1. The Patent Process and the America Invents Act
Evan Boetticher, M.S.
Judy Mohr, Ph.D. McDermott Will & Emery LLP
March 11, 2013
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3. http://www. whitehouse

4. Tonight’s Topics How did Ms. Rebecca Hyndman obtain her patent?
what is a patent?
what is the process to obtain a patent?
how does the America Invents Act change the patent system?

5. what is a patent
patent process
impact of AIA – first to file

7. + 20 years
Expires: Jan. 4, 2028

11. Granted U.S. Design Patent on iPhone
What is a Patent?
Granted U.S. Design Patent on iPhone
Date of patent + 14 years
Expires: June 29, 2024 *

12. Lesson #1
a patent gives the right to exclude others from making, using, selling the idea set forth in the claims of the patent for 20 years from the earliest non-provisional application filing date
patent application publications are not legally enforceable property rights

13. what is a patent
patent process
impact of AIA – first to file

14. Basic requirements: How to Obtain a Patent novel not obvious
patent eligible subject matter
sufficient written description of the idea to teach how to make and use the full scope of the claims

15. How to Obtain a Patent Provisional Application
1 year
Provisional Application
“6x/xxx,xxx”
Non-provisional (“utility”)
Application
“1x/xxx,xxx” *

16. How to Obtain a Patent (cont’d)
Published iPod Patent Application *

17. Patent Application Lifecycle
Non-provisional (“utility”)
Application Filed
October 2002
1 year
3rd Provisional Application
Filed in June 2002
1st Provisional Application
Filed in October 2001
2nd Provisional Application
Filed in February 2002 *

18. Patent Application Lifecycle (cont’d)
International
Applications
app. publishes
18 months from
provisional filing
U.S. Non-Provisional (“utility”) Application
U.S. Provisional Application(s)
1 year
14 months
(can be
2-3 years)
Pay Issue Fee;
Patent Grants
1st Office Action
Final Office Action or Notice of Allowance
3-6 months
Written Response
to Office Action
4 months

19. Patent Application Lifecycle (cont’d)
1 year
Provisional Application Filed “60/xxx,xxx”
Regular (“utility”) Application Filed
14 months
Pay Issue Fee;
Patent Grants
1st Office Action
Final Office Action or Notice of Allowance
3-6 months
Written Response
to Office Action
4 months *

20. Patent Application Lifecycle (cont’d)
Provisional Application Filed “60/xxx,xxx”
1 year
Regular (“utility”) Application Filed
14 months
if Examiner refuses to consider response, then file a “Request for Continued Examination (RCE)”
1st/3rd Office Action
4 months
Written Response
to Office Action
3-6 months
Final Office Action
Written Response
to Office Action
3-6 months
4 months *

21. Costs Associated with Patent Application Lifecycle
U.S. Provisional Application $8,000 - $15,000 Atty Fees; $260 USPTO Fee
non-provisional application
$1,000 - $8,000 Atty Fees;
$1,600 USPTO Fee
1 year
14 months
File “Request for Continued Examination (RCE)” $1,200 or $1,700 USPTO Fee
Pay Issue Fee
$1,780 USPTO Fee
1st Office Action
Final Office Action or Notice of Allowance
3-6 months
Written Response
to Office Action
$3,000 - $6,000 Atty Fees
4 months
*USPTO Fees shown are “large entity” fees

22. Patent Application Lifecycle (cont’d)
International
Applications
app. publishes
18 months from
provisional filing
U.S. Non-Provisional (“utility”) Application
U.S. Provisional Application(s)
1 year
14 months
(can be
2-3 years)
Pay Issue Fee;
Patent Grants
1st Office Action
Final Office Action or Notice of Allowance
3-6 months
Written Response
to Office Action
4 months

23. International Patent Filings
PCT Application
Publication
2 months
Korea
India
China
Europe
Austr.
Canada
Japan
Brazil
Mexico
national phase filings (30 or 31 months from provisional appln. filing date)
U.S. Provisional Application
International (PCT) Application(s)
1 year
4 months
International Search
Report
and Written Opinion
12 months

25. Section 1: Patent Process
what is a patent
patent process
impact of AIA – first to file

26. patent application filed on floor storage tiles
First to Invent: Current US Patent System
Rebecca (Blue)
patent application filed on floor storage tiles

27. First to Invent: Current US Patent System
Rebecca (Blue) can provide evidence of having the idea first, and Rebecca is entitled to the patent even though Rebecca filed after Grey

28. First to Invent: Current US Patent System
One Year Grace Period
1 year
date of publication
date of patent application filing

29. First to Invent: Current US Patent System
First to File: Effective March 16, 2013
Blue can no longer “swear behind” Grey’s earlier patent application filing date by proving Blue invented first
Blue can provide evidence of having the idea first, and Blue is entitled to the patent even though Blue filed after Grey

30. First to File: Effective March 16, 2013
A person shall be entitled to a patent, unless:
before the filing date, the invention was:
patented
described in printed publication
in public use
on sale
otherwise available to the public (35 USC 102(a)(1)) or
the claimed invention was described in an issued patent or published application, which
names another inventor; and
was filed before applicant’s filing date (35 USC 102(a)(2))

31. First to File: Effective March 16, 2013
the following events destroy patentability if they occur before the application filing date:
patented
described in printed publication
in public use
on sale
otherwise available to the public
described in a patent publication filed by another
(35 USC 102(a)(1) and 102(a)(2))

32. First to File: Effective March 16, 2013
EXCEPT:
A “disclosure” (printed publication, public use, sale, etc.) <1 year before the application filing date is not prior art if
(i) it was made by the inventor or another who obtained it from the inventor; or
(ii) it was made by another but preceded by a disclosure by the inventor or another who obtained it from the inventor
Effect of the Exception  “first to publish” regime

33. First to File: Inspect the Exception: 1 Year Grace Period Retained
Example 1/6
1 year
date of publication
date of patent application filing

34. First to File: Effect of Publishing?
Example 2/6

35. First to File: First to Publish
Example 2/6
Although Blue is the First to File, Gray is entitled to the patent because Gray is first to publish
1 year

36. First to File: First to Publish
Example 3/6
Although Gray is the First to File, Gray is NOT entitled to the patent because Blue is first to publish

37. First to File: Does First to Publish Always Win?
Example 4/6
1 year

38. First to File: Does First to Publish Always Win?
Example 5/6

39. First to File: Is the strategy to first publish and then file a patent application a viable strategy?
1 year
Yes, but only if
the patent application is filed within 1 year of the date of disclosure
the disclosure/publication and patent application have a substantially identical disclosure
patent protection outside the U.S. is not desired

40. First to File: Complications and Unknowns
Example 6/6
1 year
prov. app A B A B A A A B
AND/OR A B A B A B

41. THANK YOU *

42. Patent Searching and Patent Copies
USPTO database
Google patent database
Espace database
WIPO (World Intellectual Property Organization)
PatentFetcher *