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The Patent Process
Mark R. Powell
U. S. Patent & Trademark Office
Forms of Intellectual Property
• Patents
• Trademarks
• Copyrights
• Trade Secrets
Patents
• Historical Context
• Definition
• Federal Statutes 35 U.S.C.
• Court of Appeals for the Federal Circuit
Patenting vs. Trade Secrets
• The bargain: protection of the invention as a reward for disclosing it to others
• How this advances technology in general
What Patents Can Protect
• Virtually any item, compound, or process made by man
• Exceptions vary by laws of individual countries
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
Types of Applications
• Utility
• Designs
• Plant
• Provisional Applications
• Continuing Applications
Patent Applications
• Title, abstract, declaratory documents
• Specification– Background – Summary of Invention– Detailed description and drawings
• Claims
Specification
• What should be included
• What is not necessary
• Examples of inadequate disclosures resulting in invalid patents
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
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
Conclusion of Examination
• Allowance
• Final rejection
• Appeal
• Filing of continuing applications
• Abandonment
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
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
Introduction to the Patent Cooperation Treaty
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
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
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
AT Austria BE Belgium
BG Republic of Bulgaria CH Switzerland CY Cyprus
CZ Czech RepublicDE Germany
DK DenmarkEE Estonia
ES SpainFI Finland
FR FranceGB United Kingdom
GR GreeceHU Hungary
IE Ireland IT Italy
LI LiechtensteinLU Luxembourg
MC Monaco NL Netherlands
PL PolandPT PortugalRO Romania
SE Sweden SI Slovenia
SK SlovakiaTR Turkey
Regional Patents
AP ARIPO Patent EA Eurasian Patent EP European Patent OA OAPI Patent BW BotswanaGH GhanaGM GambiaKE KenyaLS LesothoMW MalawiMZ Mozambique SD SudanSL Sierra Leone
SZ SwazilandTZ United Republic
of TanzaniaUG UgandaZM ZambiaZW Zimbabwe
AM ArmeniaAZ Azerbaijan BY Belarus KG Kyrgyzstan KZ KazakhstanMD Republic of
MoldovaRU Russian
FederationTJ TajikistanTM Turkmenistan
Regional patent only
BF Burkina Faso BJ Benin CF Central African
Republic CG Congo CICôte 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
States designated for regional protection
National Patents
AE United Arab Emirates AG Antigua and Barbuda AL Albania
AU AustraliaBA Bosnia and Herzegovina BB BarbadosBR BrazilBW Botswana BZ BelizeCA CanadaCN ChinaCO Colombia CR Costa RicaCU Cuba DM DominicaDZ Algeria EC Ecuador EG EgyptGD Grenada GE Georgia
NA NamibiaNI NicaraguaNO NorwayNZ New ZealandOM OmanPG Papua New Guinea PH PhilippinesRO RomaniaSC SeychellesSG Singapore
SY Syrian Arab Republic TN Tunisia
TT Trinidad and TobagoUA UkraineUS United States of AmericaUZ UzbekistanVC Saint Vincent and the
Grenadines VN Viet NamYU Serbia and MontenegroZA South Africa
HR CroatiaHU Hungary ID IndonesiaIL IsraelIN India IS IcelandJP JapanKP Democratic People’s
Republic of KoreaKR Republic of Korea
LC Saint LuciaLK Sri LankaLR LiberiaLT LithuaniaLV LatviaMA MoroccoMG MadagascarMK The former Yugoslav Republic of MacedoniaMN MongoliaMX Mexico
States designated for national protection
Number of international applications received
010,00020,00030,00040,00050,00060,00070,00080,00090,000
100,000110,000120,000
1978
1980
1982
1984
1986
1988
1990
1992
1994
1996
1998
2000
2002
110,065
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
Fileapplication
locally
Fileapplications
abroad
(months)
File Demand
File first application
File PCT
International Search Report & Written
Opinion of the ISA
Internationalpublication
0 12 18
Internationalpreliminaryexamination
(months)
OR
30
20
Enternationalphase
Chapter I
Chapter II
PCT System30
- 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 within12 months by the PCT, claiming priorityunder the Paris convention
The two phases of the PCT
• International Phase – Chapter I (mandatory)
• designated Offices
– Chapter II (optional)• elected Offices
• National Phase (stage)
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
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
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
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
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
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
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
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:
http://www.wipo.int/pct/en/index.html
Thank You!