1. Patent Processing – Examination Issues Patent, Trademark, and Copyright - Law and Policy 5-8 November 2007 Amman, Jordan Global Intellectual Property Academy Office of International Relations United States Patent and Trademark Office

2. 2 Patent Processing- Examination of Patent Applications  Brief Introduction to Important Patent Statutes  Patent Process  Claim Interpretation  Ownership

3. Brief Introduction to Important U.S. Statutes

4. 4 Patent Processing- Brief Introduction to Important Patent Statutes u35 USC 101 u35 USC 102 u35 USC 103 u35 USC 112 u35 USC 119 and 120 u35 USC 271(a)

5. 5 Important Statutes: Eligibility Utility 35 U.S.C. 101: “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”

6. 6 Important Statutes: Eligibility Broad U.S. View of Patent Eligibility Congress intended scope to include “Anything Under the Sun Made by Man” – Diamond v. Chakrabarty (447 U.S. 303, 317)

7. 7 Important Statutes: Eligibility Exceptions The U.S. Supreme Court has identified three categories of subject matter that are not patentable: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas

8. 8 Important Statutes: Eligibility Business Methods In determining whether an invention is patent eligible, U.S. Courts look to whether the claimed invention “as a whole” has a practical application that produces a “useful, concrete and tangible result”

9. 9 Eligibility Biotechnology In order to be eligible for patenting, an invention must not be “natural phenomena”

10. 10 Eligibility Biotechnology Diamond v. Chakrabarty (447 U.S. 303, 317) The U.S. Supreme court determined that a claimed micro-organism qualifies as patentable subject matter because it was made by man and it was not naturally occurring

11. 11 Important Statutes: Utility Requires that an invention be considered useful, i.e., possess a specific, substantial, and credible utility Some credible utility must be associated with the claimed subject matter View of a person of ordinary skill in the art- e.g., prevention of aging Specific utility Specific for the claimed invention Substantial utility Real-world use

12. 12 Important Statutes: Utility Requires that an invention be considered useful, i.e., possess a specific, substantial, and credible utility Some credible utility must be associated with the claimed subject matter View of a person of ordinary skill in the art- e.g., prevention of aging Specific utility Specific for the claimed invention Substantial utility Real-world use

13. 13 Important Statutes: Written Description, 35 USC § 112 35 U.S.C. 112 Specification (first paragraph) “The specification shall contain a written description of the invention, and of 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.” Must show adequate description of the invention to prove possession of the invention at the time application was filed. Policy encourage disclosure of complete and accurate information

14. 14 Important Statutes: Enablement, 35 USC § 112 Minimum amount that is required to teach those of skill in the art how to make and use the invention without undue experimentation Undue experimentation: Wands factors quantity of experimentation necessary amount of guidance presented nature of the invention breadth of claims level of predictability state of the prior art working examples level of skill in the art

15. 15 Important Statutes: Best Mode, 35 USC § 112 Statutory requirement to disclose at the time the application is filed, the preferred method of practicing the invention

16. 16 Important Statutes: Clarity Requirement, 35 USC § 112, second para. The language of the claimed invention must be clear and unambiguous. Understandable language Relative terms

17. 17 Important Statutes: Right to an Earlier Filing Date, 35 USC §§ 119 and 120 35 U.S.C. 119 Benefit of earlier filing date; right of priority. (a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed…

18. 18 Important Statutes: Patent Right, 35 USC § 271(a) 35 U.S.C. 271 Infringement of patent. (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

19. Patent Process

20. 20 Patent Process: Contents of a U.S. Patent Application A complete application comprises: (1) A specification as prescribed by 35 U.S.C. 112, including a claim or claims (2) An oath or declaration (3) Drawings, when necessary; and (4) The prescribed filing fee, search fee, examination fee, and application size fee.

21. 21 Patent Process: Contents of a U.S. Patent Application Applications also frequently contain: One or more priority documents; Sequence listings; and information disclosure statements

22. 22 Tentative Classification, Screened for Sensitive Contents PICS Electronic Scanning Licensing & Review Security Sensitive Cases Separately Processed Abandonments Examiner Application Assigned to Examiner Examiners First Action Second Examiner Action Final Rejection or Allowance Subsequent Examiner Action Board of Patent Appeals and Interferences Applicant Response Examine r Courts Quality Review Initial Data Capture Initial Electronic Capture for Printing and Issue Patent Printed and Issued Pre-Examination Processing (Office of Initial Patent Examination) Examination Processing Post-Examination Processing (Office of Patent Publication) LEGEND Normal Processing Sequence Alternate Processing Sequence Serial No. Assigned Fees Recorded Final Data Capture Final Preparation and Electronic Capture for Printing and Issue Administrative Examination, Filing Receipt Mailed Patent Publication Division Receipt & review of allowed case & papers File Maintenance Facility Match Post-Allowance Papers and Fees The Patent Process 18 Month Publication of Patent Application

23. 23 Patent Process: 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.

24. 24 Patent Process After passing national security screening and formalities review, the application is assigned to a patent examiner for examination on the merits Applicant is not required to separately request examination on the merits

25. 25 Patent Process: Examiner’s First Action Examiner studies application and searches prior art relating to subject matter claimed Reasons for any adverse action, objection, or requirement are stated in the action If claims properly define over the prior art and application is otherwise in order, first action may be allowance

26. Patent Process: Claim Interpretation

27. 27 Patent Process: Claim Interpretation Is the careful consideration of each and every word in a claim to determine what the claim covers

28. 28 Patent Process: Claim Interpretation Give each word in a claim its broadest reasonable interpretation consistent with the specification

29. 29 Patent Process: Claim Interpretation A claim must be interpreted in light of the specification without reading limitations into the claim.

30. 30 Patent Process: Claim Interpretation Structural and Functional Limitations Claims may have  structural, and/or  functional limitations The prior art may disclose both kinds of limitations  Expressly or explicitly  Inherently or implicitly

31. 31 Inherency/Implied Teachings Prior art reference inherently describes a claim’s limitation if the limitation “naturally flows” from the reference, i.e., it is necessarily, inevitably, or without question in the prior art reference (not possibly or probably)

32. 32 Structural Limitations Suppose a claim cited: Claim 1. A container … solid, non-porous walls… Prior art reference – Petri Dish:Prior art reference – Aquarium:

33. 33 Intended Use Limitations Intended Use – statements of expected future use Prior art applied in a rejection must be capable of performing the intended use Examples of intended use …a brush for brushing hair… …a brush for brushing teeth…

34. 34 Patent Application to Mitchell et al Claim 1. A stool comprising a seat portion having a generally planar surface and four legs connected to the seat portion. Claim 2. The stool of claim 1 wherein the stool glows in the dark. Claim 3. The stool of claim 1 wherein two of the legs include wheels connected thereto. Claim 4. The stool of claim 1 wherein the seat portion is wooden and includes openings therein for making the stool lighter in weight. Claim 5. The stool of claim 3 wherein the stool glows in the dark. Claim 6. A stool consisting of a seat portion having a generally planar surface, four legs connected to the seat portion, and wherein two of the legs have wheels connected thereto.

35. 35 Prior art: Doehler A bar stool Claim 1. A stool comprising a seat portion having a generally planar surface and four legs connected to the seat portion. Claim 2. The stool of claim 1 wherein the stool glows in the dark. Claim 3. The stool of claim 1 wherein two of the legs include wheels connected thereto. Claim 4. The stool of claim 1 wherein the seat portion is wooden and includes openings therein for making the stool lighter in weight. “Stool” Mitchell et al

36. 36 Prior art: Doehler A bar stool Claim 5. The stool of claim 3 wherein the stool glows in the dark. Claim 6. A stool consisting of a seat portion having a generally planar surface, four legs connected to the seat portion, and wherein two of the legs have wheels connected thereto. “Stool” Mitchell et al

37. 37 Prior art: Sandy U.S. Design Patent Date of Patent: Sep.3, 1994 Claim 1. A stool comprising a seat portion having a generally planar surface and four legs connected to the seat portion. Claim 2. The stool of claim 1 wherein the stool glows in the dark. Claim 3. The stool of claim 1 wherein two of the legs include wheels connected thereto. Claim 4. The stool of claim 1 wherein the seat portion is wooden and includes openings therein for making the stool lighter in weight. “Stool” Mitchell et al

38. 38 Prior art: Sandy U.S. Design Patent Date of Patent: Sep.3, 1994 Claim 5. The stool of claim 3 wherein the stool glows in the dark. Claim 6. A stool consisting of a seat portion having a generally planar surface, four legs connected to the seat portion, and wherein two of the legs have wheels connected thereto. “Stool” Mitchell et al

39. 39 Prior art: Drabick U.S. Patent No. 5,509,601 Date of Patent: Apr. 23, 1996 Claim 1. A stool comprising a seat portion having a generally planar surface and four legs connected to the seat portion. Claim 2. The stool of claim 1 wherein the stool glows in the dark. Claim 3. The stool of claim 1 wherein two of the legs include wheels connected thereto. Claim 4. The stool of claim 1 wherein the seat portion is wooden and includes openings therein for making the stool lighter in weight. “Stool” Mitchell et al

40. Ownership

41. 41 Ownership  Why an examination issue?  Pertains to who has the right to file amendments in the application  In the US, the inventors have the right to file and “prosecute” the application  Unless they have assigned that right to another.  To show assignment, the US requires a copy of the assignment be recorded in the USPTO assignment records

42. Questions? Karin Ferriter E-mail: Karin.Ferriter@uspto.govKarin.Ferriter@uspto.gov Telephone: +1 571 272 9300