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What To Expect When Filing An Application:
The Patent Examination Process
Mindy Bickel Associate Commissioner Office of Innovation Development United States Patent and Trademark Office
Common Misunderstandings Pro se applicants: • Are not always aware of what protection a
patent gives them • Are not always aware of what the
difference between a provisional and a non-provisional application is
• Often lack the necessary knowledge to draft their own patent applications (format, forms, fees, prior art, search, etc.)
Common Misunderstandings Pro se applicants: • Are unfamiliar with prior art and the terminology
used in Office Actions • Frequently fail to respond in writing in a timely
manner or with the necessary fees • Frequently fail to ask for help!
What does patent protection give you?
A Property Right • Right to exclude others from making, using,
selling, offering for sale, or importing the claimed invention
• Limited term • Territorial: protection only in territory that granted
patent; NO world-wide patent
Utility Patents v. Design Patents Utility Patents (35 U.S.C. § 101) • Protects the way an article is used and works
Design Patents (35 U.S.C. § 171) • Protects the way an article looks • No provisional application or maintenance fees
Can obtain both a design and utility patent • If invention resides both in the article’s utility and
ornamental appearance
Why get a Patent? A patent can be: • Used to gain entry into and/or deter others from a
market • Used as a marketing tool to promote unique aspects of
a product • Assert/enforce rights against an infringer or competitor • Used as collateral to obtain funding • Create revenue – sell or license like other property
Why do ‘savvy’ startups file Patent Applications?
• Attractive to investors and buyers • Deter patent infringement lawsuits • Can increase leveraging power
– i.e. mergers and acquisitions • Patents are a form of property that can
add value to a company’s assets
Provisional vs. Non-provisional Provisional Non-provisional
• Not examined or published • One-year time limit • Only for utility patents • A low-cost way to establish an
early effective filing date (priority date) in a non-provisional patent application with few formalities
• Examined • Published 18 months from
earliest filing date (unless a request for a non-publication at filing)
• Can become a patent
Parts, Form, and Content Arrangement of Application
• Title • Cross-Reference to Related Applications • Statement Regarding Federally Sponsored Research or
Development • Background of the Invention • Brief Summary of the Invention • Brief Description of the Drawings • Detailed Description the Invention • Claims • Abstract • Drawings • Sequence or Computer Program Listings
Parts, Form, and Content Claims
• Must commence on a separate sheet • Must particularly point out distinctly claim the subject matter
which applicant regards as their invention or discovery • Every claim needs a preamble and a transition:
– i.e. “A headgear apparatus, comprising:…” • Must conform to the invention as set forth in the specification;
there must be antecedence of the terms and phrases found in the written description for the claims and within the claims
• The claims shall be numbered consecutively and the original numbering of the claims must be preserved throughout prosecution
Patent Examination • Patent Examiner reviews contents of
the application for compliance with all U.S. patent legal requirements
• Burden is on the examiner: An applicant is entitled to a patent unless… – Requirements of U.S. patent law are not met
Role of a U.S. Patent Examiner • Reads and understands invention • Determines whether the application is adequate to
define the metes and bounds of the claimed invention
• Determines the scope of the claims • Searches existing technology for claimed
invention • Determines patentability of claimed invention • Writes opinion – called an Office Action that
notifies applicant of the examiner’s patentability determination
Examination Process First Examination
Second Examination
Amendment
Appeal Process Appeal Brief Appeal Process
Please note that a negative opinion by the examiner may be correct. In those instances, a patent will not be granted.
Rejection Allowance
Applicant Response Amendment • Non-final
– Right of entry • Final
– No right of entry • Requirements
– Answer all formal objections and rejections • Amendment or argument or both • Replacement paragraph, claims, or drawing following rules • For more information on submitting a proper amendment, visit http://
www.uspto.gov/patent/laws-and-regulations/final-rule-37-cfr-1121-revised-amendment-practice-more-information
Helpful Hint: Have an Interview
Interview • Pro Se
– In person, over the phone, or via WebEx • Attorney/Agent
– In person, over the phone, or via WebEx – Inventor cannot have an interview without their
attorney or agent present
Allowance and Issue • Fees
– No extension of time permitted – Check the current fee schedule at: http://
www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule
• Amendments after allowance – Minor corrections, drawings, formal matters
• Corrections – Inventorship, misspelled words
• Time to publish the patent
After Patent Grant • Protection begins
– Utility patent: 20 years from the date of filing – Design patent: 15 years from the date of issue
• Maintenance fees – Due at 3.5, 7.5, and 11.5 years
• Correction – Certificate of Correction
Features of the website • Apply online for a patent using EFS-Web • Obtain status of a patent application • Determine when an application will be picked up for examination
(First Office Action Estimator) • Access details of all currently pending published patent applications
(Public PAIR) • Search US patent database • Search patent classification • Download forms and fee schedules • Information about Pro Se and Pro Bono programs • Inventors Assistance Center (AIC), Patents Ombudsman Program,
scam prevention, IP Awareness Assessment Tool
Inventor & Entrepreneurs Resources • Wide variety of resources to
help Independent Inventors and Entrepreneurs
• Pro Se, Pro Bono, Education & Information, Current Events, State Resources, and more
• http://www.uspto.gov/learning-and-resources/inventors-entrepreneurs-resources
Pro Bono Program In general there are 3 basic requirements: • Income below a certain threshold • Knowledge of the patent system • Possession of an actual invention
(not just an idea)
More information can be found at: • http://www.uspto.gov/patents-
getting-started/using-legal-services/pro-bono/patent-pro-bono-program
Pro Se Assistance Program The Pro Se Assistance Program offers various services to the public, including: • Dedicated personnel for assisting Pro Se Applicants • Walk-in assistance for the general public at USPTO
headquarters in Alexandria, VA • Targeted support to connect applicants with relevant resources
and information • Online resources
More information can be found at: • http://www.uspto.gov/patents-getting-started/using-legal-
services/pro-se-assistance-program
Basic Fees • Utility (Large Entity / Small Entity / Micro Entity)
– Basic filing fee: $280 / $140 / $70 – Search fee: $600 / $300 / $150 – Examination fee: $720 / $360 / $180 – Issue fee: $960 / $480 / $240 – Non-electronic filing fee: $400 / $200 / $200
• Design (Large Entity / Small Entity / Micro Entity) – Basic filing fee: $180 / $90 / $45 – Search fee: $120 / $60 / $30 – Examination fee: $460 / $230 / $115 – Issue fee: $560 /$ 280 / $140
Micro Entity (75% reduction in most fees) The AIA defines a micro entity as an applicant who certifies that he/she: 1. Qualifies as a small entity 2. Has not been named as an inventor on more than 4
previously filed patent applications 3. Did not, in the calendar year preceding the calendar year in
which the applicable fee is paid, have a gross income exceeding 3 times the median household income
4. Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income.
• Process designed for issues that arise during patent application prosecution; used to get an application “back on track”
• More information can be found at: http://www.uspto.gov/patent/ombudsman-program
“This program brings a voice to the inventor that he normally would not have…THANK YOU!!!!!”
Contacts for Direct Help • Pro Se Assistance Program
! 1-866-767-3848 ! [email protected]
• Inventors Assistance Center (IAC) ! 571-272-1000 or 1-800-786-9199 ! Monday – Friday, 8:30 AM – 8:00 PM (ET)
• Patent Ombudsman ! 571-272-5555 ! [email protected]
Thank You! Mindy Bickel Associate Commissioner Office of Innovation Development United States Patent and Trademark Office
[email protected] www.uspto.gov