16th Annual USPTO Independent Inventors Conference

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Former USPTO Director of Independnt Inventor Programs Richard "Dick" Apley's outline of key topics inventors should address with their patent representatives.

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16th Annual USPTO Independent Inventors Conference

  1. 1. USPTO 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE Richard J. Apley, Chief Patent Officer USPTO Director, Independent Inventor Programs, Retired How To Help Your Patent Representative Help You
  2. 2. Patentability Search Why do a patentability search of the prior art to determine the novelty of your invention? 37 CFR 1.56: Each individual associated with the filing and prosecution of a patent application has a duty to disclose information material to patentability 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
  3. 3. SEARCH FOCUS Novelty most patentable features Patent Collection evolution of a technology State-of-the-Art overview of current technology in a specific area Infringement un-expired patents with claims that may bar you from making, using, selling or importing a product Right-to-Use or Freedom-to-Operate determining whether a particular action can be done without infringing rights of others Validity claims of a patent in question Accelerated Examination search strategy and other information required by the USPTO Other Types of Searches 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
  4. 4. As of March 16, 2013 the USPTO is a “first inventor to file” system. The former system of “first to invent” and its “date of invention” questions are no longer in use by the USPTO. . First to File Meeting Your Representative What should I bring for the first visit? What is the patent process going to cost? How do I pick a knowledgeable/trustworthy representative? 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
  5. 5.  Inventor(s) • Sole • Joint  Applicant(s)  Assignee(s)  Investor(s) Who’s Who? 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
  6. 6. 1. Field of invention; intended use 2. Problems addressed and solved 3. Summary of the invention with structural details and methods of making/using Disclosure 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
  7. 7. 4. Specification 35 U.S.C. 112(a): “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 of carrying out his invention.” Disclosure, 2 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
  8. 8. 5. Claims 35 U.S.C. 112(b): “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 6. Drawings; must show every feature of the invention specified in the claims Disclosure, 3 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
  9. 9. As the below named inventor, I hereby declare that: My residence and post office address are as stated below next to my name. I believe I am the original, first and sole inventor (if only one name is listed below) or an original, first and joint inventor (if plural names are listed below) of the subject matter which is claimed and for which a patent is sought on the invention entitled: MY MILLION DOLLAR INVENTION the specification of which is attached hereto unless the following box is checked: Inventor’s Oath or Declaration 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
  10. 10.  was filed on _____________ as United States Application Serial Number or PCT International Application Number _________________________ and was amended on _______________ (if applicable). The above-identified application was made or authorized to be made by me. I believe that I am the original inventor or an original joint inventor of a claimed invention in the application. I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years or both. 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA Inventor’s Oath or Declaration, 2
  11. 11. I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issued thereon. Legal Name of Sole or First Inventor: Signature: ___________________________ Date: _______________ Residence: Any City, State 12345 Post Office Address: 789 Any Street, Any City, State 12345 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA Inventor’s Oath or Declaration, 3
  12. 12.  First action  Second action may be a “FINAL” rejection  Interviews  Amendments  Request for Continued Examination (RCE)  Extensions of Time  Appeals Examination Process 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
  13. 13. 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA Entity Category Contact Information Micro Entity vs. Small Entity vs. Large Entity or Undiscounted Entity  Change of Address  Phone number Email Address  Change of “entity” status  Your representative must be kept current
  14. 14. New matter? Revisions? Improvements? What’s a Continuation in part (CIP) application? 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA Developments
  15. 15. There are four statutory categories of invention:  Process  Machine  Manufacture  Composition of Matter 35 U.S.C. §101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA Patentable Inventions
  16. 16. The Courts have interpreted the categories to exclude:  Laws of Nature  Natural Phenomena  Abstract Ideas These are commonly referred to as the “judicial exceptions.” 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA What’s Not Patentable
  17. 17. Becker & Poliakoff has offices in New York, Washington, DC, throughout Florida, and near the USPTO in Northern Virginia. RApley@bplegal.com 1 (800) 4-PATENT USPTO 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE Richard J. Apley, Chief Patent Officer USPTO Director, Independent Inventor Programs, Retired

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