Patents ¢â‚¬â€œ An 2017-09-21¢  Patent Examination...

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Transcript of Patents ¢â‚¬â€œ An 2017-09-21¢  Patent Examination...

  • Patents – An Overview

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

    Entrepreneurs

  • 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

    Presenter Presentation Notes Can mention PCT

    Copied form IP Basics_CornellTech_25 Nov2014

  • 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

    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

    Presenter Presentation Notes 579,782 regular utility; 1,124 plant; 36,126 design; 169,170 provisional in FY 2014

  • 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

    APPLICANTEXAMINER

    Amendment and/or argument

    Appeal

    Rejection and/or objection

    Abandonment

    Presenter Presentation Notes

    This and the next slide show a flowchart, which shows the simplified patent examination and appeal process. This flow chart also explains how USPTO performs its duty and functions in the U.S legal system.

    Blue outlines the examination process. Although patent examiners play important roles in the patent examination, other supporting staff, non-patent examiners, are very important in the patent examination and appeal process. For example, Pre-exam; TSS, etc. XXXXX

    Patent examination consists of multiple Office actions on the merits, and applicant(s) responses. During the patent examination process, applicants file their patent applications to USPTO, and examiners at USPTO review the applications on their merits according to the US Patent laws. If the claims are found to comply with the US Patent laws, i.e., are novel and non-obvious, USPTO grants a patent to the applicant.

  • 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?

    Presenter Presentation Notes Copied from Claim Drafting Beginners in Past Presentation folder

  • 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

    http://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

    Presenter Presentation Notes The IAC can be reached by telephone at 800-786-9199.  Additionally, the USPTO maintains an extensive FAQ page with answers to many common patent questions.

    http://www.uspto.gov/learning-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

    Presenter Presentation Notes : https://www.uspto.gov/learning-and-resources/support-centers/patent-and-trademark-resource-centers-ptrc/ptrc-locations

  • 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

    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

    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 ce