The Patent ProcessThe Patent Process

Protection of Ideas or InventionsProtection of Ideas or Inventions

An idea/know howGenerally speaking, we would like

to protect inventions that have significant commercial value

This protection is often required to justify the cost of commercial development

Protection of Ideas or InventionsProtection of Ideas or Inventions

Private Sector–Patent–Copyright–Trade secret

Government–Patent

Patent VS Trade SecretPatent VS Trade Secret

Patent–Formal enforceable protection–Process forces disclosure–Disclosure facilitates improvement

Trade Secret–Not enforceable–No disclosure (must be maintained as

a secret)

Title 101. Inventions PatentableTitle 101. Inventions Patentable

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtaina patent there for, subject to the conditions and requirements of this title.”

PatentsPatents

Utility PatentPlant Utility Patent (sexual

reproduction)Plant Patent (vegetative reproduction)Plant Variety Protection Certificates

(sexual reproduction)

Utility PatentsUtility Patents

ARS seeks a patent only if there is reason to believe that such a patent will enhance the likelihood that the

technology will be transferred.

PatentingPatenting

NovelUsefulNon-obvious

To obtain a patent for an invention, that invention must be:

Non-obviousNon-obvious

“…to a person having ordinaryskill in the art to which said subjectmatter pertains.”

Section 103

Basic ProcessBasic Process

Invention Disclosure Patent Review Committee (3-4M) Write Patent Application (1yr) File Patent Application with Patent and

Trademark Office (PTO) Examination by PTO Patent Allowed (½ - 1yr) Patent Issued 1- 2yrs)

So you think you have an So you think you have an invention!invention!

Talk to you Patent Advisor or Technology Transfer Coordinator

Keep accurate records in your laboratory notebook

Do not disclose to outside party

The Patent Advisor Can:The Patent Advisor Can:

Help in determining if your invention is patentable

Advise on information that may be needed for the Patent Application

Resolve questions about disclosureAnswer questions regarding

inventorship

Basic StepsBasic Steps

Invention DisclosurePatent ApplicationPatent

Invention DisclosureInvention Disclosure

Initiated by Scientist in RMISAbstract format– You can attach additional information

Approved by RL/LD/CD/ADFirst proof of inventorshipReviewed by Patent AdvisorReferred to Patent Review CommitteeIs confidential

The Invention Disclosure The Invention Disclosure ProvidesProvides

Information on the technologyCommercial potentialRelated publications that may affect

patentabilityAdvantages over the state of the artPossible inventorsPossible CRADA involvement

Patent Review CommitteePatent Review CommitteeChairpersonAn in-depth reviewerA Patent AdvisorSeveral membersRecommendations:–Approve–Defer–Suspend

Patent ApplicationPatent Application

Usually prepared by Patent Advisor, with assistance of the inventors

Is a very complex documentWould like to have complete within 1

year of approval of the Invention Disclosure

Filed with the Patent and Trademarks Office (PTO)

PTO ProcessPTO Process

Provide Serial Number 2-6 weeks after filing

Assigned to an ExaminerExaminers actions–Restriction Requirements –Non-Final Office Action–Final Office Action

Final Office ActionFinal Office Action

Advisory ActionReopen ProsecutionAllowGo to Appeal

ClaimsClaims

The Claims list what is protectedLanguage of the Claims

–Comprising

–Consisting essentially of

–Consisting of Claims are dynamic through the

process

Inventions, Patents, and Inventions, Patents, and Licenses in FY99Licenses in FY99

162 Invention Disclosures filed84 Patents Applications filed74 Patents issued29 Licenses issuedIncome from licenses =

$2,377,000

Technology Transfer CoordinatorTechnology Transfer Coordinator

United States Department of AgricultureAgricultural Research ServiceBeltsville Area Director’s OfficeBuilding 003, Rm. 208, BARC-WestBeltsville, MD 20705Voice: 301-504-6421FAX: 301-504-6001