PATENTS:AN INTRODUCTION & OVERVIEW Technology Association of Georgia January 2014 Elizabeth L. Dougherty Director of Inventor Education, Outreach, & Recognition
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PATENTS:AN INTRODUCTION & OVERVIEW Technology Association
of Georgia January 2014 Elizabeth L. Dougherty Director of Inventor
Education, Outreach, & Recognition
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
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
What is the Value of a Patent? Incentive to Invent Security for
Investment New Technology Resources Ensure that Investment of Time
and Money is Rewarded to Continue Future Incentive Stimulation
Accelerates Development Strengthens National Economy Creation of
Assets (To Sell or License, Collateral for Financing) Building
Block for Future Inventions Source of Historical Information
What drives invention? Improvements on known technology A
better way of doing things Long felt need Invention leads to
disruptive technology or simple improvements
Types of Patents Utility New and useful process, machine,
article of manufacture, or composition of matter, or any new and
useful improvement thereof Design Any new, original and ornamental
design Plant Whoever invents or discovers and asexually produces
any distinct and new variety of plant
Utility Applications Provisional Not examined or published
One-year time limit Only for utility Non-Provisional Examined:
claims required, written description must meet requirements
Published Unless request for non-publication at filing 18 months
from earliest filing date Can become a patent
Design Patent Applications Design patents protect the way an
object appears, ornamental features of invention No provisional
application 14 year term, from issue No maintenance fees
Plant Patent Applications Plant patents protects asexually
produced plant varieties
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 11
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 remained or 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 12
Micro-entity 75% reduction in fees The AIA defines a micro
entity as an applicant who certifies that he/she: Qualifies as a
small entity; Has not been named as an inventor on more than 4
previously filed patent applications; Did not, in the calendar year
preceding the calendar year in which the applicable fee is paid,
have a gross income exceeding 3 times the median household income;
and Has not assigned, granted, or conveyed (and is not under
obligation to do so) a license or other ownership interest in the
application concerned to an entity that, in the calendar year
preceding the calendar year in which the applicable fee is paid,
had a gross income exceeding 3 times the median household
income.
How to File? Who should file? File yourself (Pro Se) Use a
Registered Attorney or Agent See
http://www.uspto.gov/ip/boards/oed/practitioner/agents/index.jsp
Filing Method Via EFSweb (Non-electronic filing fee:
$400/$200/$200) By Mail Walk-up window at the USPTO 15
Examination Read specification Interpret drawings Diagram
claims Search the prior art Make legal/engineering determination
Write opinion (Office Action) First Final 16
Examination Process First Examination Allowance Second Second
Examination Examination Rejection Notice of Allowance Amendment
Appeal Brief Appeal Process
Current Patent News, Initiatives, and Resources
Data Visualization
Unexamined Patent Application Backlog FY 2009 FY 2014 (through
January 7) 596,990 Unexamined Applications as of January 7, 2014.
20
Patent Application Initiatives Web page 21
You can get to the program pages by selecting a tile. 22
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Prioritized Examination Fast innovation is Americas competitive
edge. If you need to move your ideas quickly, USPTO's Track One
prioritized examination will allow you to get a final disposition
within about twelve months. The USPTO offers Track One for
prioritized examination of your utility and plant patent
applications. Track One gives your application special status with
fewer requirements than the current accelerated examination program
and without having to perform a pre-examination search.
$4000/$2000/$1000
Track One Office Time/Applicant Time Track One Vs. Total
Pendency (12-month Rolling Average through December) 44.0 RCEs
Included No RCEs 40.0 4.5 36.0 32.0 3.2 9.7 Months 28.0 24.0 7.0
20.0 3.0 16.0 12.0 2.5 23.8 20.7 5.9 8.0 4.7 4.0 5.6 4.3 0.0
12MthAvgThruDecNotIncludingRCEs TrackOne12MthAvgThruDecNot
IncludingRCEs TimeAwaitingFirstAction 12MthAvgThruDecIncludingRCEs
TrackOne12MthAvgThruDecIncluding RCEs ProsecutionTimeWithApplicant
ProsecutionTimeWithOffice 25
PPH Background Backlogs in offices around the world began to
explode in the late 1990s The number of applications filed in
multiple offices also started to steadily increase Offices began
discussing potential ways to improve efficiencies focusing on
worksharing PPH began as a pilot in between the JPO and USPTO in
2006 Today - 30 offices worldwide; 27 with USPTO 26
PPH Basics When an applicant receives a ruling from a first
office that at least one claim in their application is allowable,
the applicant can request to enter the PPH program in a second
office If the request is granted, the second office can use the
work done by the first office as a starting point That PPH case is
then fast-tracked in the second office The second office is now
looking at a case where most, if not all, of the major issues
should already have been addressed 27
PPH Benefits PPH results compared with all cases: Paris-PPH
PCT-PPH All Cases Grant Rate (Allowances/Total Number of Disposals)
86% 88% 51% First Action Allowance Rate 26% 20% 14% 2.3 1.6 2.6 -
3.5 Actions per Disposal 28
Benefits to Users and Offices Rapid prosecution Higher grant
rates Fast portfolio building Cost Savings!! Creates an environment
for rapidly introducing innovations into the marketplace 29
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Interview Webpage 31
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 have completed stakeholder
responsiveness training 32
Ombudsman Program Process Applicant/Attorney access through
USPTO.gov website Ombudsman will call within one business day to
obtain details Complaint is routed to the person who can address it
(SPE, TC Director, etc) Ombudsman may or may not address the
complaint directly 33
USPTO.GOV Website Ombudsman Program 34
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Satellite Office Program (3)
Resources -USPTO on the Web www.USPTO.gov
Features of the Website Apply Online for a Patent using EFS-Web
Obtain Status of a Patent Application Determine when application
will be picked up for examination, see First Office Action
Estimator Search US Patent Database Search Patent Classification
Manual Download Forms and Fee Schedules Patent Help Resources
Access Details of All Currently Pending Published Patent
Applications (Public PAIR) IP Awareness Assessment Tool
Overview of Website Helpful links for independent inventors
Click on Inventors - General Information Introductory Guides FAQs
Upcoming Events Registered Attorneys & Complaints Against
Inventors Assistance Center and much more
IP Awareness Assessment Tool
Inventor Resources Wide variety of resources to help the
independent inventor FAQs, Online Chat Transcripts, events, and
more www.uspto.gov/inventors
Pro Bono Assistance Encouraged by the AIA By the end of 2014 it
is anticipate that at least part or all of 47 states will have a
pro bono program to assist inventors and small businesses An online
portal for placing inventors in the current regional pro bono
patent legal programs has been developed. This portal serves as a
clearinghouse and is operated by the Federal Circuit Bar
Association. Certificate Training Course
State Resources - Georgia Patent attorneys and agents
Registered Patent Attorneys/Agents in Georgia Patent and Trademark
Resource Center Georgia Institute of Technology, Atlanta Inventor
Organizations Inventor Associates of Georgia, Inc.
www.GAInventors.org Columbus Phenix City Inventors Association
www.cpcinventorassociation.weebly.com The Native American Inventors
Association 3235 Roswell Road, Unit 703 Atlanta GA 30305 Attorneys
General 404.656.3300 40 Capitol Square SW Atlanta GA 30334.-1300
georgia.gov/02/ago/home/0,2705,87670814,00.html
Inventors Eye
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
[email protected] Electronic Business Center (EBC)
1-866-217-9197 [email protected]