Capstone Design Class: Patenting an Invention

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2 Capstone Design Class: Patenting an Invention Tom Turner Patent and Trademark Resource Center Program Georgia Institute of Technology Library October 25,

3 What Type of Intellectual Property Protection Do You Need? Copyrights Trade Secrets Trademarks Patents 3

4 Copyright Protects "original works of authorship" fixed in a tangible form of expression. Registration is through the Library of Congress Copyright Office. Copyrightable works include: Literary works Musical works Dramatic works Choreographed works 4

5 Copyrightable Works, cont. Commercial Art Graphic works Sculptural works Motion Pictures Sound Recordings Architectural Plans, Drawings or Buildings 5

6 Trade Secrets Any valuable business information that has economic value because it is kept secret. A trade secret may be a formula, practice, process, design, instrument, pattern, or compilation of information used by a business to obtain an advantage over competitors within the same industry or profession. 6

7 Trademarks words, phrases, symbols, or designs that identify and distinguish the source of the goods (or services) of one party from those of others. 7

8 Patents A U.S. patent is a property right granted by the Government of the United States of America to an inventor, to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, for a limited time, in exchange for public disclosure of the invention. 8

9 What Kind of Patent Do You Need? Utility Patents Machine, Article of Manufacture, Process, Composition of Matter, Business Methods (since mid-90 s court decision) Any new, useful improvement of the above Term: 20 years from filing date Automatic Lacing System, US

10 Design Patents Granted for a new, original and ornamental design for an article of manufacture. Only the appearance is protected. Term: 15 years from the date the patent is granted if filed on or after 5/13/

11 Other Design Patent Examples D Shoe D Microwave Oven D Tool Handle D Bottle Cap 11

12 Plant Patents Granted for a distinct and new variety of asexually reproduced plant Term: 20 years from filing date 12

13 Which Application Will You File? Provisional Patent Application Non-Provisional Patent Application International application under the Patent Cooperation Treaty 13

14 PPA Provisional Patent Application A Provisional Patent Application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. No provisional design patent applications allowed. 14

15 A PPA does NOT issue as a patent, but a later-filed regular (Non-Provisional) application that claims the benefit of the earlier filed Provisional Patent Application may issue as a patent and benefit from the PPA filing date. 15

16 PPA filed PPA filed File Non- Provisional Utility Patent Application before 12 month deadline 12 months Passes, no Non Provisional Application is Filed Patent (Possibly) Granted Abandonment 16

17 PPA Is Optional U.S. patent applicants are not required to file a Provisional Patent Application. It is optional. U.S. patent applicants are required to file a Non- Provisional Patent Application. It is not optional. An attorney can advise as to whether the benefits of a PPA justify filing one. 17

18 Confusing Terms? A Provisional Patent Application is an application, it is never a patent in and of itself. Therefore, it is a mistake to refer to a PPA as a Provisional Patent. There is no such entity. Since an application is filed with the USPTO, the applicant may use the term Patent Pending. I filed a Provisional Patent Application with the USPTO last week so I told a potential investor that my invention is Patent Pending. 18

19 Minimum Requirements A PPA requires a coversheet (USPTO form SB/16). Specification--A written description that meets the requirements of 35 USC 112 paragraph (a) Any Drawings necessary to understand the invention. Filing Fees Can be filed electronically via EFS-Web or by paper. Form 2038 (Credit Card) Claims and Oath/Declaration are not required. 19

20 Written Description in a PPA The written description should provide enough detail that would allow someone having ordinary skill in the same technology, the ability to make and use the invention. It must disclose enough information that a person having ordinary skill in the same technology would recognize that the invention claimed in a laterfiled Non-Provisional Application is described in the PPA upon which it relies. 20

21 Filing Date Benefit If a Non-Provisional Patent Application is filed within one year from the filing date of a PPA, the Non- Provisional Application may claim the benefit of the filing date of the PPA. 21

22 Value of an Early Priority Date The filing date serves as the date before which publications, public use, and sales may serve as prior art against the invention. Prior art is used by patent offices, including the USPTO, to determine whether an invention is new and non-obvious. Thus, applicants want to secure the earliest filing date possible for their invention to avoid the most prior art. 22

23 Costs of Filing a Provisional Patent Application (as of 10/14/2016) Regular Fee $260 + $50 Processing Fee Small Entity Fee $130 + $50 Processing Fee Micro Entity Fee $65 + $50 Processing Fee 23

24 America Invents Act Definition of Micro Entity (Status Discount Became Available 3/19/2013) Applicant certifies that He / She Already qualifies as a Small Entity Has Not been Named as an Inventor on 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 3 times the Median Household Income Has Not Assigned, Granted or Conveyed (and is under no 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 3 times the Median Household Income. The "Maximum Qualifying Gross Income" for purposes of paying any eligible fee at the micro entity discount rate is currently $169,

25 -getting-started/patentbasics/types-patentapplications/utilitypatent/process-obtaining 25

26 Inventions that are new, useful, non-obvious, and accompanied by a written description disclosing how to make and use the invention may be patented. But how do you know if an invention is new and nonobvious? 26

27 U.S. Patent Publications Prior Art Search In order to be sure that their invention is indeed novel and non-obvious, many searchers start off with a preliminary prior art search of U.S. patents and published patent applications before filing a patent application. To be as thorough as possible, a preliminary prior art search is ideally a classification search of granted U.S. patents and published U.S. patent applications conducted to determine patentability of an invention. It can be supplemented with a keyword search, though there are pitfalls from relying only on a keyword search. 27

28 Prior Art Any published document that contains a discussion or description relevant to an invention for which a patent is currently being sought or enforced may be a prior art reference. It is an applicant's duty to submit to the Office information which is material to patentability of the invention claimed in a non-provisional application. A patent examiner may reject one or more claims in a patent application on the grounds that they are anticipated by the prior art. 28

29 Prior Art Prior art consists of information disclosed to the public including: U.S. Patents and published patent applications; Foreign Patents and published patent applications; Journal and magazine articles; Books, manuals, and catalogs; Websites; Conference proceedings; Scientific papers. 29

30 Challenges with Relying on Keyword Searching of Patents Vague or inconsistent terminology: Toy and Process of Use (Patent 2,415,012) Obsolete names and terms: LP hi-fi laser disc water closet Different meanings in different fields: Mouse the Animal v. Computer Mouse Synonyms: Rodent Extermination Device (Patent 5,185,953) 30

31 And the Biggest Limitation of Relying on Keyword Searching The USPTO s web-based patent database, PatFT, limits keyword searching to no further back than the 1970 s (with some exceptions.) But searching by classification can cover all U.S. patents issued prior to the 1970 s all the way to 1790, if needed. 31

32 Classification In general, a classification system is a system of hierarchical categories used to organize like things by their characteristics and relationships Classification systems are very useful for sorting and searching large collections of information, including inventions. 32

33 Cooperative Patent Classification USPTO patent examiners conduct their searches of U.S. patents and published applications using Cooperative Patent Classification (CPC) (and supplement those searches with keyword searches): A new classification system based on International Patent Classification. Applied to newly issued U.S. patents since All U.S. patents since 1790 have been retroactively classified in CPC. 33

34 Patent Searching Tutorial 34

35 Who are the Patent Examiners at the USPTO? A U.S. government employee An engineer or scientist with an appropriate technical degree A person who has received training in how to examine a patent, according to the patent laws, rules, USPTO policies, and relevant court decisions 35

36 Examination: The Role of the Patent Examiner Reads and understands the invention as set forth in the specification Interprets drawings Interprets the claims (metes and bounds) Searches the prior art Makes legal/engineering determinations Writes Office Actions (opinion) Issues Valid Patents 36

37 Parts of an Non-Provisional Utility Patent Application Title Abstract Drawings Background of the Invention Summary of the Disclosure Brief Description of the Drawings Detailed Description of the Invention 37

38 Patent Examination Process Application is filed by Inventor or Assignee USPTO Pre-Exam Amendment and/or argument Appeal EXAMINER APPLICANT Rejection and/or objection Notice of Allowance USPTO Grants Patent Abandonment 38

39 The Examination Patent Examiner reviews contents of the application for compliance with all U.S. patent legal requirements. The burden is on the examiner to show if a patent is not warranted. 39

40 Manual of Patent Examining Procedure (MPEP) 40

41 The Examination The claims, as supported by the rest of the application, are reviewed for compliance with: 35 USC 101: Patent eligible subject matter, utility, double-patenting 35 USC 102: Must be new 35 USC 103: Must not be obvious over what s been done before 35 USC 112(a): The claims must be described in the specification including the manner of making and using the claimed invention 35 USC 112(a): The claims must clearly define what applicant is trying to protect 41

42 Parts of an Application: The Claims Claims define legal protection being conferred by the patent. Must particularly point out and distinctly claim the subject matter which applicant regards as the invention or discovery. Must conform to the invention as set forth in the specification and drawings. All terms and phrases used in the claims must also appear in the specification (written description). Must start on a separate sheet and be numbered consecutively in Arabic numerals. 42

43 The Claims (con t...) A claim in a Utility application or patent has three (3) main parts A preamble or the introduction; A transitional phrase of: comprising (open); consisting essentially of (excludes materials that materially affect the basic and novel characteristics of the invention); and consisting of (closed); and A body reciting the elements of the invention. 43

44 The Patent Examiner s Search Learn technology Keep abreast of state of the art Find pertinent prior art Determine patentability Where do Examiners search? U.S. and International Patent Literature Electronic Searching (publications, web sites) Anywhere they might find the information they need with evidence of the date of publication or availability 44

45 Application is filed by Inventor or Assignee USPTO Pre-Exam Amendment and/or argument Appeal EXAMINER APPLICANT Rejection and/or objection Notice of Allowance USPTO Grants Patent Abandonment

46 The Office Action The first Office Action is almost always non-final, meaning applicant has the right to amend and reply The second Office Action may be final, if no new rejections are made that were necessitated by applicant s amendment in response to the previous Office Action. Applicant may reply to a final action, but has no right to have that reply entered. After a final rejection, the applicant may file a Request for Continued Examination (RCE) to enter another amendment The examiner may allow the application at any step in the process. 46

47 Applicant s Response Applicant may respond to an office action by: Amending the claims, specification or both No new matter may be added to the claims or specification Arguing that the Examiner s rejections are incorrect Submitting evidence Submitting prior art 47

48 Patent Examination: The Results Application is filed by Inventor or Assignee USPTO Pre-Exam Amendment and/or argument Appeal EXAMINER APPLICANT Rejection and/or objection Notice of Allowance USPTO Grants Patent Abandonment 48

49 Patent Examination: The Results The examiner can allow or reject an application The applicant can amend, argue, abandon or (after a second rejection) appeal No mechanism for the examiner to force examination to end if the applicant wants to continue 49

50 What are Common Initial Costs for a Utility Patent Application? (as of 10/15/2016) p=print filing, e=electronic filing Regular Fee Basic Filing: p280/e280 Search Fee: 600 Exam Fee: 720 Issue Fee: 960 Processing Fee: 140 Small Entity Basic Filing: p140/e70 Search Fee: 300 Exam Fee: 360 Issue Fee: 480 Processing Fee: 70 Micro Entity Basic Filing: p70/e70 Search Fee: 150 Exam Fee: 180 Issue Fee: 240 Processing Fee: 35 50

51 Questions? Inventors Assistance Center Mon-Fri 8:30 AM 8:00 PM Eastern Toll Free Pro Se Assistance Program Toll Free Patent Pro Bono Program free legal assistance to under-resourced inventors 51

52 Contact your nearest Patent and Trademark Resource Center, the Georgia Tech Library

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