July 18, 2005Brenda Harvey, Attorney Sieberth & Patty LLC Patents, General Information b Patent gives patentee the right to exclude

July 18, 2005 Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com

Patents, General Patents, General InformationInformation

Patent gives patentee the right to Patent gives patentee the right to exclude others from making, using, exclude others from making, using, offering for sale or selling the invention offering for sale or selling the invention throughout the US or importing the throughout the US or importing the invention into the U.S. (35 USC § 154 (a)invention into the U.S. (35 USC § 154 (a)(1))(1))

Generally, the term of a patent is twenty Generally, the term of a patent is twenty (20) years . Begins on date patent issued (20) years . Begins on date patent issued and ends 20 yrs from earliest appropriate and ends 20 yrs from earliest appropriate filing date.filing date.



Types of Patent ProtectionTypes of Patent Protection• In USIn US

– Provisional Utility PatentProvisional Utility Patent– Utility ( this is your example hand-out)Utility ( this is your example hand-out)– PlantPlant– DesignDesign

• Foreign CountriesForeign Countries– Many countries have a patenting system Many countries have a patenting system

with a varying degree of similarity to the USwith a varying degree of similarity to the US



Patent Cooperation Treaty (PCT)Patent Cooperation Treaty (PCT)• A number (126) of countries have A number (126) of countries have

agreed by treaty to simplify the agreed by treaty to simplify the application process application process in the member in the member statesstates by ratifying the PCT by ratifying the PCT

• Administered by the World Administered by the World Intellectual Property Organization Intellectual Property Organization (WIPO) www.wipo.int(WIPO) www.wipo.int



Non-PCT member countriesNon-PCT member countries• Notably, many countries in Central Notably, many countries in Central

and South America are not members and South America are not members of the PCTof the PCT

• Have to file within prescribed Have to file within prescribed deadlines deadlines in each countryin each country from the from the beginning of the processbeginning of the process



Threshold for patentabilityThreshold for patentability• Novel - not invented before or found Novel - not invented before or found

described in any printed publication described in any printed publication (also known as Prior Art)(also known as Prior Art)

• Non-obvious - no patent will issue if it Non-obvious - no patent will issue if it would be obvious for a “person of would be obvious for a “person of skill in the art” to combine features skill in the art” to combine features present in the claimed invention present in the claimed invention which are found in the prior art which are found in the prior art



Threshold for patentability, cont’dThreshold for patentability, cont’d• Useful - the goal of the patent act is to Useful - the goal of the patent act is to

advance scientific learning for betterment of advance scientific learning for betterment of societysociety

Statutory and Regulatory basisStatutory and Regulatory basis• 35 USC § 101 et seq. (United States Code)35 USC § 101 et seq. (United States Code)• 37 CFR § 1.1 et seq. (Code of Federal 37 CFR § 1.1 et seq. (Code of Federal

Regulations)Regulations)• Manual of Patent Examining Procedure Manual of Patent Examining Procedure

(MPEP)(MPEP)



Highlights of different statutes and Highlights of different statutes and rulesrules• Inventor has one year in the US after Inventor has one year in the US after

public use or sale to file his application public use or sale to file his application or he is absolutely barred (but sale or or he is absolutely barred (but sale or public use at any time before filing public use at any time before filing may cost him his foreign rights)may cost him his foreign rights)

• Not all subject matter is susceptible to Not all subject matter is susceptible to patentingpatenting



““anything under the sun made by anything under the sun made by man” is the broad statement of man” is the broad statement of patentable subject matter from patentable subject matter from Diamond v ChakrabartyDiamond v Chakrabarty, 447 US 303 , 447 US 303 (1980)(1980)

But,But,• phenomena of nature? NOphenomena of nature? NO• ideas? NOideas? NO• mathematical algorithms? Nomathematical algorithms? No



• processes or methods for making processes or methods for making something? Yessomething? Yes

• compositions of matter? Yescompositions of matter? Yes• business methods using computers? business methods using computers?

YesYes Must file the patent application in Must file the patent application in

the name of the inventor(s)the name of the inventor(s)



Hot Topics in the Patent AreaHot Topics in the Patent Area• Pending Legislation Pending Legislation • Patent Reform Bill (H.R. 2795] introduced in Patent Reform Bill (H.R. 2795] introduced in

House of Representatives on June 8, 2005House of Representatives on June 8, 2005• As drafted will change “first to invent” As drafted will change “first to invent”

(current US way) to “first to file” (most other (current US way) to “first to file” (most other nations)nations)

• Other technical changes are also includedOther technical changes are also included• If passed in its present form, will be a huge If passed in its present form, will be a huge

change in US patent practicechange in US patent practice


Sample Patent, US 6, Sample Patent, US 6, 004,596004,596

[11] patent number -- 6,004,596[11] patent number -- 6,004,596• later patents (after Jan. 2, 2001) have later patents (after Jan. 2, 2001) have

document-type codes (kind codes)document-type codes (kind codes)– US 6, 654,321 B1, US6, 654,322 B2 - US 6, 654,321 B1, US6, 654,322 B2 -

issued patents either not published as an issued patents either not published as an application (B1) or published (B2)application (B1) or published (B2)

– US 2001/001111 A1 patent application US 2001/001111 A1 patent application publicationpublication

– US RE12,345 reissue utility patentUS RE12,345 reissue utility patent



– US PP12,345 Plant patentUS PP12,345 Plant patent– US D654,321 Design patentUS D654,321 Design patent

[45] date of issuance Dec. 21, 1999[45] date of issuance Dec. 21, 1999 [19] country US patent[19] country US patent Inventor, first named Kretchman et Inventor, first named Kretchman et

al.al. [75] complete list of inventors and [75] complete list of inventors and

home cities and stateshome cities and states



[56] references cited[56] references cited• important since relative to duty of candor important since relative to duty of candor

and duty of disclosureand duty of disclosure• US is only country which requires the US is only country which requires the

patentee to submit documents he knows patentee to submit documents he knows of which might serve to keep him from of which might serve to keep him from obtaining a patentobtaining a patent

[57] abstract of the invention[57] abstract of the invention Page one also includes a generic figurePage one also includes a generic figure



Figures form next pagesFigures form next pages Numbered by sheets (i.e., 1 of 4)Numbered by sheets (i.e., 1 of 4) Figures are required for Figures are required for

mechanical inventionsmechanical inventions Written Description is nextWritten Description is next

• 2 column format2 column format• lines numbered in centerlines numbered in center



Find Column 4, line 15Find Column 4, line 15 The “claims” begin hereThe “claims” begin here Claims must particularly point out Claims must particularly point out

and distinctly claim the subject and distinctly claim the subject matter the applicant regards as his matter the applicant regards as his inventioninvention

you get 20 claims for your initial you get 20 claims for your initial fee, any extra claims cost extrafee, any extra claims cost extra



Claim drafters use odd language such Claim drafters use odd language such as “said” for “the”as “said” for “the”

Different art areas have various words Different art areas have various words and phrases that sound odd to the and phrases that sound odd to the laymanlayman

““urging device” for a springurging device” for a spring Website for free printing of patent in Website for free printing of patent in

its entirety its entirety www.freepatentsonline.comwww.freepatentsonline.com


Topics for ParalegalsTopics for Paralegals

Skills needed (by our personnel)Skills needed (by our personnel)• General computer literacyGeneral computer literacy• MS Word - word processing programMS Word - word processing program• Corel WordPerfect - word processing Corel WordPerfect - word processing

programprogram• MS Excel - spreadsheet programMS Excel - spreadsheet program• Internet search techniques, Windows Internet search techniques, Windows

ExplorerExplorer• Time Matters - document retrieval systemTime Matters - document retrieval system



• IP Forms - data entry program specific to IP IP Forms - data entry program specific to IP lawlaw

• Acrobat Professional - form writing Acrobat Professional - form writing programprogram

• Lotus Notes - email programLotus Notes - email program• Case Tracking System (CTS) - data entry Case Tracking System (CTS) - data entry

program specific to IP lawprogram specific to IP law• West Law - case law search programWest Law - case law search program• NewNew Fast Case - case law search, free Fast Case - case law search, free

from LSBAfrom LSBA



Typical TasksTypical Tasks• Review incoming correspondence, Review incoming correspondence,

identify type, case no. and need for identify type, case no. and need for time-sensitive docket tracking entrytime-sensitive docket tracking entry

• Enter correspondence into one of two Enter correspondence into one of two docket tracking systems (CTS or Time docket tracking systems (CTS or Time Matters)Matters)

• Double docketing is preferred by Double docketing is preferred by malpractice insurersmalpractice insurers



Draft correspondence to appropriate Draft correspondence to appropriate authority, clients, foreign associatesauthority, clients, foreign associates

Assist attorneys in patent application Assist attorneys in patent application processprocess• Conduct prior art search using USPTO Conduct prior art search using USPTO

website and EPO website (requires special website and EPO website (requires special techniques)techniques)

• Format case when drafted by attorney to Format case when drafted by attorney to provide correct spacing and paragraph provide correct spacing and paragraph numberingnumbering



• Formalize drawings from draftsmanFormalize drawings from draftsman• Prepare forms to be filed with the drafted Prepare forms to be filed with the drafted

case; number and kind vary depending on case; number and kind vary depending on the authority being applied to (USPTO or the authority being applied to (USPTO or PCT)PCT)

• Prepare Information Disclosure Statements, Prepare Information Disclosure Statements, listing prior art known to the applicantlisting prior art known to the applicant

• Calculate the costs of the application based Calculate the costs of the application based on the number of claims, pages and type of on the number of claims, pages and type of applicantapplicant



Patent Prosecution ProcessPatent Prosecution Process• After the application is filed, there is After the application is filed, there is

correspondence back-and-forth with correspondence back-and-forth with the USPTOthe USPTO

• Accurate docketing of deadlines is Accurate docketing of deadlines is extremely important to avoid loss of extremely important to avoid loss of rightsrights



ConclusionConclusion

Questions?Questions? Comments?Comments?

Documents

July 18, 2005Brenda Harvey, Attorney Sieberth & Patty LLC Patents, General Information b Patent gives patentee the right to exclude