General Information on Patents and the Patent Process presented to North American Association of State and Provincial Lotteries June 24, 2008 Brian Hanlon, Deputy Director, Office of Patent Legal Administration

Forms of Intellectual Property Protection  COPYRIGHTS - Library of Congress  TRADEMARKS - U.S. Patent and Trademark Office ® PATENTS - U.S. Patent and Trademark Office P TRADE SECRETS

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 for works created after Author’s life + 70 years, or, for anonymous and pseudonymous works and works made for hire, 95 years from year of first publication, or 120 years from year of creation, whichever expires first

Forms of Intellectual Property Protection ® TRADEMARK - U.S. Patent and 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  Owner must continue to use the mark on or in connection with the goods and/or services in the registration

Forms of Intellectual Property Protection P Trade Secrets Generally protected by states laws Generally protected by states laws n Uniform Trade Secrets Act (UTSA) n Based on contracts – may offer protection indefinitely Recourse for breach of contract Recourse for breach of contract Recourse for misappropriation (federal crime) Recourse for misappropriation (federal crime) Works only if product cannot be reverse engineered Works only if product cannot be reverse engineered

® A grant by the U.S. Government conferring to inventors the right to exclude others from the:  manufacture  sale or offering for sale  use  or import of their inventions for set period of time. of their inventions for set period of time. Letters Patent What is a Patent?

Types of Patents n Utility Patents  Protect the structure and utilitarian features of an invention

Types of Patents n Design Patents  Protect the ornamental appearance of an article of manufacture or portion thereof

Patent System n n To ensure that inventors’ investments of time and money are rewarded, and to encourage future inventive efforts. n n The public is provided a disclosure of how to make and use the invention. This:   Promotes innovation   Accelerates research and development   Strengthens the national economy

Patent Terms – n Utility Patents:  For most, 20 years from date of filing of application.  Design Patents:  14 years from issue date What is the Term of a Patent?

n Utility Patents :  Machines  Articles Of Manufacture  Processes  Compositions Of Matter What is Eligible for Patent Protection?

Inventions that: n are NOT NEW (lack novelty)  were “made PUBLIC” more than one year prior to patent application filing date  invented by another n are OBVIOUS variations of known technology. n lack UTILITY (or usefulness)  do not work (e.g. perpetual motion) n are not adequately described. What Cannot be Patented?

Inventions which: n are mere expressions, ideas or suggestions n are laws of nature, physical phenomena, and abstract ideas What Else Cannot be Patented?

n Anyone, anywhere, may apply, with only one exception…  Officers and employees of the U.S. Patent and Trademark Office. Who May Apply for a Patent?

Pre-Grant Publication n Most applications for patent are published approximately 18 months after the filing date.  The application is published as originally filed, with no changes or corrections.  Applicants may request that their application not be published only at the time of filing, and if no application has been or will be filed in another country, or under a multilateral international agreement, that requires publication at 18 months after filing.  Request must be conspicuous.

The Patent Examiner’s Role n Read and understand the written description of the invention (the “SPECIFICATION”) n Determine whether specification is adequate n Search existing technology (“PRIOR ART”) for the claimed invention n Determine patentability n Issue an “Office Action” which addresses patentability and reasons why rejected claims are not patentable n Reconsider and respond to responses from Applicants

Examination Process Allowance First Examination FirstExamination Notice of Allowance Second Examination Amendment SecondExamination Appeal Process Appeal Brief Appeal Process Rejection

Patent Claim Example - Article

Third Party Submissions of Prior Art While Pending n Third Parties (parties other than the applicant) may submit information relevant to published applications in limited circumstances (37 CFR 1.99)  Submission must be within 2 months after publication of the application.  Submissions must be patents or publications  No comments or explanations by the submitting party are permitted.

Protests n Public may file a protest against a pending application (37 CFR 1.291) n Protest must be filed prior to earlier of publication or allowance, or be accompanied by written consent of the applicant n Protest must list prior art and include concise explanation of relevance n Protestor’s involvement ends after filing of protest n Protest requires service

Citation of Prior Art in Patent File n Any person (3 rd party or patent owner) may cite, to the Office in writing, prior art believed to (i) be pertinent and applicable to the patent and (ii) have a bearing on patentability of a claim (37 CFR 1.501)  Prior art = patents or printed publications n Citation may be entered in the patent file n Citation may be made confidentially n Patent owner should be served copy of citation

Reexamination n Any person (3 rd party or patent owner) may file a request for reexamination by the Office of any claim of a patent based on prior art (37 CFR 1.510)  Prior art = patents or printed publications n Threshold question for Office in determining whether to grant the request: whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request

Reexamination n Decision on the request made no later than 3 months from filing n Proceedings conducted with “special dispatch” within the Office and BPAI n Scope of the coverage provided by the claims cannot be enlarged by amendment n Two types: ex parte and inter partes

Ex Parte Reexamination n Limited participation by 3 rd party requester  Once reexamination is ordered and the times for submitting any responses to the order have expired, no further active participation by 3 rd party requester is allowed n No requirement to identify party on whose behalf reexamination request was filed

Inter partes Reexamination n 3 rd party requesters have greater opportunity to participate in reexamination proceedings n 3 rd party requesters have appeal rights to appeal to the Board and to participate in any patent owner appeal to the Board n Statutory estoppel created against subsequent review, either by the Office or by a Federal Court, of the issues that were or could have been raised in the reexamination proceeding n Must identify party on whose behalf reexamination is filed to permit a determination of privity

n At the USPTO - - “The Public Search Room” – access to electronic search tools used by USPTO examiners n Patent and Trademark Depository Libraries (PTDL’s); more than 80 located in all 50 states, DC and Puerto Rico. n Online - Where Can Patent Searches be Performed?

n Commercial Databases (DIALOG, STN, ORBIT, etc.) n INTERNET (Google, Yahoo, etc.) On-line Search Other Search Resources

FY ‘06 419,760 Growth of 9.2% from ‘05 FY ’07 441,637 Growth of 5.2% from ‘06 UPR Filings

Filings, First Actions, and Backlog

Patent Pendency - 2nd Quarter FY 2008 Technology Center Average 1 st Action Pendency (months) 1 2 nd Quarter FY08 Average Total Pendency (months) 2 2 nd Quarter FY Biotechnology and Organic Chemistry Chemical and Materials Engineering Computer Architecture Software and Information Security – Communications Semiconductor, Electrical, Optical Systems Transportation, Construction, Electronic Commerce Mechanical Engineering, Manufacturing and Products UPR Total 2 nd Quarter FY “Average 1 st action pendency” is the average age from filing to first action for a newly filed application. 2 “Average total pendency” is the average age from filing to issue or abandonment of a newly filed application.

End-of-Year Statistics (FY 2007) n 441,637 UPR applications filed n 26,693 design applications filed n 5.2% filing growth over 2006 n 9.9% examiner attrition n Patents Staff É 5,477 examiners É 376 Supervisory Patent Examiners É 100 Quality Assurance Specialists É 56 SPE/trainers for Patent Training Academy

Quality Results n Improving Quality is our Highest Priority 2006 Result 2007 Result 2008 Goal 3.5% allowance error 4% allowance error 90% in process compliance 92.2% in process compliance 92% in process compliance

 2006 results: 3.5% allowance error and 90.0% in-process compliance  2007 results: 3.5% allowance error and 92.2% in-process compliance  2008 goals: 4% allowance error and 92% in-process compliance Quality Results

Data is through the 2 nd Quarter of Allowance Error Rate

Data is through the 2 nd Quarter of Allowance Rate

Performance Measures FY 02-07

n Brian E. Hanlon Deputy Director, Office of Patent Legal Administration (OPLA) Phone: Contact Information

Thank You