1. Patents, Trade Secrets and Unfair Competition
Conference on Intellectual Property in the Global Marketplace
Patents, Trade Secrets and Unfair Competition
Charles R. Eloshway
Patent Attorney
Office of International Relations
U.S. Patent and Trademark Office

2. Basis for Protection Constitutional basis in Article I, Section 8.
“Congress shall have the power ... to 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 discoveries.”
First patent law was enacted in 1790
The present law is codified in Title 35 of the United States Code

3. What is a U.S. Patent?
A form of personal property granted by the U.S. government giving the owner the right to exclude others from making, using, selling, offering for sale or importing the claimed invention for a period of 20 years from the application filing date

4. What is a U.S. Patent?
Quid pro quo—in exchange for 20 years of exclusive rights, the inventor must explain how to make and use the invention in sufficient detail
IMPORTANT!—A U.S. Patent provides protection only in the United States
IMPORTANT!—The patent owner enforces the patent, not the U.S. government

5. Stimulating Innovation and Economic Growth by Protecting Investment
Patents and
the U.S. Economy
Research & Development +
Industry & Business
Patent
Applications
Stimulating Innovation and Economic Growth by Protecting Investment
“These industrial property instruments are used to stimulate further innovation and protect investment.”
USPTO
Quality Patents

6. Text equivalent for Slide 5
Research & Development
PLUS
Industry & Business
RESULT in Patent Applications that are
submitted to USPTO
USPTO puts out Quality Patents
RESULT: Stimulating Innovation and Economic Growth by Protecting Investment

7. Types of U.S. Patents Utility patent Plant patent Design patent
Protects articles of manufacture, compositions of matter, machines, or processes, or improvements
Term: 20 years from the application filing date
Plant patent
Protects most asexually reproduced plants
Design patent
Protects new, original and ornamental designs
Term: 14 years from the date of grant

8. Types of U.S. Patent Applications
Provisional utility application
Not available for design patents
Non-provisional application
Most commonly filed application
Patent Cooperation Treaty (PCT) application
International filing mechanism
Hague Agreement on Industrial Designs Application
International mechanism for protecting industrial designs (the U.S. is in the process of ratifying and implementing this treaty)

9. Provisional Patent Application
A low-cost way to establish an earlier effective filing date for a later-filed non-provisional patent application with fewer formalities
Does not mature into a patent
Does not require:
An oath/declaration
A claim
An information disclosure statement (prior art)

10. Provisional Patent Application
May be filed in a language other than English
Must file a corresponding utility patent application within 12 months in order to receive the benefit of the filing date of the provisional application

11. Non-Provisional Utility Patent Application
The “typical” type of application
Requirements:
Specification (description)
At least one claim
Drawings (when necessary)
Oath or declaration
Appropriate fee(s)

12. Non-Provisional Utility Patent Application
Requirements:
May be filed in a language other than English, but an English translation, a statement that the translation is accurate and a processing fee will be required
Nucleotide and/or amino acid sequence listing (when necessary)

13. Plant Patent
A form of personal property granted by the U.S. government giving the owner the right to exclude others from asexually reproducing, selling or using the claimed plant for a period of 20 years from the application filing date.

14. Design Patent
A form of personal property granted by the U.S. government giving the owner the right to exclude others from making, using, offering for sale, importing or selling the claimed invention for a period of 14 years from the grant date

15. Other Types of Patents
Some countries offer another type of patent that provides shorter terms of protection for disclosure of minor improvements of an article of manufacture
Utility models
Petty patents
The U.S. does not offer this type of patent protection

16. Protection Outside the U.S.
An invention can be protected outside the U.S. by:
Filing individual patent applications in each country where protection is desired, based upon Paris Convention priority
Must file within 12-months of filing the U.S. application
Filing a PCT application
Currently 126 countries are members of the PCT.
Designation in each of these countries is automatic, unless expressly withdrawn
More specifics on PCT will be discussed later

17. Overview of USPTO Patents Operations

18. UPR Applications Filed
FY04 – Preliminary Data

19. UPR Patents Issued
FY04 – Preliminary Data

20. UPR Applications Filed: Foreign vs. U.S. – FY 04 (preliminary)
Technology Center
Total Filings US
JPO
EPC
Other
Biotechnology and Organic Chemistry
37,699
59.5%
8.0%
22.7%
9.8%
Chemical and Materials Engineering
49,021
49.6%
21.3%
18.0%
11.1%
Computer Architecture Software and
Information Security
34,353
66.4%
12.4%
10.3%
10.9%
Communications
47,546
47.7%
24.0%
17.2%
Semiconductor, Electrical, Optical
Systems & Components
81,012
43.3%
27.1%
11.3%
18.3%
Transportation, Construction, Electronic
Commerce, Agriculture, National Security and
License & Review
47,626
62.4%
11.7%
14.5%
11.4%
Mechanical Engineering, Manufacturing,
and Products
56,084
63.5%
14.1%
UPR Total (Preliminary Data)
353,342
54.5%
17.7%
14.2%
13.6%

21. Design Applications Filed
FY04 – Preliminary Data

22. Average Total Pendency
FY 04 Patent Pendency
Average 1st Action Pendency
(months)
Average Total Pendency
(months)
Technology Center
Biotechnology and Organic Chemistry
19.2
29.9
Chemical and Materials Engineering
17.9
27.6
Computer Architecture Software and
33.3
41.1
Information Security
Communications
31.4
40.5
Semiconductor, Electrical, Optical
14.0
23.9
Systems & Components
Transportation, Construction, Electronic
Commerce, Agriculture, National Security and
15.6
24.1
License & Review
Mechanical Engineering, Manufacturing,
15.2
24.1
and Products
Corps
20.2
27.6

23. Patent Examining Corps Organization and Size
Seven Technology Centers (TCs)
Biotechnology, Organic Chemistry (TC 1600)
Chemical and Materials Engineering (TC 1700)
Computer Architecture, Software, & Electronic Commerce (TC2100)
Communications (TC 2600)
Semiconductors, Electrical & Optical Systems & Components (TC 2800)
Transportation, Construction, Agriculture and National Security (TC 3600)
Mechanical Engineering, Manufacturing and Products, & Designs (TC 3700 and TC2900)

24. Patent Examining Corps Organization and Size
Every technology center is divided into Art Units (AU)
An AU examines specific subject matter within a subject area
Every AU has one Supervisory Patent Examiner (SPE)
AUs vary in number of examiners
Currently around 4000 patent examiners

25. (Office of Patent Publication) Examination Processing
The Patent Process
Pre-Examination
Processing
(Office of Initial
Patent Examination)
Post-Examination
Processing
(Office of Patent Publication)
Examination Processing
Examining Group
Application Assigned to Examiner
Examiners First Action
Patent Publication Division
Receipt & review of allowed case & papers
Serial No. Assigned
Fees Recorded
Quality Review
Applicant Response
Initial Data Capture
Initial Preparation and Electronic Capture for Printing and Issue
Tentative Classification, Screened
for Security Sensitive Contents
Second Examiner Action
Final Rejection or Allowance
File Maintenance Facility
Match Post-Allowance Papers and Fees
PICS
Electronic Scanning
Applicant Response
Licensing & Review
Security Sensitive Cases
Separately Processed
Final Data Capture
Final Preparation and Electronic Capture for Printing and Issue
Subsequent Examiner Action
Administrative Examination,
Data Entry, Filing Receipt Mailed
Applicant Response
Examiner
Patent Printed and Issued
Courts
Board of Patent Appeals
and Interferences
LEGEND
Normal Processing Sequence
Alternate Processing Sequence
Abandonments
Examiner

26. Text Equivalent for Slide 25
1 Pre-Examination Processing (Office of Initial Patent Examination)
1.1 Serial Number assigned
1.2 Fees Recorded
1.3 Tentative Classification, Screened for Security-Sensitive Contents
1.4 PICS (Patent Image Capture System) Electronic Scanning
1.5 Licensing & Review – Security-sensitive Cases Separately Processed
1.6 Administrative Examination, Data Entry, Filing Receipt Mailed >> GO TO 2.1
2 Examination Processing
2.1 Examining Group - Application Assigned to Examiner
2.2 Examiners First Action >> GO TO 2.9 OR >> GO TO 2.10
2.3 Applicant Response
2.4 Second Examiner Action - Final Rejection or Allowance >> GO TO 2.9 OR >> GO TO 2.10
2.5 Applicant Response
2.6 Subsequent Examiner Action >> GO TO 2.9 OR >> GO TO 2.10
2.7 Applicant Response
2.8 Board of Patent Appeals and Interferences
2.8.1 Examiner >> GO TO 2.9
2.8.2 Examiner >> GO TO 2.10
2.8.3 Courts << END USPTO PROCESS
2.9 Abandonments << END USPTO PROCESS
2.10 Quality Review >> GO TO 3.1

27. Text Equivalent for Slide 25 (continued)
3 Post-Examination Processing (Office of Patent Publication)
3.1 Patent Publication Division – Receipt & Review of Allowed Case and Papers
3.2 Initial Data Capture – Initial Preparation and Electronic Capture for Printing and Issue
3.3 File Maintenance Facility – Match Post-Allowance Papers and Fees
3.4 Final Data Capture – Final Preparation and Electronic Capture for Printing and Issue
3.5 Patent Printed and Issues << END USPTO PROCESS

28. Patent Examination

29. Examination—The Basics
Generally, the examination process is a study by the patent examiner to determine whether the invention described and claimed in the application satisfies the U.S. legal requirements for the grant of a patent
Requirements are set forth in:
Title 35 of the United States Code
Title 37 of the Code of Federal Regulations
Guidance is provided in the Manual of Patent Examining Procedure (MPEP)

30. Basics of U.S. Patent Law

31. Primary Patentability Considerations
35 U.S.C. §101: Patentable subject matter and utility
35 U.S.C. §102: Novelty and Loss of Right
35 U.S.C. §103: Non-obviousness
35 U.S.C. §112, first paragraph: Sufficient disclosure

32. 35 U.S.C. § 101 – Patentable Subject Matter
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
Patentable subject matter is a “process, machine, manufacture or composition of matter” or any “improvement thereof”
Very broad
No explicit exclusions

33. 35 U.S.C. § Utility
Invention must have a practical application--“Useful, concrete and tangible” result
Specific utility
Specific to the claimed invention
Credible utility
Is specific utility credible?
Substantial utility
Utility that has real-world value

34. 35 U.S.C. §102 – Novelty and Loss of Right
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
(b) The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States; or
– continued –

35. 35 U.S.C. §102 – Novelty and Loss of Right
A person shall be entitled to a patent unless:
(e) The invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2) and (4) of section 371(c) of this title before the invention thereof by applicant for patent.

36. 35 U.S.C. §102 - Novelty Section 102(a) defines novelty
From “first to invent” perspective
Note that certain foreign activities are not included
Section 102(b) establishes a 12-month “grace period”
Beneficial to inventors
IMPORTANT!—no grace period in Europe
Section 102(e) prevents patents from issuing to different entities for the same invention

37. 35 U.S.C. §103 – Non-obviousness
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

38. Graham v. Deere Determine the scope and contents of the prior art.
Ascertain the differences between the prior art and the claims at issue.
Resolve the level of ordinary skill in the pertinent art.
Consider objective evidence present in the application indicating obviousness or non-obviousness.

39. 35 USC §112 – Sufficient Disclosure
The specification shall contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it [the invention] pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

40. 35 USC §112 – Enablement
“The specification shall enable” one skilled in the art to “make and use” the invention
Part of the quid pro quo—the inventor must describe the invention in sufficient detail so that those familiar with the technology can build upon the inventor’s contribution

41. 35 U.S.C. § 112 - Enablement “Wands” factors Breadth of claims
Nature of the invention
State of the prior art
Level of skill in the art
Level of predictability
Amount of direction/guidance
Presence/absence of working examples
Quantity of experimentation

42. 35 USC §112 - Written Description
“The specification shall contain a written description of the invention . . .”
Considerable debate among judges and practitioners as to how this requirement should be applied
“literal” description?
entitlement to filing date?
Also part of the quid pro quo—inventor is only entitled to exclusive rights for what he/she invented

43. 35 U.S.C. § 112 – Best Mode
“The specification shall set forth the best mode contemplated by the inventor”
Also part of the quid pro quo—the inventor cannot keep the best way to make and use the invention for himself/herself
Draws a line between a patent and a trade secret (more on trade secrets later)

44. Where to Go for Help?

45. USPTO Web site

46. USPTO Web site

47. USPTO Web site

48. PAIR

49. Trade Secrets

50. Trade Secret Law: Purpose
Generally used to protect proprietary portions of technology
Formulae
Manufacturing processes
Business strategies
Business management information
Customer lists
Design concepts

51. Trade Secret Law: Background
In the U.S. –
Law varies from state to state
Every state recognizes some form of trade secret protection
Most state legislatures have passed a trade secret law, although some states rely solely on common law principles
Uniform Trade Secrets Act has helped create a more uniform body of law from state to state

52. Trade Secret Law Two fundamental concepts:
Trade secret must be something that is used in business and which gives the owner a competitive advantage
The owner of a trade secret must take reasonable measures to maintain its secrecy

53. Loss of Trade Secret
A single “unprotected” disclosure may result in loss of trade secret
Reverse engineering of a product to discover the trade secret

54. Patents vs. Trade Secret
Disclose invention sufficient so others can make and use the invention
Duration—20 years from filing
Protection against independent discovery
Trade secrets
Confidentiality
Potentially indefinite
Protection lost if independent discovery or reverse engineered

55. Conclusions
Patents provide the owner with the right to exclude others from exploiting the invention for a limited period of time
Patents are territorial
Patents are enforced by the owner
Know the patent law requirements where you want to obtain patent protection!
Patents and trade secrets are different forms of protection, with different requirements and different benefits—know the differences!

56. Patents and Trade Secrets
Conference on Intellectual Property in the Global Marketplace
Patents and Trade Secrets
THANK YOU