1. 1 John Calvert Supervisory Patent Examiner John.calvert@uspto.gov

2. 2 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. Letters Patent General Information

3. 3 WHAT CAN BE PATENTED ?  MACHINE  ARTICLE OF MANUFACTURE  PROCESS  COMPOSITION OF MATTER  IMPROVEMENTS IN ANY OF THE ABOVE General Information

4. 4 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 adequately described or enabled  Are mere abstract ideas,laws of nature or natural phenomena  Are not clearly and concisely claimed General Information

5. 5 WHO MAY APPLY FOR A U.S. PATENT ?  Application must normally be in the inventor’s name.  Anyone...from anywhere may apply, with only one exception* General Information

6. 6 WHO MAY NOT APPLY ?  Officers and employees of the U.S. Patent & Trademark Office General Information

7. 7 Types of Applications  Provisional Application  Non-Provisional Application

8. 8 Provisional Applications  Provisional Application  Is NOT Examined  Does NOT mature to a PATENT  Pendency lasts only 12 MONTHS  Establishes earliest Date of Priority for your invention  Simple filing requirements

9. 9 Provisional Applications  Provisional Application - Cont’  Filing Requirements:  Signed Cover Letter - available online  Detailed ENABLING description of Invention including any necessary Drawings. Must be in compliance with 35 USC 112 1 st Paragraph  fee  Biggest Benefit:  Adds up to ONE Year to Patent Term  Gives time to perfect the filing of the Non-Provisional Application  Interim Patent Pending Rights

10. 10 Non-Provisional Applications  More complex filing requirements  Is examined by a Patent Examiner  May mature to a Patent  Last 20 years from date of filing  Can claim benefit to filing date of Provisional Application (if Provisional Application was previously filed)

11. 11 Non-Provisional Application  Application Requirements  Written Description (Specification)  Claim(s) - at least one  Drawing(s) (usually required)  Executed Oath and Declaration  Fee  Filing Date  Date Received in the USPTO  Express Mail Certificate  Certificate of Mailing will NOT establish filing Date

12. 12 Other Parts - Recommended  Transmittal Sheets  Application Transmittal  Fee Transmittal  Express Mail label  Prior Art - Information Disclosure Statement  Nucleotide or Amino Acid sequences - when necessary  Application Data Sheet - Print EFS

13. 13 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 Parts, Form and Content

14. 14 Application Preparation  Accurate Title Our Example: IMPROVED PAPER CLIP TITLE: PAPER CLIP WITH LATERAL SERATED INDENTATIONS FOR GRIPPING  Proper headings in written disclosure presented as double spaced document  Use generic terminology - avoid trade names

15. 15 Generic Terminology Liquid Paper correction fluid Mylar polyester film Velcro hook and loop fastener Lycraexpanded polyurethane Xerox electrophotographic copying machine

16. 16 Example of Disclosure Format TITLE PAPER CLIP WITH LATERAL SERATED INDENTATIONS FOR GRIPPING BACKGROUND OF THE INVENTION This invention relates to paper clips… SUMMARY OF THE INVENTION The invention is directed to a unique paper clip… BRIEF DESCRIPTION OF THE DRAWINGS FIG 1 is a perspective view of… DETAILED DESCRIPTION OF THE INVENTION Referring to the figures of drawings…

17. 17 Abstract of the Disclosure  Limit to concise explanation of invention do not use legal language (said, comprise, means, etc.) provide structure not merits of invention write as a quick look at the invention to draw interest should be limited to a single paragraph  Limit the Abstract to between 50 and 150 words

18. 18 Inventor Declaration

19. 19 Transmittal Letter

20. 20 Certificate of Mailing [Use for Post-Filing Correspondence] I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Assistant Commissioner for Patents Washington, D.C. 20231 on _________. (Date) Typed or printed name of person signing this certificate: ___________________________ Signature: ___________________________

21. 21 Certificate of Transmission [Cannot be used for application filing] I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office, Fax No.(703) ____ - _______ on _________________ (Date). Typed or printed name of person signing this certificate: ___________________________ Signature: ___________________________

22. 22 Information Disclosure Statement [IDS]

23. 23 Assignment of Application

24. 24 Filing your Application  Use express mail [37 CFR 1.10]  Include a self addressed post card identifying all papers mailed to PTO (i.e., 14 pages of Specification, 5 claims, 3 drawings, etc.)  Identify the first page of all papers with applicant’s name and title of invention  Make copies of all correspondence to and from the PTO  Include all necessary Fees

25. 25 Forms of intellectual property protection  COPYRIGHTS - Library of Congress  TRADEMARKS - U.S. Patent & Trademark Office  PATENTS - U.S. Patent & Trademark Office  TRADE SECRETS General Information

26. 26 Forms of intellectual property protection  TRADEMARK - U.S. Patent & 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 General Information  Trade Secrets  Not protected by U.S. laws  No recourse for infringement  Works only if product cannot be reverse engineered

27. 27 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 - Author’s life + 70 years General Information

28. 28 Resources  http://www.uspto.gov  1-800-PTO-9199