PATENTS:AN INTRODUCTION & OVERVIEW

Technology Association of GeorgiaJanuary 2014

Elizabeth L. DoughertyDirector 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?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

UtilityNew and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

DesignAny new, original and ornamental design

PlantWhoever invents or discovers and asexually produces any distinct and new variety of plant

Utility ApplicationsProvisional –

• 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

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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

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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

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Examination

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

– First – Final

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AllowanceFirst Examination

FirstExamination

Notice of

AllowanceSecond

Examination

AmendmentSecond

Examination

Appeal Process

Appeal Brief AppealProcess

Rejection

Examination Process

Current Patent News, Initiatives, and Resources

Data Visualization

Unexamined Patent Application Backlog FY 2009 – FY 2014 (through January 7)

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596,990 Unexamined Applications as of January 7, 2014.

Patent Application InitiativesWeb page

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You can get to the program pages by

selecting a tile.

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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

Prioritized Examination

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Track One Office Time/Applicant Time –Track One Vs. Total Pendency

(12-month Rolling Average through December)

20.7

4.3

23.8

5.6

7.0

4.7

9.7

5.9

3.2

2.5

4.5

3.0

0.0

4.0

8.0

12.0

16.0

20.0

24.0

28.0

32.0

36.0

40.0

44.0

12‐Mth Avg Thru Dec Not Including RCEs Track One 12‐Mth Avg Thru Dec NotIncluding RCEs

12‐Mth Avg Thru Dec Including RCEs Track One 12‐Mth Avg Thru Dec IncludingRCEs

Months

Time Awaiting First Action Prosecution Time With Applicant Prosecution Time With Office

No RCEs RCEs Included

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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

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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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%

Actions per Disposal 2.3 1.6 2.6 - 3.5

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

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Interview Webpage

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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 training32

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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USPTO.GOV Website –Ombudsman Program

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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

Click on

“Inventors”

Helpful links for independent 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 agentsRegistered Patent Attorneys/Agents in Georgia

• Patent and Trademark Resource CenterGeorgia 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 703Atlanta GA 30305

• Attorneys General404.656.330040 Capitol Square SWAtlanta GA 30334.-1300georgia.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