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

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Presentation on theme: "The Patent Process Mark R. Powell U. S. Patent & Trademark Office."— Presentation transcript:

1 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 (regulationsform) 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 dont 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 ATAustria BEBelgium BGRepublic of Bulgaria CHSwitzerland CYCyprus CZCzech Republic DE Germany DKDenmark EE Estonia ESSpain FIFinland FRFrance GBUnited Kingdom GRGreece HUHungary IEIreland ITItaly LI Liechtenstein LULuxembourg MCMonaco NLNetherlands PLPoland PT Portugal RO Romania SESweden SISlovenia SKSlovakia TRTurkey Regional Patents AP ARIPO Patent EA Eurasian PatentEP European PatentOA OAPI Patent BWBotswana GHGhana GMGambia KEKenya LSLesotho MWMalawi MZMozambique SDSudan SLSierra Leone s SZSwaziland TZUnited Republic of Tanzania UGUganda ZMZambia ZWZimbabwe AMArmenia AZAzerbaijan BYBelarus KGKyrgyzstan KZKazakhstan MDRepublic of Moldova RURussian Federation TJTajikistan TMTurkmenistan Regional patent only BFBurkina Faso BJBenin CFCentral African Republic CGCongo CICôte dIvoire CMCameroon GAGabon GNGuinea GQEquatorial Guinea GWGuinea-Bissau MLMali MRMauritania NENiger SNSenegal TDChad TGTogo States designated for regional protection

20 National Patents AEUnited Arab Emirates AGAntigua and Barbuda AL Albania AUAustralia BABosnia and Herzegovina BBBarbados BRBrazil BWBotswana BZBelize CACanada CNChina COColombia CRCosta Rica CUCuba DMDominica DZAlgeria ECEcuador EGEgypt GDGrenada GEGeorgia NA Namibia NINicaragua NONorway NZNew Zealand OMOman PGPapua New Guinea PHPhilippines RORomania SC Seychelles SGSingapore SYSyrian Arab Republic TN Tunisia TTTrinidad and Tobago UAUkraine USUnited States of America UZUzbekistan VCSaint Vincent and the Grenadines VNViet Nam YUSerbia and Montenegro ZASouth Africa HRCroatia HUHungary IDIndonesia ILIsrael INIndia ISIceland JPJapan KPDemocratic Peoples Republic of Korea KRRepublic of Korea LCSaint Lucia LKSri Lanka LRLiberia LTLithuania LV Latvia MAMorocco MGMadagascar MKThe former Yugoslav Republic of Macedonia MNMongolia MXMexico States designated for national protection

21 Number of international applications received 110,065

22 Traditional patent systems 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 0 12 File application locally File applications abroad (months)

23 File Demand File first application File PCT International Search Report & Written Opinion of the ISA International publication International preliminary examination (months) OR Enter national phase Chapter I Chapter II PCT System 30 - 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 Local application followed within 12 months by the PCT, claiming priority under the Paris convention

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

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

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!

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