Year In Review 2011 - Oakland University

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 - Authors life + 70 years 5 What is a Trade Secret? Trade Secrets - based on contracts - may offer protection indefinitely FORMULA FORMULA

RECIPE RECIPE 6 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 powerto 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 11 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 inventors name. 13

Who May Not Apply ? Officers and employees of the U.S. Patent & Trademark Office 14 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 USPTOs internal search tools offer access to the worlds 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 21 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 subjects 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 USPTOs 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/ 34 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 12 Months Sept 16, 2012 Inventors oath/declaration First inventor to file Preissuance

submission Derivation proceedings Supplemental examination Repeal of statutory invention registration Citation of prior art in a patent file OED statute of

limitations 18 Months Mar 2013 Inter partes review Post-grant review New patent fees Micro entity discount 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 (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 AIA 35 U.S.C. 102 Concordance 102(a)(1) (b) The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale Abandonment 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 inventors 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 inventors 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 101 and 115

(g) (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 persons invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) Before such persons invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. Prior invention by another 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 40 Thank You

41

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