United States Utility Patents:Introductions and Orientation

Kristine H. JohnsonMacMillan, Sobanski & Todd, LLC

johnson@mstfirm.com

Welcome!

• Please always feel free to ask me

– To slow down

– To repeat information

– To explain more about a subject

– To be louder (or quieter!)

– To take a break

– To address your interests

Topical Orientation

• This presentation covers

– United States patents - practical & legal– Utility patent law– Obtaining utility patents – Some enforcement of utility patents– No licensing– Brief comments on utility patent interface with

other US and worldwide intellectual property

Geographical Orientation

USPTO

Cornell

Kristi

Geographical Orientation

United States Patent & Trademark Office in Alexandria, Virginia

Historical Orientation – US Patents

• 1641 Mass. court grants patent for salt making

• 1776 US Constitution enacted

• 1790 first US Patent Act enacted

• 1836 Patent Office formed

• 1887 US joins Paris Convention

• 1968 US signs Patent Cooperation Treaty

• 1995 US signs Uruguay Round Agreements Act

The US is a baby compared to Korea!

Patent-Related “Checks and Balances”

• Executive

• Legislative

• Judicial

Executive Branch 2010

• President (Barack Obama)

– Secretary of Commerce (Gary Locke)

Director of Patents (David Kappos)

◦ Commiss’r of Patents (Robert Stoll)

»Deputy Comm’r (Magaret Focarino)

-- Examiners

(hierarchy)David Kappos

Legislative Branch

• Founders; Constitution (Article I, §8,

clause 8 )

– House and Senate; Statutes (35 USC)

Patent Office, with Public Comment;

Regulations (37 CFR, chapter 1)

◦ Patent Office Only (Manual of

Patent Examining Procedure

“MPEP”)

Judicial Branch

• Supreme Court (D.C.)

– Court of Appeals for the Federal Circuit (D.C.)

U.S. Federal District Courts (11 districts)

US Federal Judicial Districts

Patent Service Industry

• Searchers

• Artists (Draftsmen)

• Sequence Listing Experts

• Preparers (Patent Agents & Attorneys)

• Maintenance Fee Docketers/Payers

• Enforcers (Litigation Attorneys)

Patents

• A patent is issued by the U.S. Patent and Trademark Office

• A patent provides the patent owner with the exclusive right to exclude others from making, using, offering for sale, selling or importing an invention

• A patent has a term of up to 20 years

Patent Types

• Utility: a process, machine, product or composition of matter (e.g., combination toaster and microwave)

• Design: an ornamental design for a product (e.g., Apple iPod)

• Plant: new varieties of plants (e.g., Hawaiian Volcano Plant)

Questions?

Please Ask!

Thank you to Ms. Jenna Cogswell at MST who helped prepare these slides

Contact us at johnson@mstfirm.com or 419.255.5900 for permission to use these slides, or to ask questions. We are happy to let others use these slides, but we would like to know who they helped!