1 John Calvert Supervisory Patent Examiner John.calvert@uspto.gov.

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John CalvertSupervisory Patent Examiner

John.calvert@uspto.gov

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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.Letters Letters PatentPatent

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WHAT CAN BE PATENTED ?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 adequately described or enabled Are mere abstract ideas,laws of nature or natural

phenomena Are not clearly and concisely claimed

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WHO MAY APPLY FOR A U.S. PATENT ?WHO MAY APPLY FOR A U.S. PATENT ?

Application must normally be in the inventor’s name.

Anyone...from anywhere may apply, with only one exception*

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WHO MAY NOT APPLY ?WHO MAY NOT APPLY ?

Officers and employees of the U.S. Patent & Trademark Office

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Types of Applications

Provisional Application

Non-Provisional Application

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Provisional Applications

Provisional Application

Is NOT Examined

Does NOT mature to a PATENT

Pendency lasts only 12 MONTHS

Establishes earliest Date of Priority for your invention

Simple filing requirements

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Provisional Applications

Provisional Application - Cont’ Filing Requirements:

Signed Cover Letter - available online Detailed ENABLING description of Invention including any

necessary Drawings. Must be in compliance with 35 USC 112 1st Paragraph

fee

Biggest Benefit: Adds up to ONE Year to Patent Term Gives time to perfect the filing of the Non-Provisional

Application Interim Patent Pending Rights

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Non-Provisional Applications

More complex filing requirements

Is examined by a Patent Examiner

May mature to a Patent

Last 20 years from date of filing

Can claim benefit to filing date of Provisional Application (if Provisional Application was previously filed)

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Non-Provisional Application

Application Requirements Written Description (Specification) Claim(s) - at least one Drawing(s) (usually required) Executed Oath and Declaration Fee

Filing Date Date Received in the USPTO Express Mail Certificate Certificate of Mailing will NOT establish filing Date

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Other Parts - Recommended

Transmittal Sheets Application Transmittal Fee Transmittal

Express Mail label Prior Art - Information Disclosure Statement Nucleotide or Amino Acid sequences - when

necessary Application Data Sheet - Print EFS

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Arrangement of ApplicationTitle,

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

Parts, Form and Content

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Application Preparation

Accurate Title

Our Example: IMPROVED PAPER CLIP

TITLE: PAPER CLIP WITH LATERAL SERATED INDENTATIONS FOR GRIPPING

Proper headings in written disclosure presented as double spaced document

Use generic terminology - avoid trade names

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Generic Terminology

Liquid Paper correction fluid

Mylar polyester film

Velcro hook and loop fastener

Lycra expanded polyurethane

Xerox electrophotographic copying machine

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Example of Disclosure Format

TITLE

PAPER CLIP WITH LATERAL SERATED INDENTATIONS FOR GRIPPING

BACKGROUND OF THE INVENTIONThis invention relates to paper clips…

SUMMARY OF THE INVENTIONThe invention is directed to a unique paper clip…

BRIEF DESCRIPTION OF THE DRAWINGSFIG 1 is a perspective view of…

DETAILED DESCRIPTION OF THE INVENTIONReferring to the figures of drawings…

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Abstract of the Disclosure

Limit to concise explanation of invention

do not use legal language (said, comprise, means, etc.)

provide structure not merits of invention

write as a quick look at the invention to draw interest

should be limited to a single paragraph Limit the Abstract to between 50 and 150 words

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Inventor Declaration

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Transmittal Letter

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Certificate of Mailing[Use for Post-Filing Correspondence]

I hereby certify that this correspondence is beingdeposited with the United States Postal Service withsufficient postage as first class mail in an envelopeaddressed to:

Assistant Commissioner for PatentsWashington, D.C. 20231on _________. (Date)

Typed or printed name of person signing thiscertificate: ___________________________Signature: ___________________________

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Certificate of Transmission[Cannot be used for application filing]

I hereby certify that this correspondence is being facsimiletransmitted to the United States Patent and TrademarkOffice, Fax No.(703) ____ - _______ on_________________ (Date).

Typed or printed name of person signing this

certificate: ___________________________

Signature: ___________________________

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Information Disclosure Statement [IDS]

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Assignment of Application

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Filing your Application

Use express mail [37 CFR 1.10] Include a self addressed post card identifying

all papers mailed to PTO (i.e., 14 pages of Specification, 5 claims, 3 drawings, etc.)

Identify the first page of all papers with applicant’s name and title of invention

Make copies of all correspondence to and from the PTO

Include all necessary Fees

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Forms of intellectual property protection

COPYRIGHTS - Library of Congress

TRADEMARKS - U.S. Patent & Trademark Office

PATENTS - U.S. Patent & Trademark Office

TRADE SECRETS

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Forms of intellectual property protection

TRADEMARK - U.S. Patent & Trademark Office

Word, phrase, symbol or design, which identifies and distinguishes the source of the goods or services of one party from those of others.

Term - 10-year term with 10-year renewal terms

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Trade Secrets

Not protected by U.S. laws

No recourse for infringement

Works only if product cannot be reverse engineered

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Forms of intellectual property protection

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

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Resources

http://www.uspto.gov 1-800-PTO-9199