Transcript Year In Review 2011 - Oakland University

Ram R. Shukla and Angela Ortiz
Resource Supervisory Patent Examiners
Elijah J. McCoy- Detroit Satellite Office
United States Patent and Trademark Office
300 River Place, Detroit, MI 48207
(313) 446-4800
[email protected]
[email protected]
www.uspto.gov
The Patent Process at the USPTO
1
Forms Of Intellectual Property
Protection
•
Patents – granted by U.S.
Patent & Trademark Office
•
Trademarks - registered
with U.S. Patent & Trademark
Office
•
Copyrights - registered by
Library of Congress
•
Trade Secrets
2
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
3
What is a Trademark?
•
Trademarks - symbols or slogans that
represent goods or services - can last
indefinitely as long as they are not allowed
to become generic
•
Term – 10-year term with 10-year renewal
terms
4
What is a Copyright?
Copyright - Library of Congress
– Protects “original works of
authorship” including literary,
dramatic, musical, artistic and
certain other intellectual
works.
– Term - Author’s life + 70 years
5
What is a Trade Secret?
Trade Secrets - based on contracts - may offer
protection indefinitely
“FORMULA”
“RECIPE”
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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
Constitutional Authority
−
Congress shall have the power…”to promote the progress of
science and useful arts by securing for limited times to
authors and inventors the exclusive right to their respective
writings and disclosures…” U.S. Const. art 1, sect 8 cl 8
7
Facts
Fiscal Year 2011 - 536,013 utility, design, & plant
applications received.
Fiscal Year 2012 - 564,354 utility, design, & plant
applications received(5.3% increase)
Fiscal Year 2013 as of March - 269,337 utility, design
patents, & plant patents received
8
What Is The Effective Life Of A
Patent ?
Term - 20 years
from filing
(applications filed
after June 8, 1995)
9
Design Patents
Design patents protect the way an
object appears
10
What Can Be Patented ?
•
Machine
•
Article of manufacture
•
Process
•
Composition of matter
•
Improvements in any of
the above
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What Cannot Be Patented?
Inventions which:
– are NOT NEW (lack novelty)
– were “made PUBLIC” more than
one year prior to patent
application filing date
– are OBVIOUS variations of
known technology
– lack UTILITY (or usefulness)
– are not CLEAR
(incomprehensible)
12
Who May Apply For A U.S.
Patent?
Anyone...from anywhere may apply, with
only one exception*
–
Application must normally be in
the inventor’s name.
13
Who May Not Apply ?
Officers and employees of the U.S.
Patent & Trademark Office
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United States Patent and Trademark
Office Alexandria, VA
15
Patents Nationwide Workforce
Satellite Office Model
– Regional examiners assigned to an Art Unit at
Headquarters (HQ)
– Regional examiners remain at Satellite Office
– HQ SPE will review and sign Office Actions
– HQ SPE will be rating official for regional examiners
– Training done at regional facility using current
collaboration systems
– Incoming patent applications and follow-on papers
will still be filed to HQ
16
17
Elijah J. McCoy Satellite Office
300 River Place, Detroit
Patents Nationwide Workforce: Regional Office
18
Elijah J. McCoy
19
Detroit Office Features for
Business
Public Search
– Public Search terminal(s) connected to USPTO’s
internal search tools offer access to the world’s
leading databases of prior art to search patentability
Communication with USPTO Examiners and
Management
– Conference rooms to support video conference and
live interviews between inventors, practitioners and
patent examiners
– USPTO personnel available live and by videoconference to answer questions
Small Business Assistance
– Hotline access to USPTO inventor assistance center 20
Patent Examination
•
•
•
•
Read and
understand
specification
Determine whether
spec is adequate
Determine scope of
the claim
•
Determine patentability
•
Write/mail a legal office
action on the patentability
•
Respond to applicants
response
Search existing
technology for
claimed invention
•
Issue patent or
abandonment
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Examination Process
Rejection
First
First
Examination
Examination
Allowance
Amendment
Second
Second
Examination
Examinatio
n
Appeal Brief
Notice
of
Allowance
Appeal
Appeal
Process
Process
22
Patent “Claims”
•
The “heart” of the patent grant.
•
Specific definition of the invention.
•
Metes and bounds of the patent
coverage
23
Patent “Claims” – US 8,000,000
Visual Prosthesis configured to provide
neural stimulation for the creation of
artificial vision
24
Claims – Example (cont)
US PATENT 8,000,000
A Visual Prosthesis apparatus comprising:
A camera for capturing a video image;
A video processing unit associated with the camera, the video processing
unit configured to convert the video image to stimulation patterns, the
video processing unit is configured to stop transmitting the stimulation
patterns to the retinal stimulation system when the retinal stimulation
system does not transmit valid back telemetry data; and
A retinal stimulation system configured to stop stimulating neural tissue in a
subject’s eye, and return an error signal to the video processing unit,
based on the stimulation patterns when an error is detected in a forward
telemetry received from the video processing unit.
25
Examiner Tools
• PALM – Patent Application Locating and
Monitoring
• EAST – Examiner Automated Search Tool
• WEST – Web-based Examiner Search Tool
• OACS – Office Action Correspondence
Subsystem (eRed folder)
• IFW – Image File Wrapper
• eDAN – electronic Desktop Application Navigator
• MADRAS
26
USPTO Initiatives for Expedited
Examination of Applications
• Accelerated Examination
http://www.uspto.gov/patents/process/file/accelerated/index.jsp
• Track One
http://www.uspto.gov/patents/init_events/Track_One.jsp
• Patent Prosecution Highway
http://www.uspto.gov/patents/init_events/pph/index.jsp
27
USPTO Initiatives for Compact
Prosecution and Pendency Reduction
• Quick Path Information Disclosure Statement (QPIDS)
http://www.uspto.gov/patents/init_events/qpids.jsp
• After Final Consideration Pilot (AFCP)
http://www.uspto.gov/patents/init_events/afcp.jsp
28
USPTO Resources for Inventors
•
•
•
•
Patent Assistance Center
Trademark Assistance Center
Inventors Eye eNewsletter
On-line chats, Bi-monthly
• Experts answer questions
• Transcripts on-line
29
USPTO Resources for Inventors
Pro Bono Pilot Program
– Pilot in Minnesota
• Both private and corporate attorney
involvement
• Bundled and unbundled services
– 501 (c)(3) administrator
• LegalCORPS of Minneapolis
• Matches clients with volunteer attorneys
– Inventors investment of time and money
– USPTO Certification training, patent search,
financial limit plus $1000 admin cost
30
USPTO Resources for Inventors
• Ombudsman Program
– enhance the USPTO’s ability to assist applicants
with issues that arise during patent application
prosecution
– when there is a breakdown in the normal
prosecution process, the Ombudsman Program can
assist in getting the process back on track
– USPTO is now creating a Small Business specific
ombudsman program
• Email: [email protected]
31
USPTO
http://www.uspto.gov/
Inventor Resources
32
First-time Filers Start Here!
Search Patents
Check Status of an Application
File an Application or Documents
http://www.uspto.gov/patents/index.jsp
33
IP Awareness Assessment Tool
Check your Awareness of
the various aspects of IP
10 Categories of IP Covered:
• Utility Patents
• Trademarks
• Copyrights
• Trade Secrets
• Design Patent
• IP Strategies & Best
Practices
• Using Technology of Others
Licensing Technology to
Others International IP
Rights and IP Asset Tracking
http://www.uspto.gov/inventors/assessment/
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AIA Enactment Timeline
Day of Enactment
Sept 16, 2011
10 Days
Sept 26, 2011
Reexamination transition for
threshold
Prioritized
Examination
Tax strategies are deemed
within prior art
15% transition
Surcharge
Oct 1, 2011
Reserve
Fund
60 Days
Nov 15, 2011
Electronic
filing
incentive
Best mode
Human organism
prohibition
OED statute of limitations
12 Months
Sept 16, 2012
Inventor’s
oath/declaration
Preissuance
submission
18 Months
Mar 2013
First inventor to file
Derivation
proceedings
Supplemental
examination
Repeal of statutory
invention
registration
Citation of prior art in a
patent file
New patent fees
Inter partes review
Micro entity
discount
Post-grant review
Transitional
post-grant review
program for covered
business method
patents
Provisions are enacted
35
AIA Impact on pre-AIA 35 U.S.C. 102
Pre-AIA 35 U.S.C. 102
A person shall be entitled to a patent unless—
AIA 35 U.S.C. 102
Concordance
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a
foreign country, before the invention thereof by the applicant for patent, or
102(a)(1)
(b) The invention was patented orAbandonment
described in a printed publication
in this or a foreign country or in public use or on sale
of invention
in this country, more than one year prior to the date of the application for patent in the United States, or
(c) He has abandoned the invention,
or
Premature
foreign patenting
(d) The invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the
applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this
country on an application for patent or inventor’s certificate filed more than twelve months before the filing date of the
application in the United States, or
102(a)(2)
(e) The invention was described in
(1)
(2)
No corresponding
provision
An application for patent, published under section 122(b), by another filed in the United States before the invention
by the applicant for patent or
A patent granted on an application for patent by another filed in the United States before the invention by the
applicant for patent, except than an international application filed under the treaty defined in section 351(a) shall have
the effects for the purposes of this subsection of an application filed in the United States only if the international
application designated the United States and was published under Article 21(2) of such treaty in the English
language, or
Derivation
(f) He did not himself invent the subject matter sought to be patented, or
(g)
101 and 115
Prior invention by another
(1) during the course of an interference conduced under section 135 or section 291, another inventor involved therein
establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made
by such other inventor and not abandoned, suppressed, or concealed, or
(2) Before such person’s invention thereof, the invention was made in this country by another inventor who had not
abandoned, suppressed, or concealed it.
No corresponding
provision
36
AIA Statutory Framework
Prior Art
35 U.S.C. 102(a)
(Basis for Rejection)
102(a)(1)
Disclosure with Prior
Public Availability Date
102(a)(2)
U.S. Patent,
U.S. Patent Application,
and PCT Application
with Prior Filing Date
Exceptions
35 U.S.C. 102(b)
(Not Basis for Rejection)
102(b)(1)
(A)
Grace Period Disclosure by Inventor or
Obtained from Inventor
(B)
Grace Period Intervening Disclosure by
Third Party
(A)
Disclosure Obtained from Inventor
102(b)(2)
(B)
Intervening Disclosure by Third Party
(C)
Commonly Owned Disclosure
37
“Otherwise Available to the Public”
• Introduced by the AIA; no corresponding
language in pre-AIA 35 U.S.C. 102
• Catch-all to account for other means of making
an invention publicly available
38
AIA Resources
• Statutory Framework Chart:
http://www.uspto.gov/aia_implementation/FITF_card.pdf
• FAQs: http://www.uspto.gov/aia_implementation/faqs_first_inventor.jsp
• Examiner Introductory Video: http://helix-1.uspto.gov/asxgen/AIA Close
Cpt.wmv
• Examiner Overview Training Slides: (available on AIA micro-site soon)
• Examiner Follow-up Video: (available on AIA micro-site soon)
39
AIA Help
• 1-855-HELP-AIA (1-855-435-7242)
• [email protected]
• www.uspto.gov/AmericaInventsAct
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Thank You
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