patent basics 2015

Arizona State Library,Archives and Public

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Presented by: Peter Grant, LibrarianState Library, Archives & Public Records, a division of the Secretary of State

PATENT BASICS 2015


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OUTLINE

What is a patent? Requirements for patentability 3 types of patents Provisional applications What it costs Steps Search resources Classification systems Sources for free help Tips for working with an attorney


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WHAT IS A PATENT?

The grant of a property right to the inventor, issued by the United States Patent and Trademark Office.

A patent obtained in the U.S. gives the patent holder the right, for a limited time, to exclude others from making, using, offering to sell, selling, or importing into the U.S. the subject matter that is within the scope of protection granted by the patent.

U.S. Constitution: Article 1, Section 8, Clause 8“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.”


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REQUIREMENTS FOR PATENTABILITYSo can I patent my idea?


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PATENTABILITY REQUIREMENTS

“…any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof…”

Process - a process, act, or method, and primarily includes industrial or technical processes

Composition of matter - chemical compositions and may include mixtures of ingredients as well as new chemical compounds


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NOVELTY

“the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention”

“the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”


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NON-OBVIOUSNESS

“…must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention.”

“For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.”


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NON-OBVIOUSNESS

“…Nikon does not explain persuasively why a person of ordinary skill in the art could not have....”

Case IPR2013-00362 (p26)


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WHAT CANNOT BE PATENTED

Laws of nature Physical phenomena Abstract ideas Mere ideas or suggestions

“A complete description of the actual machine or other subject matter for which a patent is sought is required”


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SOUNDEX

“Index where names entered are grouped phonetically, rather than alphabetically”

“Names with the same sound, but different spellings will be grouped together”

Stewart = S363Stuart = S363

1 = b, f, p, v 2 = c, g, j, k, q, s, x, z3 = d, t4 = l5 = m, n6 = r


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3 TYPES OF PATENTS


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3 TYPES OF PATENTS

Utility Design Plant


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UTILITY

…may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;

Term: 20 years from date of filing


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DESIGN

…may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture;


Patent Law Treaties Implementation Act (PLTIA) of 2012


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PLANT…may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant

Rooting Cuttings

Grafting and Budding

Bulbs

Apomictic Seeds

Division

Slips

Rhizomes

Corms

Nucellar Embryos

Tissue Culture

Runners


“The present invention has been found to retain its distinctive characteristics through successive asexual propagations via stolons.”

-US PP24,512


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PLANT

PLANT PATENT (USPTO)

U.S. Plant Protection Act of 1930

Asexually reproduced (excluding tuber)

20 years

PLANT VARIETY PROTECTION ACT (USDA)

Plant Variety Protection Act of 1970

Sexually reproduced (including tubers)

20 years


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PROVISIONAL

Not a type of patent, a type of application


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PROVISIONAL PATENT APPLICATION

Is not a “provisional patent” Is not examined Not required to have a formal patent claim Provides the means to establish an early effective

filing date in a later filed nonprovisional patent application

Allows the term "Patent Pending" to be applied in connection with the description of the invention

Utility only – no provisional design patents 12 months from the date the provisional

application is filed


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To be complete, a provisional application must also include the filing fee as set forth in 37 CFR 1.16(d) and a cover sheet identifying:

the application as a provisional application for patent; the name(s) of all inventors; inventor residence(s); title of the invention; name and registration number of attorney or agent and

docket number (if applicable); correspondence address; and any U.S. Government agency that has a property interest

in the application.

http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf


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“A filing date will be accorded to a provisional application only when it contains a written description of the invention, complying with all requirements of 35 U.S.C. §112(a).”

35 U.S.C. §112(a)”In General.— The specification shall contain a written description of the invention, and of 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 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 or joint inventor of carrying out the invention.

http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent




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WHAT A PATENT COSTS

Depends… Invention, USPTO, Attorneys, Agents


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INVENTION

Complexity Number of

claims Detailed

drawings Prior art


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USPTO FEE SCHEDULE


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USPTO FEES

Regular Small Micro

Filing: Provisional

$260 $130 $65 (optional)

Filing: Non-provisional utility

$280 $70 $70

Search Fee $600 $300 $150

Examination Fee

$720 $360 $180

Issue fee $960 $480 $240 ($640)

Maintenance Fee 3.5 years

$1600 $800 $400


$3600 $1800 $900


$7400 $3700 $1850 ($3790)


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MICRO ENTITY

Qualify as a USPTO-defined small entity. Not be named on more than four previously

filed applications. Not have a gross income more than three

times the median household income in the previous year from when the fee(s) is paid.*

Not be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor.*2013 Median household income:

$51,939(Reported by U.S. Census, September 2014)


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ATTORNEY FEES

Attorney Rate (Median 2012)

All $350 / hr.

Private firm partner $425 / hr.

Solo practitioner $288 / hr.

Original nonprovisional application on invention of minimal complexity

$6500

US design patent application

$1500

Novelty Search $2000

AIPLA Report of the Economic Survey 2013


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WHAT’S THE DIFFERENCE?

ATTORNEYS AGENTS

*USPTO November, 2013

31,638* 10,864*

Passed the Patent Bar(Technical qualification)

Passed the Patent Bar(Technical qualification)

Passed a state bar No state-level licensure

Juris Doctorate degree No Juris Doctorate

Patents, trademarks, contracts, court proceedings

Patent prosecution only


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STEPS

The “Patent Process”


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PATENT PROCESS

1. Search2. Type of patent /

application3. Filing strategy4. Drafting of application5. USPTO examines

application6. Patent is granted


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USPTO: APPFT, PATFT, PAIR, AND EAST

Free resources for your patent search


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APPFT - HTTP://PATFT.USPTO.GOV/

Published patent applications

All published patent applications since March 2001

All patent applications are automatically published after 18 months, unless applicant opts-out (5.9%)

Coverage


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APPFT - HTTP://PATFT.USPTO.GOV/

Quick search (choose field)

Advanced Search (build a query)

Search field explanations and search tips

Help

Features


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PATFT - HTTP://PATFT.USPTO.GOV/

Published United States Patents

Full text searching 1976-present

1790-1975 searchable by Issue Date, Patent Number, and Current Classification

Coverage


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PATFT - HTTP://PATFT.USPTO.GOV/

Quick search (choose field)

Advanced Search (build a query)

Search field explanations and search tips

Help

Features


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PUBLIC PAIR - HTTP://PORTAL.USPTO.GOV/PAIR/PUBLICPAIR

Issued or published patent applications

Foreign priority documents referred to by a U.S. application

2001-present Patent “wrap”

Application Examiner search Correspondence

Coverage


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PUBLIC PAIR - HTTP://PORTAL.USPTO.GOV/PAIR/PUBLICPAIR

Search by: Application

Number Patent Number PCT Number Publication

Number International

Design Registration Number

Features


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PUBWEST / PUBEAST

Full text searching from 1976 – present OCR text searching from mid 1920’s EPO and JPO abstracts More powerful search capability


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NON-USPTO: ESPACENET, FREEPATENTS ONLINE AND LENS

Free resources for your patent search


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ESPACENET - HTTP://HTTP://WORLDWIDE.ESPACENET.COM/

90+ million patent documents

Over 90 countries 38 EPO

member states

1836 - present

Coverage


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ESPACENET - HTTP://HTTP://WORLDWIDE.ESPACENET.COM/

Can search CPC scheme with keywords

Help

Features


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FREE PATENTS ONLINE

US Patents and applications

EPO Patents and applications

JPO Patent documents and patent abstracts

German Patents (beta)

Non-patent literature

Coverage


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FREE PATENTS ONLINE

Search tutorial: step-by-step

Glossary Alerts to

new patents

Features


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THE LENS

The European Patent Office’s DocDB bibliographic data from 1907 - present: 81+ Million documents from nearly 100 jurisdictions.

US Applications from 2001 – present

US Patents 1976 – present with full text and images.

USPTO Assignments (14+ Million).

WIPO PCT Applications from 1978 – present with full text and images.

Australian Patent Full Text from IP Australia

Coverage


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THE LENS

Represents data graphically

User-friendly structured search form

Hyperlinks to non-patent literature (5 million)

Knowledge database

Features

Patent Knowledge QuizHow To Read a PatentBoolean Logic Tutorial


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SEARCHPatent Classification


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KEYWORDS

Too broad Too narrow British spellings or

terms Typos or OCR errors Multiple meanings Term of art may not

be used Term of art may not

yet exist

Photo Credit: Aqazi1411

Photo Credit: Albert Jankowski


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MULTIPLE TERMS

Automobile Vehicle body Vehicle exterior Vehicle Passenger car Automobile vehicle Portion of a vehicle exterior Motor car Motor vehicle body Motorcar Sports car Motor-vehicle Exterior surface configuration of a vehicle Surface configuration of a vehicle body Surface configuration of a vehicle, toy and miscellaneous consumer products

incorporating the design

Design patent titles


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CLASSIFICATION

Allows you to find all of the patents in a class together

Three major systems CPC USPC Locarno


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CPC

Cooperative Patent Classification System

All U.S. patents issued from January 2015 CPC only

Used for U.S. Patents from January 2013

70-80% of world’s patents http://www.cooperativepatentclassifi

cation.org/

http://www.cooperativepatentclassification.org/

http://www.cooperativepatentclassification.org/


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CPC

Section: A to H + Y Class: 2 Digit

number Subclass: Single letter

Group: 1 to 3 Digit Number

Main Group: 2 digit number

Section: A Class: 45

Subclass: B Group: 19

Main Group: 06

A45B 19/06


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A45B 19/06

Section: A through H

A: Human NecessitiesB: Operations and TransportC: Chemistry and MetallurgyD: TextilesE: Fixed ConstructionsF: Mechanical EngineeringG: PhysicsH: ElectricityY: Emerging Cross-Sectional Technologies

Umbrellas with telescopic ribs


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A45B 19/06

Class: 2 digit number

A44 Haberdashery; Jewelery

A45 Hand or Travelling Articles

A46 Brushware



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A45B 19/06

Sub Class: 1 Letter

A45B Walking Sticks; Umbrellas; Ladies’ or Like Fans

A45C Purses; Luggage; Hand Carried Bags

A45D Hairdressing or Shaving Equipment; Manicuring or other Cosmetic Treatment



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A45B 19/06

Group: 1 to 3 digit number

A45B 17/00 Tiltable Umbrellas

A45B 19/00 Special Folding or Telescoping of Umbrellas

A45B 21/00 Umbrellas Convertible into Walking Sticks



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A45B 19/06

Main Group or Sub Group: 2 digit number

A45B 19/02 Inflatable umbrellas; Umbrellas without ribs

A45B 19/04 With telescopic sticks

A45B 29/06 With telescopic ribs



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A45B 19/06

US Pat. No. 7,913,709


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CLASSIFICATIONUSPC


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USPC

United States Patent Classification System

All U.S. patents issued from up to January 2013

Concurrent with CPC until January 2015 Used for U.S. Design Patents Static (No new classes being added) http://www.uspto.gov/patents-applicatio

n-process/patent-search/classification-standards-and-development

http://www.uspto.gov/patents-application-process/patent-search/classification-standards-and-development




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CLASSIFICATION

Locarno


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LOCARNO

Also known as the International Classification of Industrial Designs

Began 1968, now on the 10th edition 32 classes, 219 subclasses Alphabetical list of 7157 goods Used by 53 states (June 2014) Hague Express database http://www.wipo.int/classifications/locar

no/en/

http://www.wipo.int/classifications/locarno/en/

http://www.wipo.int/classifications/locarno/en/


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RESOURCES FOR ASSISTANCE


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PATENT PRO BONO PROGRAM

Covers 49 states Administered through regional offices Attorney or agent will draft and

prosecute your patent at no charge (USPTO fees still apply)

http://www.uspto.gov/patents-getting-started/using-legal-services/pro-bono/inventors

http://www.calawyersforthearts.org/CIAP








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PATENT LAW CLINIC

Lisa Foundation Patent Law Clinic Law students (under faculty

supervision) https://

www.law.asu.edu/clinics/TheClinicalProgram/LisaFoundationPatentLawClinic.aspx

https://www.law.asu.edu/clinics/TheClinicalProgram/LisaFoundationPatentLawClinic.aspx






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PRO SE ASSISTANCE PROGRAM

Does not provide legal advice or draft your patent

Dedicated personnel for assisting pro se applicants

In-person assistance for the general public at USPTO Headquarters

Targeted support to connect applicants with relevant resources and information

http://www.uspto.gov/patents-getting-started/using-legal-services/pro-se-assistance-program






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TIPS FOR WORKING WITH AN ATTORNEY


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WORKING WITH AN ATTORNEY

How many patents have you prosecuted?

What are the estimated costs?

How will you keep me informed?

Do you have references? http://www.uspto.gov/ip/boa

rds/oed/practitioner/agents/index.jsp

http://www.uspto.gov/ip/boards/oed/practitioner/agents/index.jsp




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WORKING WITH AN ATTORNEY

Can search issued patents by attorney, agent or firm Link on the

advanced search page of PatFT for how to structure

May be under individual’s or firm’s name (or both)


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QUESTIONS?

patent basics 2015

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