$90/$45 Search fee $120/$60/$30 Examination $460/$230/$115 Issue $560/$280/$140 Provisional Application Filing Fee:$260/$130/$65

Micro-entity 75% reduction in fees The AIA defines a micro entity as an applicant who certifies that he/she: Qualifies as a small entity; Has not been named as an inventor on more than 4 previously filed patent applications; 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; and 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.

How to File? Who should file? File yourself (Pro Se) Use a Registered Attorney or Agent See http://www.uspto.gov/ip/boards/oed/practitioner/agents/index.jsp Filing Method Via EFSweb (Non-electronic filing fee: $400/$200/$200) By Mail Walk-up window at the USPTO 15

Examination Read specification Interpret drawings Diagram claims Search the prior art Make legal/engineering determination Write opinion (Office Action) First Final 16

Examination Process First Examination Allowance Second Second Examination Examination Rejection Notice of Allowance Amendment Appeal Brief Appeal Process

Current Patent News, Initiatives, and Resources

Data Visualization

Unexamined Patent Application Backlog FY 2009 FY 2014 (through January 7) 596,990 Unexamined Applications as of January 7, 2014. 20

Patent Application Initiatives Web page 21

You can get to the program pages by selecting a tile. 22

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Prioritized Examination Fast innovation is Americas competitive edge. If you need to move your ideas quickly, USPTO's Track One prioritized examination will allow you to get a final disposition within about twelve months. The USPTO offers Track One for prioritized examination of your utility and plant patent applications. Track One gives your application special status with fewer requirements than the current accelerated examination program and without having to perform a pre-examination search. $4000/$2000/$1000

Track One Office Time/Applicant Time Track One Vs. Total Pendency (12-month Rolling Average through December) 44.0 RCEs Included No RCEs 40.0 4.5 36.0 32.0 3.2 9.7 Months 28.0 24.0 7.0 20.0 3.0 16.0 12.0 2.5 23.8 20.7 5.9 8.0 4.7 4.0 5.6 4.3 0.0 12MthAvgThruDecNotIncludingRCEs TrackOne12MthAvgThruDecNot IncludingRCEs TimeAwaitingFirstAction 12MthAvgThruDecIncludingRCEs TrackOne12MthAvgThruDecIncluding RCEs ProsecutionTimeWithApplicant ProsecutionTimeWithOffice 25

PPH Background Backlogs in offices around the world began to explode in the late 1990s The number of applications filed in multiple offices also started to steadily increase Offices began discussing potential ways to improve efficiencies focusing on worksharing PPH began as a pilot in between the JPO and USPTO in 2006 Today - 30 offices worldwide; 27 with USPTO 26

PPH Basics When an applicant receives a ruling from a first office that at least one claim in their application is allowable, the applicant can request to enter the PPH program in a second office If the request is granted, the second office can use the work done by the first office as a starting point That PPH case is then fast-tracked in the second office The second office is now looking at a case where most, if not all, of the major issues should already have been addressed 27

PPH Benefits PPH results compared with all cases: Paris-PPH PCT-PPH All Cases Grant Rate (Allowances/Total Number of Disposals) 86% 88% 51% First Action Allowance Rate 26% 20% 14% 2.3 1.6 2.6 - 3.5 Actions per Disposal 28

Benefits to Users and Offices Rapid prosecution Higher grant rates Fast portfolio building Cost Savings!! Creates an environment for rapidly introducing innovations into the marketplace 29

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Interview Webpage 31

Ombudsman Program - Purpose Facilitate complaint-handling when applications become stalled in examination process Track complaints to ensure each is handled within 10 business days Currently averaging 3 business days Provide feedback regarding training needs based on complaint trends FY13 Examiners have completed stakeholder responsiveness training 32

Ombudsman Program Process Applicant/Attorney access through USPTO.gov website Ombudsman will call within one business day to obtain details Complaint is routed to the person who can address it (SPE, TC Director, etc) Ombudsman may or may not address the complaint directly 33

USPTO.GOV Website Ombudsman Program 34

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Satellite Office Program (3)

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 application will be picked up for examination, see First Office Action Estimator Search US Patent Database Search Patent Classification Manual Download Forms and Fee Schedules Patent Help Resources Access Details of All Currently Pending Published Patent Applications (Public PAIR) IP Awareness Assessment Tool

Overview of Website Helpful links for independent inventors Click on Inventors - General Information Introductory Guides FAQs Upcoming Events Registered Attorneys & Complaints Against Inventors Assistance Center and much more

IP Awareness Assessment Tool

Inventor Resources Wide variety of resources to help the independent inventor FAQs, Online Chat Transcripts, events, and more www.uspto.gov/inventors

Pro Bono Assistance Encouraged by the AIA By the end of 2014 it is anticipate that at least part or all of 47 states will have a pro bono program to assist inventors and small businesses An online portal for placing inventors in the current regional pro bono patent legal programs has been developed. This portal serves as a clearinghouse and is operated by the Federal Circuit Bar Association. Certificate Training Course

State Resources - Georgia Patent attorneys and agents Registered Patent Attorneys/Agents in Georgia Patent and Trademark Resource Center Georgia Institute of Technology, Atlanta Inventor Organizations Inventor Associates of Georgia, Inc. www.GAInventors.org Columbus Phenix City Inventors Association www.cpcinventorassociation.weebly.com The Native American Inventors Association 3235 Roswell Road, Unit 703 Atlanta GA 30305 Attorneys General 404.656.3300 40 Capitol Square SW Atlanta GA 30334.-1300 georgia.gov/02/ago/home/0,2705,87670814,00.html

Inventors Eye

Contacts For Direct Help Inventor Assistance Center (IAC) for general questions about the application process Telephone: (571) 272-1000 or (800) 786-9199, 8:30 a.m. - 5:00 p.m., eastern time M-F Office of Innovation Development: (571) 272-8877 independentinventor@uspto.gov Electronic Business Center (EBC) 1-866-217-9197 ebc@uspto.gov

Thank You elizabeth.dougherty@uspto.gov