Innovaters Patents

(C) 2010 Technology Law, PLLC
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Navigating Patents
US and Global
January 23, 2010

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US Provisional
Provisional Application
Just as hard to write for priority claim
Needs to be global – have at least 1 claim, inventors
Only 12 months – then another case –US utility or PCT
Low cost $220 LE/$110 SE
>100 sheets $270/ $135 SE
Not examined
Not published
Never issues as a patent

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Errors on Provisional
Disclose before filed – public or TM
Not well written
Enablement
Written description
Does not comply with all the US laws or treaties

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Case Study
Filed Trademark with pictures of device in own name
Actual use but no proof
Supplemental Register
Filed Patent with figures
Named wife an inventor
Sold device

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US Utility
Original US Application
Can issue
Publishes at 18 months from 1st filed (unless file a request)
Is examined
Cost higher: Filing $330 LE/ $165 SE/ $82 electronic + Search $540 LE/ $270 SE + Exam $220 LE/ $110 SE = $1,090 LE/ $545 SE
More costs for claims >3 indep.; >20 claims total, size >100 pgs $270/$135 per 50 pgs

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Requirements
Novelty – absolute, global
Non-obvious – Philips, KSR, Festo Cases
Utility – useful vs. industrial applicability

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US Prosecution
Several Office Actions over time, time delays
RCE when needed $810 LE/ $405 SE
Takes effort and knowledge
Claims can cost too
Patent valuable when issued

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Maintenance Fees on US Patent
Due after issue of patent
3.5 years = $980 LE/ $490 SE
7.5 years = $2,480 LE/ $1,240 SE
11.5 years = $4,110 LE/ $2,055 SE

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Time Line
0 = filed US Provisional
12 months = PCT or US Utility filed
17.5 months = withdraw publication/abandon
18 months = published
30 months = national countries files

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PCT - Advantages
File in language of Receiving Office (RO) – many national offices qualify as RO
Must have 1 inventor a citizen of that country or the assignee is incorporated there [IB will always accept the case from a member]
Up to 30 months to decide where to file national (7 Countries is break even on costs; EP = 1 with 36 countries & 3 extended)
Get all countries at filing

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PCT - Concerns
Export license – US if an inventor is US or data generated in US
Security clearance if US government funding (DOD; DOE; etc.)
Costs – if intend less than 7 countries at national stage
Publication at 18 months

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PCT – Where to File
Technology driven
Speed to market
Where are the markets?
Obsolesce
Licensing
Value received for the cost incurred

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PCT – Content of Case
A PCT case is a separate course for IP lawyers as it is complex to do and meet all the requirements

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PCT - Procedure
0 Month - File Priority Case
12 months – file PCT Case + Non-PCT Country Cases
16 months – receive ISR/WO – can informally comment within 2 months; Article 19 - amend only claims [AT, AU, CA, CN, EP, ES, FI, JP, KR, RU, SE, US; IB]

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PCT – Procedure - 2
17.5 months – stop publication; revoke priority claim; withdraw all designations but US
18 months – publication
22 months – demand; IPRP; can amend entire application; Article 34
28 months – IPRP; informal comments
30 months – National Phase

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National Phase
Some countries give strong weight to a positive IPRP
Examination should be in 54 languages of members (no one examiner does this so many countries re-examine)
Examination standards are different so the art is applied wrong – 35 USC §102(e)
Maintenance fees are national and exponentially increase with patent life

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Filing US
Provisional
Utility
PCT

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Design Patent
12 months for priority
Ornamental design/Industrial Design
1 claim

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Design Patent Fees
Filing $220 LE/ $110 SE + Search $100 LE/ $50 SE + Exam $140 LE/ $70 SE = $460 LE/ $230 SE

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Now Global Ready?
The world is small, so know how to work in it.

Innovaters Patents

by Incuba8 on Jan 27, 2010

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