1. Mark R. Powell U. S. Patent & Trademark Office
The Patent Process
Mark R. Powell
U. S. Patent & Trademark Office

2. Forms of Intellectual Property
Patents
Trademarks
Copyrights
Trade Secrets

3. Patents Historical Context Definition Federal Statutes 35 U.S.C.
Court of Appeals for the Federal Circuit

4. Patenting vs. Trade Secrets
The bargain: protection of the invention as a reward for disclosing it to others
How this advances technology in general

5. What Patents Can Protect
Virtually any item, compound, or process made by man
Exceptions vary by laws of individual countries

6. Timelines In general, one year limit from public disclosure to filing
Invention “for sale” starts the bar even if discussions private
Invention recordation at Science Centers may begin critical one-year period

7. Types of Applications Utility Designs Plant Provisional Applications
Continuing Applications

8. Patent Applications Title, abstract, declaratory documents
Specification
Background
Summary of Invention
Detailed description and drawings
Claims

9. Specification What should be included What is not necessary
Examples of inadequate disclosures resulting in invalid patents

10. Claims Exact statements of precisely what the invention encompasses
Claims are what are substantively examined and eventually allowed or finally rejected
Broad vs. narrow
Examples

11. Patent Examination Laws and regulation similar world-wide
Whole application reviewed for technicalities (regulations—form) and well as substance (patentability)
Search
Action rendered by examiner

12. Conclusion of Examination
Allowance
Final rejection
Appeal
Filing of continuing applications
Abandonment

13. Patent Allowed to Issue
Means that you can prevent others from practicing the invention covered by the claims
Does not necessarily mean that you can practice it yourself
Licensing or sale of patent rights

14. Inventorship
Those who contribute ideas that are embodied in the claims
A sole inventor must have conceived the ideas in all claims
Those who contribute ideas, but whose ideas don’t make into claims are not inventors

15. Introduction to the Patent Cooperation Treaty

16. The Patent Cooperation Treaty
A United Nations Treaty
signed in June of 1970 at the Washington Diplomatic Conference
became operational in June of 1978
administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland

17. Purposes of the PCT
To simplify the process of filing foreign patent applications
To give every regional or national patent Office designated by the applicant the benefit of
a search by a major patent Office
an optional examination by a major patent Office

18. PCT Contracting State A country which is a signatory to the PCT
Eighteen (18) Contracting States in 1978
Currently one hundred and twenty-three (123) Contracting States
Patent protection is available in each PCT Contracting State through either
a national patent Office
a regional patent Office
or both

19. States designated for regional protection
Regional Patents
States designated for regional protection
AP ARIPO Patent EA Eurasian Patent EP European Patent OA OAPI Patent
BW Botswana
GH Ghana
GM Gambia
KE Kenya
LS Lesotho
MW Malawi
MZ Mozambique
SD Sudan
SL Sierra Leone
SZ Swaziland
TZ United Republic of Tanzania
UG Uganda
ZM Zambia
ZW Zimbabwe
AM Armenia
AZ Azerbaijan BY Belarus
KG Kyrgyzstan KZ Kazakhstan
MD Republic of Moldova
RU Russian
Federation TJ Tajikistan TM Turkmenistan
AT Austria
BE Belgium BG Republic of Bulgaria
CH Switzerland
CY Cyprus CZ Czech Republic
DE Germany
DK Denmark
EE Estonia
ES Spain
FI Finland
FR France
GB United Kingdom
GR Greece
HU Hungary
IE Ireland
IT Italy
LI Liechtenstein
LU Luxembourg
MC Monaco
NL Netherlands
PL Poland
PT Portugal
RO Romania
SE Sweden
SI Slovenia
SK Slovakia
TR Turkey
BF Burkina Faso
BJ Benin
CF Central African
Republic
CG Congo
CI Côte d’Ivoire
CM Cameroon
GA Gabon
GN Guinea
GQ Equatorial Guinea
GW Guinea-Bissau
ML Mali
MR Mauritania
NE Niger
SN Senegal
TD Chad
TG Togo
Regional patent only

20. States designated for national protection
National Patents
States designated for national protection
NA Namibia
NI Nicaragua
NO Norway
NZ New Zealand
OM Oman
PG Papua New Guinea
PH Philippines
RO Romania
SC Seychelles
SG Singapore
SY Syrian Arab Republic TN Tunisia
TT Trinidad and Tobago
UA Ukraine
US United States of America
UZ Uzbekistan
VC Saint Vincent and the Grenadines
VN Viet Nam
YU Serbia and Montenegro
ZA South Africa
HR Croatia
HU Hungary
ID Indonesia
IL Israel
IN India
IS Iceland JP Japan KP Democratic People’s
Republic of Korea
KR Republic of Korea LC Saint Lucia LK Sri Lanka
LR Liberia
LT Lithuania
LV Latvia MA Morocco MG Madagascar
MK The former Yugoslav
Republic of Macedonia
MN Mongolia MX Mexico
AE United Arab Emirates
AG Antigua and Barbuda
AL Albania
AU Australia BA Bosnia and Herzegovina BB Barbados BR Brazil BW Botswana
BZ Belize
CA Canada CN China
CO Colombia
CR Costa Rica
CU Cuba
DM Dominica
DZ Algeria EC Ecuador
EG Egypt
GD Grenada GE Georgia

21. Number of international applications received
110,065

22. Traditional patent systems
(months) 12
File
applications
abroad
File
application
locally
Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention:
multiple formality requirements
multiple searches
multiple publications
multiple examinations and prosecutions of applications
translations and national fees required at 12 months 1

23. Report & Written Opinion of the ISA
PCT System
Chapter I 30 20
International
publication
(months) 12 18 OR
Enter
national
phase
File first
application
File
PCT
International Search
Report & Written Opinion of the ISA
File
Demand
International
preliminary
examination 30
Local application followed within
12 months by the PCT, claiming priority
under the Paris convention
Chapter II
- one set of formalities requirements
- international search
- international publication
- optional international preliminary examination
- translations and national fees required at 20 or 30 months, and only if applicant wants to proceed with national phase entry

24. The two phases of the PCT
International Phase
Chapter I (mandatory)
designated Offices
Chapter II (optional)
elected Offices
National Phase (stage)

25. The international application
A single application is
filed in one language
filed in one patent Office
the receiving Office (RO)
usually the applicant's home patent Office
treated as a national application in each designated State as of the international filing date
Compliance with the form prescribed for the international application must be accepted by all designated States during national stage

26. Chapter I proceedings International application filed
International search performed by the International Searching Authority (ISA)
International Search Report and Written Opinion of the International Searching Authority prepared
Optional amendment to the claims only
filed with the International Bureau (IB) of WIPO under Article 19 after Search Report mailed
International application, International Search Report and Article 19 amendment published by IB
published pamphlet sent to designated States by IB
Written Opinion of the International Searching Authority not published with pamphlet

27. Chapter II proceedings
Demand electing at least one eligible State is filed with a competent International Preliminary Examining Authority (IPEA)
may include amendments to description, claims and drawings under Article 34
Written Opinion of the International Searching Authority is considered the Written Opinion of the IPEA
A second Written Opinion will be prepared only in very rare circumstances
International Preliminary Report On Patentability or “IPRP” (form PCT/IPEA/409) is
prepared by IPEA and sent to applicant and IB
sent to elected States by IB

28. Steps for national stage entry
Prepare translations of the international application into languages required by the desired patent offices as applicable
translations should be “accurate”
amendments, even those considered to be minor in nature, should not be made to the translation
applicant may file amendments to the application in each DO/EO
Transmit translation and necessary fees to each desired national or regional patent office previously designated/elected

29. Purpose of national phase
Once national phase entry requirements have been met, each designated/elected Office decides whether to grant a patent or reject the claims
Under old system all expenses associated with foreign filings, translations, filing fees, and local associates, had to be provided for in each country before the end of twelve months from the priority filing date.
Under PCT, the expense of the translations, local filing fees, and local associates can be put off--up to thirty months from priority filing date. Gives a lot of time to find out whether or not the invention is patentable and/or commercially viable in each country.

30. Advantages of the PCT
To file in up to 123 countries with a single international application
To delay the expenses associated with
translations
foreign filing fees
local associates
To provide an early indication of pertinent prior art
To give extra time for assessment of commercial viability in designated States
Under old system all expenses associated with foreign filings, translations, filing fees, and local associates, had to be provided for in each country before the end of twelve months from the priority filing date.
Under PCT, the expense of the translations, local filing fees, and local associates can be put off--up to thirty months from priority filing date. Gives a lot of time to find out whether or not the invention is patentable and/or commercially viable in each country.

31. January 2004 changes
Enhanced international search and preliminary examination (EISPE) system
Change to time limit for filing a demand for international preliminary examination
Automatic designation and election of Contracting States
Simplified fee system

32. PCT resources
PCT and Regulations under the PCT, the PCT Newsletter, the PCT Applicant's Guide, etc., available on the Internet at the following URL:

33. Contact Information

34. Thank You!