This slide deck is prepared by Mindy Bickel, a USPTO employee since 1989. Mindy works with innovators, entrepreneurs and local educators in and around New York City, providing them with appropriate information and resources offered by the USPTO and the Department of Commerce. This slide was used for a CoInvent event on Sept. 4th, 2014.

1. Understanding the
Patent Process
Mindy Bickel, Innovation Outreach
Coordinator

2. Patent Process

3. Patent Process

4. Allowance
Examination Process
First
First
Examination
Notice
of
Allowance
Second
Examination
Rejection
Response
Second
Examination
Appeal
Process
Appeal Brief
Abandonment

5. 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

6. Examination
Patent Examiner will:
•Read specification
• Interpret drawings
• Diagram claims
• Search the prior art
• Make legal/engineering determination
• Write opinion (Office Action)
-First
-Final

7. Applicant Response
• Amendment
- Non-final
• Right of entry
- Final
• No right of entry
- Requirements
• Answer all formal objections and rejections
– Amendment or argument or both
– Replacement paragraph, claims or drawing
following rules
– For more information on submitting a proper
amendment, visit
http://www.uspto.gov/patents/law/moreinfoamdtprac.jsp

8. 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 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

9. Typical Misunderstandings
Pro se applicants:
• Are not always aware of what protection a
patent gives them;
• Are not always aware of what the difference
between a provisional patent application and a
non-provisional application is; and
• Often lack the necessary knowledge to draft their
own patent applications (format, forms, fees,
prior art search).

10. Typical Misunderstandings
Pro se applicants:
• Are challenged by the prior art and terminology
used in Office actions;
• Frequently fail to respond in writing in a timely
manner or with the necessary fees; and
• Frequently fail to ask for help!

11. Pro se problems
Pro se vs. Represented Abandonment Percentage

12. Helpful Hints
• Interview
- Pro Se
• Phone or in person
- Attorney/Agent
• Phone or in person
• Inventor cannot have interview without attorney or
agent present

13. Allowance and Issue
• Fees
- No extension of time permitted
- To check current fee schedule:
http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm
• Amendments after allowance
- Minor corrections, drawings, formal matters
• Corrections
- Inventorship, misspelled words
• Time to publish patent

14. After Patent Grant
Protection begins
Maintenance fees
- Due at 3.5,7.5 and 11.5 years
Correction
- Certificate of Correction
- Reissue
• Broadening
• Narrowing

15. Satellite Office Program

16. 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 will complete stakeholder
responsiveness training

17. Ombudsman Program-Structure
• Central Program Administration
- Examiner Detailee
• Ombuds Reps in Each TC
- Senior SPEs
- Experienced QAS
• Ombuds Reps in all other business units (internal and
external to Patents)
• Coordination with Office of Innovation Development

18. Ombudsman Program-Process
• Applicant/Attorney access through USPTO.gov
website or 571-272-5555
• Ombudsman will call within one business day to
obtain details
• Complaint is routed to the person who can best
address it (SPE, TC Director, etc.)
• Ombudsman may or may not address the
complaint directly

19. Pro Bono Program

20. 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

21. Resources
• Comprehensive Information and Training Material for First Inventor to
File:
http://www.uspto.gov/aia_implementation/patents.jsp#heading-10
• Inventor Resources: http://www.uspto.gov/inventors/index.jsp
• IP Awareness Assessment Tool:
http://www.uspto.gov/inventors/assessment/index.html
• Scam Prevention:
http://www.uspto.gov/inventors/scam_prevention/index.jsp
• Pro Se & Pro Bono:
http://www.uspto.gov/inventors/proseprobono/index.jsp
• Utility Patent Application Guide:
http://www.uspto.gov/patents/resources/types/utility.jsp

22. Thank You!
Mindy Bickel
Innovation and Outreach Coordinator
Greater New York Region
United States Patent and Trademark Office
Mindy.Bickel@uspto.gov
www.uspto.gov/cornell