1. 1 The Patent Process at the USPTO Ram R. Shukla and Angela Ortiz Resource Supervisory Patent Examiners Elijah J. McCoy- Detroit Satellite Office United States Patent and Trademark Office 300 River Place, Detroit, MI 48207 (313) 446-4800 ram.shukla@uspto.gov angela.ortiz@uspto.gov www.uspto.gov

2. Forms Of Intellectual Property Protection Patents – granted by U.S. Patent & Trademark Office Trademarks - registered with U.S. Patent & Trademark Office Copyrights - registered by Library of Congress Trade Secrets 2

3. 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. LettersPatent What is a Patent? 3

4. What is a Trademark? Trademarks - symbols or slogans that represent goods or services - can last indefinitely as long as they are not allowed to become generic Term – 10-year term with 10-year renewal terms 4

5. What is a Copyright? 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 5

6. What is a Trade Secret? Trade Secrets - based on contracts - may offer protection indefinitely “FORMULA” “RECIPE” 6

7. 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 Constitutional Authority −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 disclosures…” U.S. Const. art 1, sect 8 cl 8 7

8. Facts Fiscal Year 2011 - 536,013 utility, design, & plant applications received. Fiscal Year 2012 - 564,354 utility, design, & plant applications received(5.3% increase) Fiscal Year 2013 as of March - 269,337 utility, design patents, & plant patents received 8

9. What Is The Effective Life Of A Patent ? Term - 20 years from filing (applications filed after June 8, 1995) 9

10. Design Patents Design patents protect the way an object appears 10

11. What Can Be Patented ? Machine Article of manufacture Process Composition of matter Improvements in any of the above 11

12. 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 CLEAR (incomprehensible) 12

13. Who May Apply For A U.S. Patent? Anyone...from anywhere may apply, with only one exception* – Application must normally be in the inventor’s name. 13

14. Who May Not Apply ? Officers and employees of the U.S. Patent & Trademark Office 14

15. United States Patent and Trademark Office Alexandria, VA 15

16. 16 Patents Nationwide Workforce Satellite Office Model –Regional examiners assigned to an Art Unit at Headquarters (HQ) –Regional examiners remain at Satellite Office –HQ SPE will review and sign Office Actions –HQ SPE will be rating official for regional examiners –Training done at regional facility using current collaboration systems –Incoming patent applications and follow-on papers will still be filed to HQ

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18. 18 Elijah J. McCoy Satellite Office 300 River Place, Detroit Patents Nationwide Workforce: Regional Office

19. Elijah J. McCoy 19

20. Detroit Office Features for Business Public Search –Public Search terminal(s) connected to USPTO’s internal search tools offer access to the world’s leading databases of prior art to search patentability Communication with USPTO Examiners and Management –Conference rooms to support video conference and live interviews between inventors, practitioners and patent examiners –USPTO personnel available live and by video- conference to answer questions Small Business Assistance –Hotline access to USPTO inventor assistance center 20

21. Patent Examination Read and understand specification Determine patentability Determine whether spec is adequate Write/mail a legal office action on the patentability Determine scope of the claim Respond to applicants response Search existing technology for claimed invention Issue patent or abandonment 21

22. Examination Process Allowance First Examination First Examination Notice of Allowance Second Examinatio n Amendment Second Examination Appeal Process Appeal Brief Appeal Process Rejection 22

23. Patent “Claims” The “heart” of the patent grant. Specific definition of the invention. Metes and bounds of the patent coverage 23

24. Patent “Claims” – US 8,000,000 24

25. Claims – Example (cont) US PATENT 8,000,000 A Visual Prosthesis apparatus comprising: A camera for capturing a video image; A video processing unit associated with the camera, the video processing unit configured to convert the video image to stimulation patterns, the video processing unit is configured to stop transmitting the stimulation patterns to the retinal stimulation system when the retinal stimulation system does not transmit valid back telemetry data; and A retinal stimulation system configured to stop stimulating neural tissue in a subject’s eye, and return an error signal to the video processing unit, based on the stimulation patterns when an error is detected in a forward telemetry received from the video processing unit. 25

26. Examiner Tools PALM – Patent Application Locating and Monitoring EAST – Examiner Automated Search Tool WEST – Web-based Examiner Search Tool OACS – Office Action Correspondence Subsystem (eRed folder) IFW – Image File Wrapper eDAN – electronic Desktop Application Navigator MADRAS 26

27. USPTO Initiatives for Expedited Examination of Applications Accelerated Examination http://www.uspto.gov/patents/process/file/accelerated/index.jsp http://www.uspto.gov/patents/process/file/accelerated/index.jsp Track One http://www.uspto.gov/patents/init_events/Track_One.jsp http://www.uspto.gov/patents/init_events/Track_One.jsp Patent Prosecution Highway http://www.uspto.gov/patents/init_events/pph/index.jsp http://www.uspto.gov/patents/init_events/pph/index.jsp 27

28. USPTO Initiatives for Compact Prosecution and Pendency Reduction Quick Path Information Disclosure Statement (QPIDS) http://www.uspto.gov/patents/init_events/qpids.jsp http://www.uspto.gov/patents/init_events/qpids.jsp After Final Consideration Pilot (AFCP) http://www.uspto.gov/patents/init_events/afcp.jsp http://www.uspto.gov/patents/init_events/afcp.jsp 28

29. 29 USPTO Resources for Inventors Patent Assistance Center Trademark Assistance Center Inventors Eye eNewsletter On-line chats, Bi-monthly Experts answer questions Transcripts on-line

30. USPTO Resources for Inventors Pro Bono Pilot Program –Pilot in Minnesota Both private and corporate attorney involvement Bundled and unbundled services –501 (c)(3) administrator LegalCORPS of Minneapolis Matches clients with volunteer attorneys –Inventors investment of time and money –USPTO Certification training, patent search, financial limit plus $1000 admin cost 30

31. USPTO Resources for Inventors Ombudsman Program –enhance the USPTO’s ability to assist applicants with issues that arise during patent application prosecution –when there is a breakdown in the normal prosecution process, the Ombudsman Program can assist in getting the process back on track –USPTO is now creating a Small Business specific ombudsman program Email: OmbudsmanProgram@uspto.govOmbudsmanProgram@uspto.gov 31

32. Inventor Resources USPTO http://www.uspto.gov/ 32

33. First-time Filers Start Here! Search Patents File an Application or Documents Check Status of an Application 33 http://www.uspto.gov/patents/index.jsp

34. IP Awareness Assessment Tool 34 Check your Awareness of the various aspects of IP 10 Categories of IP Covered: Utility Patents Trademarks Copyrights Trade Secrets Design Patent IP Strategies & Best Practices Using Technology of Others Licensing Technology to Others International IP Rights and IP Asset Tracking http://www.uspto.gov/inventors/assessment/

35. AIA Enactment Timeline 35 Reexamination transition for threshold Tax strategies are deemed within prior art Best mode Human organism prohibition OED statute of limitations Day of Enactment Sept 16, 2011 Prioritized Examination 15% transition Surcharge 10 Days Sept 26, 2011 Reserve Fund Electronic filing incentive Inventor’s oath/declaration Preissuance submission Supplemental examination Citation of prior art in a patent file Inter partes review Post-grant review Transitional post-grant review program for covered business method patents First inventor to file Derivation proceedings Repeal of statutory invention registration New patent fees Micro entity discount Oct 1, 2011 60 Days Nov 15, 2011 12 Months Sept 16, 2012 18 Months Mar 2013 Provisions are enacted

36. AIA Impact on pre-AIA 35 U.S.C. 102 36 Abandonment of invention Premature foreign patenting Prior invention by another Derivation

37. AIA Statutory Framework 37

38. “Otherwise Available to the Public” Introduced by the AIA; no corresponding language in pre-AIA 35 U.S.C. 102 Catch-all to account for other means of making an invention publicly available 38

39. AIA Resources Statutory Framework Chart: http://www.uspto.gov/aia_implementation/FITF_card.pdf http://www.uspto.gov/aia_implementation/FITF_card.pdf FAQs: http://www.uspto.gov/aia_implementation/faqs_first_inventor.jsphttp://www.uspto.gov/aia_implementation/faqs_first_inventor.jsp Examiner Introductory Video: http://helix-1.uspto.gov/asxgen/AIA Close Cpt.wmvhttp://helix-1.uspto.gov/asxgen/AIA Close Cpt.wmv Examiner Overview Training Slides: (available on AIA micro-site soon) Examiner Follow-up Video: (available on AIA micro-site soon) 39

40. AIA Help 1-855-HELP-AIA (1-855-435-7242) HELPAIA@uspto.gov www.uspto.gov/AmericaInventsAc t 40

41. Thank You 41