The Patent Process Mark R. Powell U. S. Patent & Trademark Office.

The Patent Process

Mark R. Powell

U. S. Patent & Trademark Office

Forms of Intellectual Property

• Patents

• Trademarks

• Copyrights

• Trade Secrets

Patents

• 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

• 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

• 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

AT Austria BE Belgium

BG Republic of Bulgaria CH Switzerland CY Cyprus

CZ Czech RepublicDE Germany

DK DenmarkEE Estonia

ES SpainFI Finland

FR FranceGB United Kingdom

GR GreeceHU Hungary

IE Ireland IT Italy

LI LiechtensteinLU Luxembourg

MC Monaco NL Netherlands

PL PolandPT PortugalRO Romania

SE Sweden SI Slovenia

SK SlovakiaTR Turkey

Regional Patents

AP ARIPO Patent EA Eurasian Patent EP European Patent OA OAPI Patent BW BotswanaGH GhanaGM GambiaKE KenyaLS LesothoMW MalawiMZ Mozambique SD SudanSL Sierra Leone

SZ SwazilandTZ United Republic

of TanzaniaUG UgandaZM ZambiaZW Zimbabwe

AM ArmeniaAZ Azerbaijan BY Belarus KG Kyrgyzstan KZ KazakhstanMD Republic of

MoldovaRU Russian

FederationTJ TajikistanTM Turkmenistan

Regional patent only

BF Burkina Faso BJ Benin CF Central African

Republic CG Congo CICôte 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

States designated for regional protection

National Patents

AE United Arab Emirates AG Antigua and Barbuda AL Albania

AU AustraliaBA Bosnia and Herzegovina BB BarbadosBR BrazilBW Botswana BZ BelizeCA CanadaCN ChinaCO Colombia CR Costa RicaCU Cuba DM DominicaDZ Algeria EC Ecuador EG EgyptGD Grenada GE Georgia

NA NamibiaNI NicaraguaNO NorwayNZ New ZealandOM OmanPG Papua New Guinea PH PhilippinesRO RomaniaSC SeychellesSG Singapore

SY Syrian Arab Republic TN Tunisia

TT Trinidad and TobagoUA UkraineUS United States of AmericaUZ UzbekistanVC Saint Vincent and the

Grenadines VN Viet NamYU Serbia and MontenegroZA South Africa

HR CroatiaHU Hungary ID IndonesiaIL IsraelIN India IS IcelandJP JapanKP Democratic People’s

Republic of KoreaKR Republic of Korea

LC Saint LuciaLK Sri LankaLR LiberiaLT LithuaniaLV LatviaMA MoroccoMG MadagascarMK The former Yugoslav Republic of MacedoniaMN MongoliaMX Mexico

States designated for national protection

Number of international applications received

010,00020,00030,00040,00050,00060,00070,00080,00090,000

100,000110,000120,000

1978

1980

1982

1984

1986

1988

1990

1992

1994

1996

1998

2000

2002

110,065

Traditional patent systems

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

0 12

Fileapplication

locally

Fileapplications

abroad

(months)

File Demand

File first application

File PCT

International Search Report & Written

Opinion of the ISA

Internationalpublication

0 12 18

Internationalpreliminaryexamination

(months)

OR

30

20

Enternationalphase

Chapter I

Chapter II

PCT System30

- 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

Local application followed within12 months by the PCT, claiming priorityunder the Paris convention

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!