Patent introduction and overview atlanta january 2014
1. PATENTS:AN INTRODUCTION & OVERVIEW
Technology Association of Georgia
January 2014
Elizabeth L. Dougherty
Director of Inventor Education, Outreach, & Recognition
3. 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
4. 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
5. What is the Value of a Patent?
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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
6. What drives invention?
• Improvements on known technology
• A better way of doing things
• Long felt need
Invention leads to disruptive technology or
simple improvements
7. 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
8. 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
9. Design Patent Applications
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Design patents protect the
way an object appears,
ornamental features of
invention
No provisional application
14 year term, from issue
No maintenance fees
11. Parts, Form and Content
Arrangement of Application
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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
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12. 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
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The claims shall be numbered consecutively in Arabic numerals
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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
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14. Micro-entity
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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.
15. 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
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24. Prioritized Examination
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Fast innovation is America’s 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
25. 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
12‐Mth Avg Thru Dec Not Including RCEs Track One 12‐Mth Avg Thru Dec Not
Including RCEs
Time Awaiting First Action
12‐Mth Avg Thru Dec Including RCEs Track One 12‐Mth Avg Thru Dec Including
RCEs
Prosecution Time With Applicant
Prosecution Time With Office
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26. 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
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27. 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
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28. 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
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29. Benefits to Users and Offices
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Rapid prosecution
Higher grant rates
Fast portfolio building
Cost Savings!!
Creates an environment for rapidly introducing
innovations into the marketplace
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32. 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
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33. 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
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38. 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
39. 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…
41. Inventor Resources
• Wide variety of
resources to help the
independent inventor
• FAQs, Online Chat
Transcripts, events,
and more
•
www.uspto.gov/inventors
42. 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
43. State Resources - Georgia
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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
45. 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
