Transcript The Patent Process

The Patent Process
Mark R. Powell
U. S. Patent & Trademark Office
Forms of Intellectual Property
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Patents
Trademarks
Copyrights
Trade Secrets
Patents
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Historical Context
Definition
Federal Statutes 35 U.S.C.
Court of Appeals for the Federal Circuit
Patenting vs. Trade Secrets
• The bargain: protection of the invention as
a reward for disclosing it to others
• How this advances technology in general
What Patents Can Protect
• Virtually any item, compound, or process
made by man
• Exceptions vary by laws of individual
countries
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
Types of Applications
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Utility
Designs
Plant
Provisional Applications
Continuing Applications
Patent Applications
• Title, abstract, declaratory documents
• Specification
– Background
– Summary of Invention
– Detailed description and drawings
• Claims
Specification
• What should be included
• What is not necessary
• Examples of inadequate disclosures
resulting in invalid patents
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
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
Conclusion of Examination
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Allowance
Final rejection
Appeal
Filing of continuing applications
Abandonment
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
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
Introduction to the Patent
Cooperation Treaty
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
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
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
Regional Patents
States designated for regional protection
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AP ARIPO Patent
EA Eurasian Patent
EP European Patent
OA OAPI Patent
BW
GH
GM
KE
LS
MW
MZ
SD
SL
SZ
TZ
AM
AZ
BY
KG
KZ
MD
AT
BE
BG
CH
CY
CZ
DE
DK
EE
ES
FI
FR
GB
GR
HU
IE
IT
LI
LU
MC
NL
PL
PT
RO
SE
SI
SK
TR
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UG
ZM
ZW
Botswana
Ghana
Gambia
Kenya
Lesotho
Malawi
Mozambique
Sudan
Sierra Leone
Swaziland
United Republic
of Tanzania
Uganda
Zambia
Zimbabwe
RU
TJ
TM
Armenia
Azerbaijan
Belarus
Kyrgyzstan
Kazakhstan
Republic of
Moldova
Russian
Federation
Tajikistan
Turkmenistan
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Regional patent only
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Austria
Belgium
Republic of Bulgaria
Switzerland
Cyprus
Czech Republic
Germany
Denmark
Estonia
Spain
Finland
France
United Kingdom
Greece
Hungary
Ireland
Italy
Liechtenstein
Luxembourg
Monaco
Netherlands
Poland
Portugal
Romania
Sweden
Slovenia
Slovakia
Turkey
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BF
BJ
CF
Burkina Faso
Benin
Central African
Republic
CG Congo
CI
Côte d’Ivoire
CM Cameroon
GA Gabon
GN Guinea
GQ Equatorial
Guinea
GW Guinea-Bissau
ML Mali
MR Mauritania
NE Niger
SN Senegal
TD Chad
TG Togo
National Patents
States designated for national protection
AE
AG
AL
AU
BA
BB
BR
BW
BZ
CA
CN
CO
CR
CU
DM
DZ
EC
EG
GD
GE
United Arab Emirates
Antigua and Barbuda
Albania
Australia
Bosnia and Herzegovina
Barbados
Brazil
Botswana
Belize
Canada
China
Colombia
Costa Rica
Cuba
Dominica
Algeria
Ecuador
Egypt
Grenada
Georgia
HR
HU
ID
IL
IN
IS
JP
KP
KR
LC
LK
LR
LT
LV
MA
MG
MK
MN
MX
Croatia
Hungary
Indonesia
Israel
India
Iceland
Japan
Democratic People’s
Republic of Korea
Republic of Korea
Saint Lucia
Sri Lanka
Liberia
Lithuania
Latvia
Morocco
Madagascar
The former Yugoslav
Republic of Macedonia
Mongolia
Mexico
NA Namibia
NI Nicaragua
NO Norway
NZ New Zealand
OM Oman
PG Papua New Guinea
PH Philippines
RO Romania
SC Seychelles
SG Singapore
SY Syrian Arab Republic
TN Tunisia
TT Trinidad and Tobago
UA Ukraine
US United States of America
UZ Uzbekistan
VC Saint Vincent and the
Grenadines
VN Viet Nam
YU Serbia and Montenegro
ZA South Africa
Number of international applications
received
110,065
2002
2000
1998
1996
1994
1992
1990
1988
1986
1984
1982
1980
1978
120,000
110,000
100,000
90,000
80,000
70,000
60,000
50,000
40,000
30,000
20,000
10,000
0
Traditional patent systems
(months) 0
File
application
locally
12
File
applications
abroad
Local patent application followed within 12 months by
multiple foreign applications claiming priority under
Paris Convention:
- multiple formality requirements
- multiple searches
- multiple publications
- multiple examinations and prosecutions of
applications
- translations and national fees required at 12 months
PCT System
Chapter I
File first
application
30
International
publication
(months)
0
20
12
File
PCT
18
International Search
Report & Written
Opinion of the ISA
OR
Enter
national
phase
File
Demand
International
preliminary
examination
30
Local application followed within
Chapter II
12 months by the PCT, claiming priority
under 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
The two phases of the PCT
• International Phase
– Chapter I (mandatory)
• designated Offices
– Chapter II (optional)
• elected Offices
• National Phase (stage)
The international application
• A single application is
– filed in one language
– filed in one patent Office
• the receiving Office (RO)
• usually the applicant's 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
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
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
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
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
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
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
PCT resources
• PCT and Regulations under the PCT, the PCT
Newsletter, the PCT Applicant's Guide, etc.,
available on the Internet at the following URL:
http://www.wipo.int/pct/en/index.html
Contact Information
[email protected]
www.uspto.gov
Thank You!