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

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 1790. 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. 4/20/2017 2 2

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 http://en.wikipedia.org/wiki/Paris_Convention_for_the_Protection_of_Industrial_Property accessed on September 5, 2013. 4/20/2017 3

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 4/20/2017 Graphic obtained from http://en.wikipedia.org/wiki/Patent_Cooperation_Treaty accessed on September 6, 2013 4

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. 4/20/2017 5

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 http://en.wikipedia.org/wiki/WTO accessed on September 5, 2013. 4/20/2017 6 6

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. 4/20/2017 7

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)

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.” 4/20/2017 9

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. 4/20/2017 10

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 4/20/2017 11

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. 4/20/2017 12

Types of U.S. Patents Utility Design Plant 4/20/2017 13

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 4/20/2017 14

Plant Patent PP20,900 20/04/17 15 15

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 4/20/2017 16

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Design Patents The figure on the left is of a cricket bat from U.S. design patent No. D475425 issued on June 3, 2003 to Thomas G. Larsen. 18 18

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. 4/20/2017 19

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. 4/20/2017 20 20

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. 4/20/2017 21

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.” 4/20/2017 22

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 4/20/2017 23

Patent Examination Process

(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 4/20/2017 25

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. _ 4/20/2017 26

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 4/20/2017 27

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 4/20/2017 28

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 4/20/2017 29

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. 4/20/2017 30

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. 4/20/2017 31 31

Pre-Grant Publication 18 Month Publication All Applications Filed on or after November 29, 2000 unless No Foreign Filing Petition to Prevent Publication 4/20/2017 32

Post Grant: Maintenance fees due at: 3 ½ years $1150 →→→ $1600 50% discount for small entities (Changes as of March 18 2013 due to AIA) 4/20/2017 33

USPTO Stats and Web Site 34

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 20/04/17 35 35

USPTO Statistics FY 2012 36

Patent Applications Filed FY 2012 37

Patents Issued FY 2012 38

FY 2012 Patent Pendency 20/04/17 39 39

USPTO Website - www.uspto.gov 40

Searching Patents and Published Applications 4/20/2017 41

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 4/20/2017 42

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 4/20/2017 43

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 4/20/2017 44

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. 4/20/2017 45

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