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Powell the patent process baku conference new


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Powell the patent process baku conference new

  1. 1. The Patent Process Mark R. PowellU. S. Patent & Trademark Office
  2. 2. Forms of Intellectual Property• Patents• Trademarks• Copyrights• Trade Secrets
  3. 3. Patents• Historical Context• Definition• Federal Statutes 35 U.S.C.• Court of Appeals for the Federal Circuit
  4. 4. Patenting vs. Trade Secrets• The bargain: protection of the invention as a reward for disclosing it to others• How this advances technology in general
  5. 5. What Patents Can Protect• Virtually any item, compound, or process made by man• Exceptions vary by laws of individual countries
  6. 6. Timelines• In general, one year limit from public disclosure to filing• Invention “for sale” starts the bar even if discussions private• Invention recordation at Science Centers may begin critical one-year period
  7. 7. Types of Applications• Utility• Designs• Plant• Provisional Applications• Continuing Applications
  8. 8. Patent Applications• Title, abstract, declaratory documents• Specification – Background – Summary of Invention – Detailed description and drawings• Claims
  9. 9. Specification• What should be included• What is not necessary• Examples of inadequate disclosures resulting in invalid patents
  10. 10. Claims• Exact statements of precisely what the invention encompasses• Claims are what are substantively examined and eventually allowed or finally rejected• Broad vs. narrow• Examples
  11. 11. Patent Examination• Laws and regulation similar world-wide• Whole application reviewed for technicalities (regulations—form) and well as substance (patentability)• Search• Action rendered by examiner
  12. 12. Conclusion of Examination• Allowance• Final rejection• Appeal• Filing of continuing applications• Abandonment
  13. 13. Patent Allowed to Issue• Means that you can prevent others from practicing the invention covered by the claims• Does not necessarily mean that you can practice it yourself• Licensing or sale of patent rights
  14. 14. Inventorship• Those who contribute ideas that are embodied in the claims• A sole inventor must have conceived the ideas in all claims• Those who contribute ideas, but whose ideas don’t make into claims are not inventors
  15. 15. Introduction to the Patent Cooperation Treaty
  16. 16. The Patent Cooperation Treaty• A United Nations Treaty – signed in June of 1970 at the Washington Diplomatic Conference – became operational in June of 1978 – administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland
  17. 17. Purposes of the PCT• To simplify the process of filing foreign patent applications• To give every regional or national patent Office designated by the applicant the benefit of – a search by a major patent Office – an optional examination by a major patent Office
  18. 18. PCT Contracting State• A country which is a signatory to the PCT• Eighteen (18) Contracting States in 1978• Currently one hundred and twenty-three (123) Contracting States• Patent protection is available in each PCT Contracting State through either – a national patent Office – a regional patent Office – or both
  19. 19. Regional Patents States designated for regional protectionAP ARIPO Patent EA Eurasian Patent EP European Patent OA OAPI Patent BW Botswana AM Armenia AT Austria v BF Burkina Faso v BE Belgium v BJ Benin GH Ghana AZ Azerbaijan BG Republic of Bulgaria v CF Central African GM Gambia CH Switzerland Republic KE Kenya BY Belarus v CY Cyprus v CG Congo LS Lesotho KG Kyrgyzstan CZ Czech Republic v DE Germany CI Cô te d’Ivoire MW Malawi KZ Kazakhstan v CM Cameroon MD Republic of DK Denmark MZ Mozambique EE Estonia v GA Gabon SD Sudan Moldova ES Spain v GN Guinea SL Sierra Leone RU Russian FI Finland v GQ Equatorialv SZ Swaziland Federation v FR France Guinea TJ Tajikistan GB United Kingdom v GW Guinea-Bissau TZ UnitedRepublic TM Turkmenistan v GR Greece v ML Mali HU Hungary v MR Mauritania of Tanzania v IE Ireland v NE Niger UG Uganda v IT Italy v SN Senegal ZM Zambia LI Liechtenstein v TD Chad LU Luxembourg ZW Zimbabwe v v TG Togo MC Monaco v NL Netherlands PL Poland v Regional patent only PT Portugal RO Romania SE Sweden v SI Slovenia SK Slovakia TR Turkey
  20. 20. National Patents States designated for national protectionAE United Arab Emirates HR Croatia NA NamibiaAG Antigua and Barbuda HU Hungary NI NicaraguaAL Albania ID Indonesia NO NorwayAU Australia IL Israel NZ New ZealandBA Bosnia and Herzegovina IN India OM OmanBB Barbados IS Iceland PG Papua New GuineaBR Brazil JP Japan PH PhilippinesBW Botswana KP Democratic People’s RO RomaniaBZ Belize Republic of Korea SC SeychellesCA Canada KR Republic of Korea SG SingaporeCN China LC Saint Lucia SY Syrian Arab RepublicCO Colombia LK Sri Lanka TN TunisiaCR Costa Rica LR Liberia TT Trinidad and TobagoCU Cuba LT Lithuania UA UkraineDM Dominica LV Latvia US United States of AmericaDZ Algeria MA Morocco UZ UzbekistanEC Ecuador MG Madagascar VC Saint Vincent and theEG Egypt MK The former Yugoslav GrenadinesGD Grenada Republic of Macedonia VN Viet NamGE Georgia MN Mongolia YU Serbia and Montenegro MX Mexico ZA South Africa
  21. 21. Number of international applications received 110,065120,000110,000100,000 90,000 80,000 70,000 60,000 50,000 40,000 30,000 20,000 10,000 0 1978 1982 1984 1986 1988 1994 1996 1998 1980 1990 1992 2000 2002
  22. 22. Traditional patent systems (months) 0 12 File applications File abroad application locallyLocal patent application followed within 12 months bymultiple foreign applications claiming priority underParis Convention: - multiple formality requirements - multiple searches - multiple publications - multiple examinations and prosecutions of applications - translations and national fees required at 12 months
  23. 23. PCT System Chapter I 20 30 International(months) publication 0 12 18 OR Enter File first File International Search File national application PCT Report & Written Demand phase Opinion of the ISA International preliminary 30 examinationLocal application followed within12 months by the PCT, claiming priority Chapter IIunder the Paris convention - one set of formalities requirements - international search - international publication - optional international preliminary examination - translations and national fees required at 20 or 30 months, and only if applicant wants to proceed with national phase entry
  24. 24. The two phases of the PCT• International Phase – Chapter I (mandatory) • designated Offices – Chapter II (optional) • elected Offices• National Phase (stage)
  25. 25. The international application• A single application is – filed in one language – filed in one patent Office • the receiving Office (RO) • usually the applicants home patent Office – treated as a national application in each designated State as of the international filing date• Compliance with the form prescribed for the international application must be accepted by all designated States during national stage
  26. 26. Chapter I proceedings• International application filed• International search performed by the International Searching Authority (ISA)• International Search Report and Written Opinion of the International Searching Authority prepared• Optional amendment to the claims only – filed with the International Bureau (IB) of WIPO under Article 19 after Search Report mailed• International application, International Search Report and Article 19 amendment published by IB – published pamphlet sent to designated States by IB – Written Opinion of the International Searching Authority not published with pamphlet
  27. 27. Chapter II proceedings• Demand electing at least one eligible State is filed with a competent International Preliminary Examining Authority (IPEA) – may include amendments to description, claims and drawings under Article 34• Written Opinion of the International Searching Authority is considered the Written Opinion of the IPEA• A second Written Opinion will be prepared only in very rare circumstances• International Preliminary Report On Patentability or “IPRP” (form PCT/IPEA/409) is – prepared by IPEA and sent to applicant and IB – sent to elected States by IB
  28. 28. Steps for national stage entry• Prepare translations of the international application into languages required by the desired patent offices as applicable – translations should be “accurate” – amendments, even those considered to be minor in nature, should not be made to the translation • applicant may file amendments to the application in each DO/EO• Transmit translation and necessary fees to each desired national or regional patent office previously designated/ elected
  29. 29. Purpose of national phase• Once national phase entry requirements have been met, each designated/elected Office decides whether to grant a patent or reject the claims
  30. 30. Advantages of the PCT• To file in up to 123 countries with a single international application• To delay the expenses associated with – translations – foreign filing fees – local associates• To provide an early indication of pertinent prior art• To give extra time for assessment of commercial viability in designated States
  31. 31. January 2004 changes• Enhanced international search and preliminary examination (EISPE) system• Change to time limit for filing a demand for international preliminary examination• Automatic designation and election of Contracting States• Simplified fee system
  32. 32. PCT resources• PCT and Regulations under the PCT, the PCT Newsletter, the PCT Applicants Guide, etc., available on the Internet at the following URL:
  33. 33. Contact Information
  34. 34. Thank You!