Ram R. Shukla, Ph.D.Supervisory Patent Examinerp y

Technology Center 1600United States Patent & Trademark Office

(571) 272-0735ram.shukla@uspto.gov

University of South Florida TAMPA, FL

February 15, 2012

Basis for Protection of Patents and Basis for Protection of Patents and Copyrights in the U.S. ConstitutionCopyrights in the U.S. Constitution

-”Congress shall have the power…..to promote the US Constitution, Article 1, Section 8, Clause 8US Constitution, Article 1, Section 8, Clause 8

g p pprogress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

What is Intellectual PropertyWhat is Intellectual PropertyWhat is Intellectual PropertyWhat is Intellectual Property

4 types of intellectual property: 4 types of intellectual property:

(1)(1) C i htC i ht(1)(1) CopyrightCopyright

(2)(2) TrademarkTrademark

(3)(3) Trade SecretsTrade Secrets

(4)(4) PatentPatent(4)(4) PatentPatent

CopyrightCopyrightpy gpy g

DefinitionDefinition: : A form of protection provided to the authors of A form of protection provided to the authors of “original works of authorship”“original works of authorship”

ProtectsProtects: : Literary, dramatic, musical, artistic, and certain Literary, dramatic, musical, artistic, and certain other intellectual worksother intellectual works

DurationDuration: : In general, author’s life + 70 yearsIn general, author’s life + 70 years

For more information on copyright, For more information on copyright, visit the U.S. Copyright Office website at visit the U.S. Copyright Office website at http://www copyright govhttp://www copyright govhttp://www.copyright.govhttp://www.copyright.gov

TrademarkTrademark

DefinitionDefinition: : Any word name symbol or device or any Any word name symbol or device or any DefinitionDefinition: : Any word, name, symbol, or device, or any Any word, name, symbol, or device, or any combination, used, or intended to be used, in combination, used, or intended to be used, in commerce to identify and distinguish the commerce to identify and distinguish the goods or goods or

i i services services

ProtectsProtects: : All of the above & logo, banner, sound, smell, etc.All of the above & logo, banner, sound, smell, etc.g , , , ,g , , , ,

DurationDuration: : 1010--year terms with 10year terms with 10--year renewal termsyear renewal terms

®®

®®®®

Trademark Registration #Trademark Registration #: GE: GE: 3386370,: 3386370, Kellogg’sKellogg’s : 3445274, : 3445274, LGLG: 3250589, : 3250589, FedExFedEx: 3413407, : 3413407, StarbucksStarbucks: 3428128, : 3428128, IBMIBM: 3002164: 3002164

®®®®

Trade SecretsTrade Secrets

DefinitionDefinition: : Any information that provides economic value Any information that provides economic value that is not in the public domain and that has that is not in the public domain and that has been been

reasonably kept secretreasonably kept secrety py p

ProtectsProtects: : Formulas, patterns, compilations, programs, Formulas, patterns, compilations, programs, devices methods techniques or processesdevices methods techniques or processesdevices, methods, techniques or processesdevices, methods, techniques or processes

DurationDuration: : As long as they remain secret As long as they remain secret g yg y

Trademark Registration #Trademark Registration #: Coca Cola: Coca Cola: 3252896,: 3252896, KFCKFC: 2800403: 2800403

Wh t i t t?Wh t i t t?What is a patent?What is a patent? A patent is a property right granted by the

Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling g, g, g , gthe invention throughout the United States or importing the invention into the United p gStates” for a limited time in exchange for public disclosure of the invention when the ppatent is granted.

Wh t b t t d?Wh t b t t d?What can be patented?What can be patented?

Utility patents are provided for a new, nonobvious and useful:y

Process

Machine

Article of manufacture

Composition of matter

Improvement of any of the above

Invention must also be:Invention must also be:

Novel

N b i Nonobvious

Adequately described or enabled (for one of q y (ordinary skill in the art to make and use the invention) )

Claimed by the inventor in clear and definite terms terms

U S Patent No 8 067 430 B1U S Patent No 8 067 430 B1U.S. Patent No. 8,067,430 B1U.S. Patent No. 8,067,430 B1

U S Patent No 6 319 497 B1U S Patent No 6 319 497 B1U.S. Patent No. 6,319,497 B1U.S. Patent No. 6,319,497 B1

Patent Applications Filed at the USPTOPatent Applications Filed at the USPTOPatent Applications Filed at the USPTOPatent Applications Filed at the USPTO

Over 457,000 Utility patent applications filed in FY 2010.

Over 13 million Utility patent applications filed to date.

Over 219,614 Utility patents issued in FY 2010.

Ei ht illi t t i d Eight million patents issued.

Over Six thousand eight hundred Patent Examiners

USPTO Organization StructureUSPTO Organization Structuregg

Office of the Commissioner for PatentsOffice of the Commissioner for PatentsOffice of the Commissioner for PatentsOffice of the Commissioner for Patents

•• Office of the Deputy CommissionerOffice of the Deputy Commissioner•• Office of Patent Examination PolicyOffice of Patent Examination PolicyOffice of Patent Examination PolicyOffice of Patent Examination Policy•• Office of Patent Resources and PlanningOffice of Patent Resources and Planning•• Office of Patent Information ManagementOffice of Patent Information ManagementOffice of Patent Information ManagementOffice of Patent Information Management•• Office of Innovation DevelopmentOffice of Innovation Development

United States Patent and Trademark United States Patent and Trademark Office Technology CentersOffice Technology Centers

The Deputy Commissioner for Patents oversees all patent examining functions in the oversees all patent examining functions in the nine Patent Technology Centers. Patent Operations provides administrative oversight Operations provides administrative oversight to and coordinates the activities of Technology Centers 1600 1700 2100 2400 Technology Centers 1600, 1700, 2100, 2400, 2600, 2800, 2900, 3600, and 3700.

United States Patent and Trademark United States Patent and Trademark Office Technology CentersOffice Technology Centers

Technology Center 1600: Biotechnology and Organic Chemistry Technology Center 1600: Biotechnology and Organic Chemistry.

Technology Center 1700: Chemical and Materials Engineering.

Technology Center 2100: Computer Architecture Software and Information Security.gy y

Technology Center 2400: Computer Networks, Multiplex, Cable and Cryptography/Security.

Technology Center 2600: Communications Technology Center 2600: Communications.

Technology Center 2800: Semiconductors, Electrical and Optical Systems and Components.

Technology Center 2900: Designs.

Technology Center 3600: Transportation, Electronic Commerce, Construction, Agriculture, Licensing and Review.

Technology Center 3700: Mechanical Engineering, Manufacturing and Products.

United States Patent and Trademark Office United States Patent and Trademark Office TC 1600 Organizational ChartTC 1600 Organizational ChartTC 1600 Organizational ChartTC 1600 Organizational Chart

TC 1600TC 1600

Three Group DIRECTORSThree Group DIRECTORS

TQAS TQAS RQASRQASWork GroupsWork Groups

1620162016101610 16301630 16401640 16501650 166016601620162016101610 16301630 16401640 16501650 16601660

EIGHT Art UnitsEIGHT Art Units NINE Art UnitsNINE Art Units EIGHT Art UnitsEIGHT Art Units NINE Art UnitsNINE Art Units SEVEN Art UnitsSEVEN Art Units ONE Art UnitONE Art Unit

EACH ART UNIT HAS AN AVERAGE OF 12 TO 18 EXAMINERS AND IS HEADED BY A SUPERVISORY PATENT EXAMINEREACH ART UNIT HAS AN AVERAGE OF 12 TO 18 EXAMINERS AND IS HEADED BY A SUPERVISORY PATENT EXAMINER

TECHNOLOGY EXAMINED BY TC 1600TECHNOLOGY EXAMINED BY TC 1600

Work Group 1610Work Group 1610 Vitamin D, Herbicides, Pesticides, Cosmetics, Steroids, Drugs and BioVitamin D, Herbicides, Pesticides, Cosmetics, Steroids, Drugs and Bio--affecting affecting and Body Treating Compositionsand Body Treating Compositions

Work Group 1620Work Group 1620 Organic ChemistryOrganic Chemistry, , Heterocyclic Compounds and UsesHeterocyclic Compounds and Useso G oup 6 0o G oup 6 0 O ga c C e st yO ga c C e st y,, ete ocyc c Co pou ds a d Usesete ocyc c Co pou ds a d Uses

Work Group 1630Work Group 1630

Animals, Animal Cloning, Gene Therapy, Adult and Embryonic Stem Cells,Animals, Animal Cloning, Gene Therapy, Adult and Embryonic Stem Cells,Bioinformatics, NanoBioinformatics, Nano--particles for delivery of bioactive agents including nucleic acids DNA particles for delivery of bioactive agents including nucleic acids DNA Vaccine, Nucleic Acid Hybridization, Probes, SNPs, Genotyping, AntisenseVaccine, Nucleic Acid Hybridization, Probes, SNPs, Genotyping, Antisense--related Nucleic related Nucleic Acid Compositions and Methods Gene ExpressionAcid Compositions and Methods Gene Expression, , Nucleic Acid Amplification, Primers, Nucleic Acid Amplification, Primers, Genotyping Haplo typingGenotyping Haplo typing Combinatorial/ Computational ChemistryCombinatorial/ Computational Chemistry Transgenic PlantsTransgenic PlantsGenotyping, Haplo typingGenotyping, Haplo typing, , Combinatorial/ Computational ChemistryCombinatorial/ Computational Chemistry, , Transgenic PlantsTransgenic Plants

Work Group 1640Work Group 1640Specific Binding Assays and Apparatus,Specific Binding Assays and Apparatus, Antibody Engineering and Cancer, Antibody Engineering and Cancer, ImmunologyImmunology *Bacterial & Parasitic Immunology and Specific Binding Assays*Bacterial & Parasitic Immunology and Specific Binding Assays Cellular Cellular ImmunologyImmunology Receptors, Cytokines & Recombinant Hormones, Receptors, Cytokines & Recombinant Hormones, Viral Immunology, Viral Immunology, Neurobiology and NeuroimmunologyNeurobiology and Neuroimmunology

Work Group 1650Work Group 1650

Fermentation and MicrobiologyFermentation and Microbiology Recombinant EnzymesRecombinant Enzymes Recombinant ProteinsRecombinant Proteins Peptides, Peptides, proteins, methods of treatment, enzymes, enzyme assays, Protein crystallography proteins, methods of treatment, enzymes, enzyme assays, Protein crystallography cases related to any proteincases related to any protein BioBio--acting plant extracts, and cell assays acting plant extracts, and cell assays

1818

cases related to any proteincases related to any protein BioBio acting plant extracts, and cell assays acting plant extracts, and cell assays

Work Group 1660Work Group 1660 PlantsPlants

The Patent Application The Patent Application ProcessProcess

Patent Application Patent Application PPProcessProcess

PG Pubs

Office of Initial Patent

Examination (OIPE)

Examination

1. 2nd FormalitiesR i

Post Examination (Publications)

PatentPatent

or PG Pub

1. Collect Fees

2. Scanning-ConvertAll Paper to Image

3. Initialization-AssignSerial Numbers

Review

2. Patentability?

▪ Patentable SubjectMatter?

1. 3rd FormalitiesCheck

2. Collect Issue Fee

Application 400,000+/yr

4. Formalities ReviewSpecification?Claims?Oath/Declarations?Drawings? (Optional)

5 Assign Filing Date

Matter?

▪ Utility?

▪ Clearly Described?

▪ Enabled?

3. Convert Image to Text

4 A i P t t5. Assign Filing Date

6. Assign Class, Art Unit

▪ Claims Definite?

▪ Novel?

▪ Non-obvious?

4. Assign Patent Number

Abandonment Abandonment Abandonment

The The Patent Patent

The The Patent Patent Classification

Examination Processing

Examination Processing

Post-Examination Processing

Post-Examination Processing

ate tate tProcessProcess

ate tate tProcessProcess

Classification determines home for

examination

Initial Review

Notice of Allowance Sent

Applicant Response

Applicant Response

Issue Fee PaidPre-

Examination Processing

Pre-Examination Processing

First ActionAllowance

Rejection

Application undergoes Pre-Exam

Processing in OPAP Second Action

Applicant Response

Rejection (May be Final)

Allowance

Applicant Response

Advisory Action Patent Printed

and Issued

Allowance

Allowance

Abandonments

Applicant Appeal Brief

Examiner’s AnswerExaminer

and IssuedAllowance

ExaminerBoard of Patent Appeals

and Interferences

Examiner

Courts

P t t E i tiP t t E i tiPatent ExaminationPatent Examination PATENT EXAMINATION READ AND UNDERSTAND SPECIFICATION DETERMINE WHETHER SPEC IS ADEQUATE DETERMINE WHETHER SPEC IS ADEQUATE DETERMINE SCOPE OF THE CLAIM SEARCH EXISTING TECHNOLOGY FOR CLAIMED INVENTION DETERMINE PATENTABILITY WRITE/MAIL A LEGAL OFFICE ACTION ON THE PATENTABILITY RESPOND TO APPLICANTS RESPONSE RESPOND TO APPLICANTS RESPONSE ISSUE PATENT OR ABANDONMENT

An Examiner’s Tools of the An Examiner’s Tools of the An Examiner s Tools of the An Examiner s Tools of the TradeTrade

Examiners’ Electronic Examiners’ Electronic W ldW ldWorldWorld

PALM – Patent Application Locating and Monitoring EAST – Examiner Automated Search Tool WEST – Web-based Examiner Search Tool OACS – Office Action Correspondence Subsystem (eRed

folder) IFW – Image File Wrapper IFW Image File Wrapper eDAN – electronic Desktop Application Navigator MADRAS MADRAS

USPTO Training AcademyUSPTO Training AcademyN E i 4N E i 4 M th T i i PM th T i i PNew Examiner 4New Examiner 4--Month Training ProgramMonth Training Program

Course Curriculum OverviewCourse Curriculum Overview

Training Academy OverviewTraining Academy OverviewTraining Academy OverviewTraining Academy OverviewNew training program established January 23, 2006:

■ Integrate more new examiners into the examining corp than ever before■ Improve the quality of our products and services■ Improve the quality of our products and services■ Reduce the training burden faced by the management staff in the Technology Centers■ Graduate new hire examiners with the ability to work with reduced oversight

Program Structure:■ Comprehensive 4-month training program ■ 128 new examiners assigned to each Class■ Each Class consists of 8 labs with up to 16 students in each■ Labs are lead by a Supervisory Patent Examiner (SPE)/Trainer■ Examiner Training Assistants are integrated into the labs as new examiners begin

working on “live” cases between the 8th and 10th weeksworking on live cases between the 8 and 10 weeks

Course CurriculumCourse Curriculum OverviewOverview

Four Track Program

■ Patent Examination Practice and Procedure

■ Automation Skills ■ Automation Skills

■ Technical Skills Developmentp

■ Professional and Soft Skills Development

Overview of Website Overview of Website --InventorsInventors

•• Helpful links for inventorsHelpful links for inventors

Click onClick on

Helpful links for inventorsHelpful links for inventors-- General InformationGeneral Information

-- Introductory GuidesIntroductory Guides

FAQFAQ

“Inventors”“Inventors”-- FAQsFAQs

-- Upcoming EventsUpcoming Events

-- Registered Attorneys & Complaints AgainstRegistered Attorneys & Complaints Against

-- Inventors Assistance CenterInventors Assistance Center

-- and much more…and much more…

Overview of Website Overview of Website --PatentsPatents

Overview of Website Overview of Website -- CareersCareersOverview of Website Overview of Website CareersCareers

Inventor CommunityInventor Community

Individual inventor University Small Business/Small Medium Enterprise

(SME) Corporationp Non-profit

University OutreachUniversity Outreach

Campus visits IP presentationsp Individual Q&A Technology Transfer discussions

Electronic Media

Virtual visitsVideo teleconference format

IP Awareness to Protect Valuable Valuable Assets

P i t i f d id b i P i t i f d id b i

Valuable Valuable Assets

Purpose is to inform and guide business ownersPurpose is to inform and guide business owners The Assessment of intellectual property asset awareness tool The Assessment of intellectual property asset awareness tool

ididprovides:provides:–– A customized determination of what specific IP areas A customized determination of what specific IP areas

would be of value to the business owner to know more would be of value to the business owner to know more aboutaboutaboutabout

–– Handy information on Patents, Trademark, Copyright, Handy information on Patents, Trademark, Copyright, Trade Secrets and IP management best practices Trade Secrets and IP management best practices

D i d ifi ll f ll d di i d t iD i d ifi ll f ll d di i d t i Designed specifically for small and medium sized enterprisesDesigned specifically for small and medium sized enterprises Sensitive to their time constraints and needsSensitive to their time constraints and needs Helpful to new entrepreneurs as well as established firmsHelpful to new entrepreneurs as well as established firms

IP Awareness AssessmentIP Awareness Assessment

PrePre Assessment to determine potential IP assets of a Assessment to determine potential IP assets of a PrePre--Assessment to determine potential IP assets of a Assessment to determine potential IP assets of a business/inventor and take a customized assessment ; orbusiness/inventor and take a customized assessment ; or

Alternatively, take full assessment.Alternatively, take full assessment.First question in a category determines relevancy of the First question in a category determines relevancy of the q g y yq g y ycategory. category.

U ki t t t if i di t U ki t t t if i di t User skips to next category if response indicates User skips to next category if response indicates awareness of the information. awareness of the information.

IP Awareness AssessmentIP Awareness Assessment

Assessment of intellectual property asset awareness Ten Categories and sixty one questions to cover Ten Categories and sixty one questions to cover

various aspects of IP

Based on user input provides: Basic information in Patents Trademark Copyright Basic information in Patents, Trademark, Copyright,

Trade Secrets and IP management best practices

IP Awareness AssessmentIP Awareness Assessment

Assessing IP Awareness in 10 Categories:Assessing IP Awareness in 10 Categories:••IP StrategiesIP Strategies••TrademarksTrademarksTrademarksTrademarks••CopyrightsCopyrights••Design PatentsDesign Patents••Trade SecretsTrade SecretsTrade SecretsTrade Secrets••Utility PatentsUtility Patents••Using Technology of Others Using Technology of Others ••Licensing Technology of OthersLicensing Technology of OthersLicensing Technology of OthersLicensing Technology of Others••International IP RightsInternational IP Rights••IP Asset TrackingIP Asset Tracking

IP Awareness AssessmentIP Awareness Assessment

Each category designed to discover overall IP awareness

First question in category determines relevancy and if additional info needed

User skips to next category if response indicates Use s ps to e t catego y espo se d catesawareness of the information

Categories need to be completed in the order listed

Option to go back to the previous category

Customized training based on user input

IP Awareness Assessment

IP Awareness AssessmentIP Awareness Assessment

IP Awareness Assessment

IP Awareness AssessmentIP Awareness Assessment

IP Awareness Assessment-f t d tfuture updates

Incorporate user input from beta test Additional Questions ? Additional Questions ? Option to take assessment in multiple sessions Training modules to target specific IP topics Training modules to target specific IP topics Based on user input customized determination of

which specific IP areas require support Provide customized training in these areas

Thank you!Thank you!