1. Patent Protection Around the World & at the USPTO
Jennie Ness
Attorney-Advisor
Office of Policy and External Affairs
United States Patent and Trademark Office

2. USPTO Mission
Fostering innovation, competitiveness and economic growth, domestically and abroad to deliver high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy, and delivering intellectual property information and education worldwide, with a highly skilled, diverse workforce.
--USPTO established in While many of the original 13 colonies had some form of patent law, Thomas Jefferson, among others, influenced the development of the first national patent system in 1790.
--The US Constitution, along with legislative acts in the late 18th and 19th centuries, helped to promote the necessary environment for scientists and inventors to protect and market their inventions.
--But the modern concept of the patent was established in England, back in the 1400s when Henry VI awarded a patent to John of Utyman for stained glass manufacturing. This patent established the notion of a state-granted limited monopoly.
--In 15th century England, there was nothing novel about the art of stained glass making, however, the monarchy recognized the value of protecting certain arts and industries.
--The idea of the patent system, which began in 15th century England, came with the next immigrants to the early American colonies.
--While the first patent act dates to 1790, Congress passed several patent acts during the first half of the century following ratification of the Constitution.
--These acts include the Patent Act of 1790, the Patent Act of 1793, the Patent Act of 1836.
--The USPTO likes to think of itself much as a corporation does in one aspect: we view ourselves as an agency that essentially provides a product line, much as a business or corporation does. Our two product lines are patents/trademarks and all the affiliated products and services associated with the business line.
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3. A Global Patent Regime? (1) Paris Convention Treaty
-Requires that treatment of foreign patent applicants is identical to the treatment of nationals who file for patents in a country (national treatment)
-Permits foreign nationals to benefit from an priority document filed no more than 12 months before in their home country
Pakistan has been a contracting member of the Paris Convention Treaty since 2004
* Graphic obtained from accessed on September 5, 2013.
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4. Pakistan is not a member of the PCT
A Global Patent Regime?
(2) Patent Cooperation Treaty (PCT):
-Has similarities with the Paris Convention Treaty (e.g. national treatment)
-PCT applicants get the benefit of a search and written opinion of their claimed invention before they have to decide to file in one or more designated countries
NOTE: There is NO international patent
Pakistan is not a member of the PCT
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Graphic obtained from accessed on September 6, 2013 4

5. A Global Patent Regime? (3) Patent Cooperation Treaty (PCT) Continued:
-Permits filing of an international patent application (“PCT application”) based on a patent application document filed in an applicant’s home country that is filed no more than 12 months before the PCT application
-The PCT application is published 18 months after its filing
-The “international phase” (PCT phase) ends and a “national phase” begins 30 months from filing of the PCT application.
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6. A Global Patent Regime?
(3) World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS):
-Adoption of TRIPS is required to enter the WTO
-Came into effect January 1, 1995
-Patent rights must be available to inventions in all technological areas with some permitted exceptions (Article 27.1)
Exceptions to the technological areas for which patent rights may be available are (1) as necessary to protect (a) ordre public or morality, including (b) human, animal, or plant life or health, or (c) to avoid serious prejudice to the environment; (2)  diagnostic, therapeutic and surgical methods for the treatment of humans or animals; and (3) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof
Pakistan is a WTO member
* Graphic obtained from accessed on September 5, 2013.
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7. A Global Patent Regime? (3) TRIPS Continued:
-Patent rights are exclusive (Art. 28)
-Scope of Patentability: "any invention" (some exceptions for plants and animals, medical treatment methods), public order and morality.
patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. (5) Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.
Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.
3. Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement.
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8. A Global Patent Regime? (4) TRIPS Continued:
-Patent rights for products include the right to exclude others from making, using, offering for sale, selling, and importing for these purposes (Art. 28)
-Process patent rights must give rights not only over use of the process but also over products obtained directly by the process (Art. 28)
-Patent term 20 years from the date of filing (Art. 33)

9. Basis for Protection of Patents and Copyright in the U.S.
US Constitution, Article 1, Section 8, Clause 8
“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 discoveries.”
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10. Basis for Patent Law in the United States
The Statute: 35 U.S.C (Patent Codes)
Laws enacted by the US Congress
The Rules: 37 C.F.R. (Patent Regulations)
Rules governing the operation of the USPTO. This rules may be changed by the USPTO following the proper procedure
Case Law: Ex parte and In re
The United States has a common law system. Court cases shape the interpretation of laws.
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11. Patent Resources Manual of Patent Examining Procedure (MPEP)
The MPEP is a detailed guide which explains how a patent is examined in the United States.
Laws (Title 35, United States Code)
Rules (Title 37, Code of Federal Regulations)
Important Case Law
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12. What is a U.S. Patent? It is “Property”: right to exclude others
It is “Territorial”: provides protection only within the United States. No World Wide Patent!
The patentee must enforce the patent once it is granted.
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13. Types of U.S. Patents
Utility
Design
Plant
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14. Plant Patent
Provides a right to exclude others from asexually reproducing, selling or using the claimed plant
Duration: 20 years from the filing date
New, distinctive asexually reproducing plant (other than a tuber propagated plant or a plant found in an uncultivated state)
Sexually reproducing plants are protected by Plant Variety Protection Certificates
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15. Plant Patent PP20,900
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16. Design Patent
Provides a right to exclude others from making, using, offering for sale, importing or selling the claimed invention
Duration: 14 years from the grant date
For any new, original, and ornamental design for an article of manufacture
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18. Design Patents
The figure on the left is of a cricket bat from U.S. design patent No. D issued on June 3, 2003 to Thomas G. Larsen. 18 18

19. Utility Patent
Provides a right to exclude others from making, using, selling, offering for sale or importing the claimed invention
Duration: 20 years from the filing date.
For any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof.
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20. Utility Patent (8,287,921)
Leishmaniasis is a disease caused by protozoan parasites of the genus Leishmaniasis and is transmitted by a bite of certain species of sand fly.
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21. Who may file a Patent Application?
In the United States, an application for a patent is filed by the inventor(s); they are “the applicant(s).”
The basis for this is found in:
Article 1, Section 8 of the U.S. Constitution:
To Promote the Progress of Science…by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries
35 U.S.C. 101
Whoever invents… may obtain a patent.
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22. Who may file a Patent Application?
America Invents Act (AIA)
“A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.”
“A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”
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23. Non-Provisional Utility Patent Application
Requirements:
Specification (description)
Drawings (when necessary)
Nucleotide and/or amino acid sequence listing (when necessary)
At least one claim
Oath or declaration
Prescribed filing, search and examination fee
50% discount for small entities
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24. Patent Examination Process

25. (Office of Patent Publication) Examination Processing
The Patent Process
Pre-Examination
Processing
(Office of Initial
Patent Examination)
Post-Examination
Processing
(Office of Patent Publication)
Examination Processing
Application Assigned to Examiner
Examiners First Action
Patent Publication Division
Receipt & review of allowed case & papers
Serial No. Assigned
Fees Recorded
Quality Review
Applicant Response
Initial Data Capture
Initial Electronic Capture for Printing and Issue
Tentative Classification, Screened
for Sensitive Contents
Second Examiner Action
Final Rejection or Allowance
File Maintenance Facility
Match Post-Allowance Papers and Fees
PICS
Electronic Scanning
Applicant Response
Licensing & Review
Security Sensitive Cases
Separately Processed
Final Data Capture
Final Preparation and Electronic Capture for Printing and Issue
Subsequent Examiner Action
Administrative Examination, Filing Receipt Mailed
Applicant Response
Examiner
Patent Printed and Issued
Courts
Board of Patent Appeals
and Interferences
LEGEND
Normal Processing Sequence
Alternate Processing Sequence
Abandonments
Examiner
18 Month Publication
of Patent Application
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26. Patent Examination Process
Burden is on the examiner: An applicant is entitled to a patent unless…
… The laws of the U.S. prevent a patent from being issued. The patent laws are set forth in title 35 of the United States Code.
This is abbreviated 35 U.S.C. _
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27. Major Statutory Areas of Patentability Consideration
35 U.S.C. § 101: Utility and subject matter eligibility
35 U.S.C. § 112, first paragraph: Enablement, written description and best mode
35 U.S.C. § 112, second paragraph: Definiteness
35 U.S.C. § 102: Anticipation
35 U.S.C. § 103: Obviousness
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28. 35 USC § 101
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
But there are judicially created exceptions
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29. 35 USC § 112, First Paragraph: Written Description, Enablement and Best Mode Requirements
The specification shall contain a written description of the invention, and 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 of carrying out his invention. 1 2 3
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30. 35 USC § 112, Second Paragraph: Definiteness Requirement
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
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31. Post AIA § 102 Section 102(a)(1):
(a) NOVELTY; PRIOR ART - A person shall be entitled to a patent unless-
(1) 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;
Section 102(b)(1):
“(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. --- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if ---
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtain the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”
FTF: All prior art is keyed to events anywhere in the world, as opposed to the current law where some activities are limited to acts in the United States.
GP: Under the America Invents Act only a “disclosure” of the inventor (or obtained from the inventor) in the one year grace period is exempt from prior art status.
Hilmer : Under the America Invents Act, a prior-filed application or patent is prior art as of its earliest priority date, including any Paris Convention foreign priority date.
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32. Pre-Grant Publication
18 Month Publication
All Applications Filed on or after November 29, 2000 unless
No Foreign Filing
Petition to Prevent Publication
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33. Post Grant: Maintenance fees due at: 3 ½ years $1150 →→→ $1600
50% discount for small entities
(Changes as of March due to AIA)
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34. USPTO Stats and Web Site34

35. Electronic filing New EFS-Web system launched March 2006
allows PDF-based submissions
replaced XML-based system
AIA provides a $400 surcharge for paper filed applications
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36. USPTO Statistics FY 2012 36

37. Patent Applications Filed FY 201237

38. Patents Issued FY 2012 38

39. FY 2012 Patent Pendency
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40. USPTO Website - www.uspto.gov40

41. Searching Patents and Published Applications
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42. Patents & Trademarks: Residents of Pakistan
Patent Applications Filed at the USPTO by Residents of Pakistan
2008
2009
2010
2011
2012 21 7 20 29 NA
Patents Granted by the USPTO to Residents of Pakistan
NA = data not available
2008
2009
2010
2011
2012 6 5 2 13
Trademark Applications Filed at the USPTO by Residents of Pakistan
2008
2009
2010
2011
2012 27 19 17 12
Trademarks Registered by the USPTO to Residents of Pakistan
2008
2009
2010
2011
2012 19 11 15 20
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43. What is a Trade Secret? Three fundamental concepts:
Information is secret; not known to the public or to those involved in the industry
Has commercial value; used in business and gives the owner a competitive advantage
The owner of a trade secret must take reasonable measures to maintain its secrecy
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44. Trade Secret vs. Patent Trade Secret Patent Indefinite
Not registered or disclosed
Can be separately discovered
Remedies only if the secret is illegally appropriated
Patent
Limited lifetime
Patents are granted by a national intellectual property office
Provides protection in exchange for disclosure and provides the rights to exclude others
Remedies for infringement
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45. Trade Secret Appropriation
Competitors may attempt to learn each other's trade secrets through:
lawful methods of reverse engineering
or through illegal industrial espionage
Most legal regimes will prohibit industrial espionage methods (theft, breaking and entering, surveillance)
Trade secret regimes provide a separate legal tool to prohibit misappropriation—not infringement.
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46. THANK YOU