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Patent introduction and overview atlanta january 2014

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  • 1. PATENTS:AN INTRODUCTION & OVERVIEW Technology Association of Georgia January 2014 Elizabeth L. Dougherty Director of Inventor Education, Outreach, & Recognition
  • 2. Agenda • Patent Basics • Patent Process, Examination • Current Patent News, Initiatives, Resources
  • 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? • • • • • • • • 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 • • • • Design patents protect the way an object appears, ornamental features of invention No provisional application 14 year term, from issue No maintenance fees
  • 10. Plant Patent Applications • Plant patents protects asexually produced plant varieties
  • 11. 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 11
  • 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 • 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 12
  • 13. 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
  • 14. 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.
  • 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 15
  • 16. Examination • • • • • • Read specification Interpret drawings Diagram claims Search the prior art Make legal/engineering determination Write opinion (Office Action) – First – Final 16
  • 17. Examination Process First Examination Allowance Second Second Examination Examination Rejection Notice of Allowance Amendment Appeal Brief Appeal Process
  • 18. Current Patent News, Initiatives, and Resources
  • 19. Data Visualization
  • 20. Unexamined Patent Application Backlog FY 2009 – FY 2014 (through January 7) 596,990 Unexamined Applications as of January 7, 2014. 20
  • 21. Patent Application Initiatives Web page 21
  • 22. You can get to the program pages by selecting a tile. 22
  • 23. 23
  • 24. Prioritized Examination • • • • 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 25
  • 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 26
  • 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 27
  • 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 28
  • 29. 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 29
  • 30. 30
  • 31. Interview Webpage 31
  • 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 32
  • 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 33
  • 34. USPTO.GOV Website – Ombudsman Program 34
  • 35. 35
  • 36. Satellite Office Program (3)
  • 37. Resources -USPTO on the Web www.USPTO.gov
  • 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…
  • 40. IP Awareness Assessment Tool
  • 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 • • • • 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
  • 44. Inventors Eye
  • 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
  • 46. Thank You elizabeth.dougherty@uspto.gov