Post on 07-Aug-2015
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Presented by: Peter Grant, LibrarianState Library, Archives & Public Records, a division of the Secretary of State
PATENT BASICS 2015
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OUTLINE
What is a patent? Requirements for patentability 3 types of patents Provisional applications What it costs Steps Search resources Classification systems Sources for free help Tips for working with an attorney
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WHAT 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 8“To 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.”
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REQUIREMENTS FOR PATENTABILITYSo can I patent my idea?
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PATENTABILITY REQUIREMENTS
“…any 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
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NOVELTY
“the 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.”
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NON-OBVIOUSNESS
“…must 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.”
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NON-OBVIOUSNESS
“…Nikon does not explain persuasively why a person of ordinary skill in the art could not have....”
Case IPR2013-00362 (p26)
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WHAT CANNOT BE PATENTED
Laws of nature Physical phenomena Abstract ideas Mere ideas or suggestions
“A complete description of the actual machine or other subject matter for which a patent is sought is required”
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SOUNDEX
“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
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3 TYPES OF PATENTS
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3 TYPES OF PATENTS
Utility Design Plant
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UTILITY
…may 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
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DESIGN
…may 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
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PLANT…may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant
Rooting Cuttings
Grafting and Budding
Bulbs
Apomictic Seeds
Division
Slips
Rhizomes
Corms
Nucellar Embryos
Tissue Culture
Runners
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
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PLANT
PLANT PATENT (USPTO)
U.S. Plant Protection Act of 1930
Asexually reproduced (excluding tuber)
20 years
PLANT VARIETY PROTECTION ACT (USDA)
Plant Variety Protection Act of 1970
Sexually reproduced (including tubers)
20 years
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PROVISIONAL
Not a type of patent, a type of application
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PROVISIONAL PATENT APPLICATION
Is not a “provisional patent” Is not examined Not required to have a formal patent claim Provides the means to establish an early effective
filing date in a later filed nonprovisional patent application
Allows the term "Patent Pending" to be applied in connection with the description of the invention
Utility only – no provisional design patents 12 months from the date the provisional
application is filed
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PROVISIONAL PATENT APPLICATION
To be complete, a provisional application must also include the filing fee as set forth in 37 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; and any U.S. Government agency that has a property interest
in the application.
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PROVISIONAL PATENT APPLICATION
“A filing date will be accorded to a provisional application only when it contains a written description of the invention, complying with all requirements of 35 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
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WHAT A PATENT COSTS
Depends… Invention, USPTO, Attorneys, Agents
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INVENTION
Complexity Number of
claims Detailed
drawings Prior art
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USPTO FEE SCHEDULE
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USPTO FEES
Regular Small Micro
Filing: Provisional
$260 $130 $65 (optional)
Filing: Non-provisional utility
$280 $70 $70
Search Fee $600 $300 $150
Examination Fee
$720 $360 $180
Issue fee $960 $480 $240 ($640)
Maintenance Fee 3.5 years
$1600 $800 $400
Maintenance Fee 7.5 years
$3600 $1800 $900
Maintenance Fee 11.5 years
$7400 $3700 $1850 ($3790)
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MICRO ENTITY
Qualify 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.*2013 Median household income:
$51,939(Reported by U.S. Census, September 2014)
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ATTORNEY FEES
Attorney Rate (Median 2012)
All $350 / hr.
Private firm partner $425 / hr.
Solo practitioner $288 / hr.
Original nonprovisional application on invention of minimal complexity
$6500
US design patent application
$1500
Novelty Search $2000
AIPLA Report of the Economic Survey 2013
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WHAT’S THE DIFFERENCE?
ATTORNEYS AGENTS
*USPTO November, 2013
31,638* 10,864*
Passed the Patent Bar(Technical qualification)
Passed the Patent Bar(Technical qualification)
Passed a state bar No state-level licensure
Juris Doctorate degree No Juris Doctorate
Patents, trademarks, contracts, court proceedings
Patent prosecution only
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STEPS
The “Patent Process”
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PATENT PROCESS
1. Search2. Type of patent /
application3. Filing strategy4. Drafting of application5. USPTO examines
application6. Patent is granted
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USPTO: APPFT, PATFT, PAIR, AND EAST
Free resources for your patent search
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APPFT - HTTP://PATFT.USPTO.GOV/
Published patent applications
All published patent applications since March 2001
All patent applications are automatically published after 18 months, unless applicant opts-out (5.9%)
Coverage
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APPFT - HTTP://PATFT.USPTO.GOV/
Quick search (choose field)
Advanced Search (build a query)
Search field explanations and search tips
Help
Features
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PATFT - HTTP://PATFT.USPTO.GOV/
Published United States Patents
Full text searching 1976-present
1790-1975 searchable by Issue Date, Patent Number, and Current Classification
Coverage
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PATFT - HTTP://PATFT.USPTO.GOV/
Quick search (choose field)
Advanced Search (build a query)
Search field explanations and search tips
Help
Features
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PUBLIC PAIR - HTTP://PORTAL.USPTO.GOV/PAIR/PUBLICPAIR
Issued or published patent applications
Foreign priority documents referred to by a U.S. application
2001-present Patent “wrap”
Application Examiner search Correspondence
Coverage
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PUBLIC PAIR - HTTP://PORTAL.USPTO.GOV/PAIR/PUBLICPAIR
Search by: Application
Number Patent Number PCT Number Publication
Number International
Design Registration Number
Features
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PUBWEST / PUBEAST
Full text searching from 1976 – present OCR text searching from mid 1920’s EPO and JPO abstracts More powerful search capability
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NON-USPTO: ESPACENET, FREEPATENTS ONLINE AND LENS
Free resources for your patent search
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ESPACENET - HTTP://HTTP://WORLDWIDE.ESPACENET.COM/
90+ million patent documents
Over 90 countries 38 EPO
member states
1836 - present
Coverage
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ESPACENET - HTTP://HTTP://WORLDWIDE.ESPACENET.COM/
Can search CPC scheme with keywords
Help
Features
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FREE PATENTS ONLINE
US Patents and applications
EPO Patents and applications
JPO Patent documents and patent abstracts
German Patents (beta)
Non-patent literature
Coverage
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FREE PATENTS ONLINE
Search tutorial: step-by-step
Glossary Alerts to
new patents
Features
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THE LENS
The European Patent Office’s DocDB bibliographic data from 1907 - present: 81+ Million documents from nearly 100 jurisdictions.
US Applications from 2001 – present
US Patents 1976 – present with full text and images.
USPTO Assignments (14+ Million).
WIPO PCT Applications from 1978 – present with full text and images.
Australian Patent Full Text from IP Australia
Coverage
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THE LENS
Represents data graphically
User-friendly structured search form
Hyperlinks to non-patent literature (5 million)
Knowledge database
Features
Patent Knowledge QuizHow To Read a PatentBoolean Logic Tutorial
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SEARCHPatent Classification
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KEYWORDS
Too broad Too narrow British spellings or
terms Typos or OCR errors Multiple meanings Term of art may not
be used Term of art may not
yet exist
Photo Credit: Aqazi1411
Photo Credit: Albert Jankowski
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MULTIPLE TERMS
Automobile Vehicle body Vehicle exterior Vehicle Passenger car Automobile vehicle Portion of a vehicle exterior Motor car Motor vehicle body Motorcar Sports car Motor-vehicle Exterior surface configuration of a vehicle Surface configuration of a vehicle body Surface configuration of a vehicle, toy and miscellaneous consumer products
incorporating the design
Design patent titles
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CLASSIFICATION
Allows you to find all of the patents in a class together
Three major systems CPC USPC Locarno
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CPC
Cooperative Patent Classification System
All U.S. patents issued from January 2015 CPC only
Used for U.S. Patents from January 2013
70-80% of world’s patents http://www.cooperativepatentclassifi
cation.org/
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CPC
Section: A to H + Y Class: 2 Digit
number Subclass: Single letter
Group: 1 to 3 Digit Number
Main Group: 2 digit number
Section: A Class: 45
Subclass: B Group: 19
Main Group: 06
A45B 19/06
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A45B 19/06
Section: A through H
A: Human NecessitiesB: Operations and TransportC: Chemistry and MetallurgyD: TextilesE: Fixed ConstructionsF: Mechanical EngineeringG: PhysicsH: ElectricityY: Emerging Cross-Sectional Technologies
Umbrellas with telescopic ribs
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A45B 19/06
Class: 2 digit number
A44 Haberdashery; Jewelery
A45 Hand or Travelling Articles
A46 Brushware
Umbrellas with telescopic ribs
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A45B 19/06
Sub Class: 1 Letter
A45B Walking Sticks; Umbrellas; Ladies’ or Like Fans
A45C Purses; Luggage; Hand Carried Bags
A45D Hairdressing or Shaving Equipment; Manicuring or other Cosmetic Treatment
Umbrellas with telescopic ribs
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A45B 19/06
Group: 1 to 3 digit number
A45B 17/00 Tiltable Umbrellas
A45B 19/00 Special Folding or Telescoping of Umbrellas
A45B 21/00 Umbrellas Convertible into Walking Sticks
Umbrellas with telescopic ribs
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A45B 19/06
Main Group or Sub Group: 2 digit number
A45B 19/02 Inflatable umbrellas; Umbrellas without ribs
A45B 19/04 With telescopic sticks
A45B 29/06 With telescopic ribs
Umbrellas with telescopic ribs
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A45B 19/06
US Pat. No. 7,913,709
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CLASSIFICATIONUSPC
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USPC
United States Patent Classification System
All U.S. patents issued from up to January 2013
Concurrent with CPC until January 2015 Used for U.S. Design Patents Static (No new classes being added) http://www.uspto.gov/patents-applicatio
n-process/patent-search/classification-standards-and-development
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CLASSIFICATION
Locarno
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LOCARNO
Also known as the International Classification of Industrial Designs
Began 1968, now on the 10th edition 32 classes, 219 subclasses Alphabetical list of 7157 goods Used by 53 states (June 2014) Hague Express database http://www.wipo.int/classifications/locar
no/en/
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RESOURCES FOR ASSISTANCE
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PATENT PRO BONO PROGRAM
Covers 49 states Administered through regional offices Attorney 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/inventors
http://www.calawyersforthearts.org/CIAP
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PATENT LAW CLINIC
Lisa Foundation Patent Law Clinic Law students (under faculty
supervision) https://
www.law.asu.edu/clinics/TheClinicalProgram/LisaFoundationPatentLawClinic.aspx
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PRO SE ASSISTANCE PROGRAM
Does not provide legal advice or draft your patent
Dedicated personnel for assisting pro se applicants
In-person assistance for the general public at USPTO Headquarters
Targeted support to connect applicants with relevant resources and information
http://www.uspto.gov/patents-getting-started/using-legal-services/pro-se-assistance-program
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TIPS FOR WORKING WITH AN ATTORNEY
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WORKING WITH AN ATTORNEY
How 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/boa
rds/oed/practitioner/agents/index.jsp
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WORKING WITH AN ATTORNEY
Can search issued patents by attorney, agent or firm Link on the
advanced search page of PatFT for how to structure
May be under individual’s or firm’s name (or both)
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QUESTIONS?