Introduction to Patent Protection


Published on Jun 26, 2018

An introduction to what a patent is, what a patent protects, and how a patent is obtained in the United States.



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Hello, my name is Elizabeth Shaw, and I am
the International Relations Advisor in the

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Office of Policy and International Affairs
at the United States Patent and Trademark

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Office.

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Today, I will be introducing you to patents
– what a patent is, what a patent protects,

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and how a patent is obtained in the United
States.

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The details surrounding these topics are included
in the laws and regulations of the United

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States including the most recent changes in
U.S. patent law enacted under the Leahy-Smith

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America Invents Act of 2011, or the AIA, and
in the Manual of Patent Examining Procedure,

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or the MPEP.

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My goal today is to give you useful facts
that will enable you to understand the basics

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of patents and how inventions are protected
in the United States and not to get too far

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off into the complexities of patent law and
patent examination practice.

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At the end of this presentation, I will provide
links to web sites and web pages where you

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can explore in detail the intricate laws,
regulations, and examination guidelines for

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patents in the United States.

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In addition, the USPTO offers a variety of
assistance to independent inventors and to

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small and medium size businesses.

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A link to those resources will also be found
at the end of this presentation.

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Patented technology today is everywhere: from
our smart phones and electronic tablets; to

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our medicine cabinets at home; to the cars
we drive; and in how I am reaching you today

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with this presentation.

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Patents encourage innovation by incentivizing
the creation of new products and services

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that can greatly enrich the quality of our
lives.

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Obtaining a patent in the United States and
in most countries can be a complex process

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involving laws and regulations that outline
the various requirements and conditions that

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need to be met.

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For today, I want you to become familiar with
3 important aspects of the patenting procedure.

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We will accomplish this by answering three
questions.

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Question One – what is a patent?

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Here we will look at the history of patents
in the United States and define what a patent

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is.

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Question Two – what does a patent protect?

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To answer this question, we will explore what
kinds of inventions are eligible for a patent.

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And Question Three – what is required to
get patent protection?

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We will answer this question in 2 parts – first
by identifying conditions that an invention

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must meet to be patentable and second by exploring
the patent examination process.

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Because patents laws are complex and patents
can be very valuable, we usually recommend

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that inventors who are unfamiliar with the
patent system seek the assistance of a patent

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attorney or agent.

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The patent system was provided for during
the founding of the United States and is included

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in the U.S. Constitution, Article 1, Section
8, Clause 8 where the founders of the United

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States granted “Congress the power to create
a patent system that would promote the progress

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of science and the useful arts, by securing
for limited times to authors and inventors

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the exclusive right to their respective writings
and discoveries.”

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This clause is also the source for the U.S.
copyright system, and today we understand

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the term “useful arts” as referring to
technology.

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Why do we have patents?

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Are patents beneficial to the United States?

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Yes, they are.

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They encourage investment in new technologies,
allowing not only the creation of these new

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technologies, but also the resources to bring
them to the marketplace which brings them

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to individuals like you and me.

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Abraham Lincoln, our 16th president and the
only president to ever receive a patent, famously

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said in a speech in 1858 that the “patent
system … added the fuel of interest to the

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fire of genius, in the discovery and production
of new and useful things.”

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Here we are at our first question - what is
a patent?

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In the United States, a patent is a property
right granted by the United States government

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to an inventor.

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This property right grants to the inventor
the right, for a limited time, to exclude

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others from making, using, selling, or offering
for sale the invention throughout the United

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States, or from importing the invention into
the United States.

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The patent is granted in exchange of the inventor
fully disclosing the invention to the public,

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where it otherwise might have remained unknown.

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This disclosure is important because it promotes
follow-on innovation.

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A patent is also territorial meaning that
it is only enforceable in the territory or

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country where it was obtained.

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So, a patent granted in the United States
can only be protected in the United States.

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And, the U.S. patent right is a private right.

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That means the patent holder is tasked with
protecting and enforcing the patented invention

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– the U.S. government cannot do it for you.

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There are 3 types of U.S. patents and they
are: a utility patent; a design patent; and

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a plant patent.

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Utility patents, the most common type of patent
sought by inventors, are awarded to useful

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inventions, and they have a 20 year term from
the date of filing.

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The first utility patent in the United States
was issued on July 31, 1790, to Samuel Hopkins

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of Philadelphia, Pennsylvania for an improvement
in “the making of pot ash and pearl ash

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by a new apparatus and process.”

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In 1790, patents were granted by members of
the Patent Board which included Thomas Jefferson

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who was then Secretary of State and considered
to be the first administrator of the American

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patent system and the first patent examiner.

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The original paper patent grant to Samuel
Hopkins, which was signed by the first U.S.

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President, George Washington, is still in
existence today in the collections of the

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Chicago Historical Society.

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Here we have an example of a utility patent
– an underwater dolly with propellers that

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make it easier for a camera operator to maneuver
in water.

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It was invented by filmmaker and inventor,
James Cameron.

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He created this for his brother Michael to
film underwater scenes for the movie “The

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Abyss, “ and this underwater dolly was patented
in 1989.

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While a utility patent represents the functional
aspects of an invention, a design patent covers

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the ornamental design or the shape for an
article of manufacture.

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Increasingly, businesses are becoming more
aware of design patents in providing them

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with a competitive edge to protect their product
designs.

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This example of a design patent shows a drawing
from 1931 of an early Minnie Mouse.

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Walt Disney received his design patent for
Mickey Mouse a year earlier in 1930.

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The third type of United States patent is
the plant patent.

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Some may ask why plant varieties should be
protected.

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After all, plant varieties are products of
nature and should be freely accessible to

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everyone.

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What this opinion overlooks is that a plant
breeder who develops a new variety that may

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be disease resistant, drought resistant, cold
tolerant, or simply aesthetically more pleasing,

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is no less an inventor than someone who improves
an automobile engine or develops a new pharmaceutical.

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The only difference is that the medium with
which the plant breeder works is living material

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rather than inanimate matter.

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Here is an example of a plant patent - for
a Hydrangea plant named Limelight which has

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become a popular landscape plant used across
North America.

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The football-shaped flowers look fresh and
clean in summer’s heat, and Limelight blooms

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even in cold climates.

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Next we’ll take a look at what is patent
eligible.

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This will help to answer our second question
– what does a patent protect?

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In 1980, the United States Supreme Court answered
the question, “what is patent eligible,”

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in the landmark decision of Diamond versus
Chakrabarty, which involved the patenting

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of life forms.

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In this case, the Supreme Court stated that
Congress’ intention was that patent eligible

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subject matter included “anything under
the sun that is made by man…”

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Now, does this literally mean anything made
by humans is eligible for a patent?

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The answer to that question is “no.”

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To be patent eligible, an invention must fall
into one of the following 4 categories.

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An invention must be a process, machine, manufacture,
or composition of matter OR the invention

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must be an improvement of one of these 4 categories.

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Even if an invention falls within one of the
4 previous identified statutory, or lawful,

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categories of invention, it may still not
be patent eligible if it also falls into one

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of these three judicially-created, or court-created,
exceptions to patentability.

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These exceptions include: laws of nature (for
instance, Newton’s law of motion); natural

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phenomena (that would be such things as wind,
sunrise, germination, erosion, or gravity)

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and abstract ideas (for instance, a mental
process – such as adding up numbers in your

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head).

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More examples of inventions not eligible for
patent protection in the United States include:

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mathematical algorithms; computer software
code per se; and a newly discovered mineral

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as it exists in nature.

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You can find more information on patent eligibility
in Chapter 2100 of the Manual of Patent Examining

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Procedure or MPEP.

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The MPEP is published by the USPTO and provides
patent examiners, applicants, attorneys, and

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agents with a reference work on the practices
and procedures relative to the prosecution

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of patent applications before the USPTO.

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It contains instructions to examiners and
outlines the current procedures which a patent

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examiner is required to follow in the normal
examination of a patent application.

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You will find a link to the MPEP at the end
of this presentation.

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Earlier, we learned that the United States
Constitution provides for rights to inventors

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for “limited times.”

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What are the time limits for a U.S. patent?

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How long does an inventor have the benefit
of a patent?

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For utility patents filed after June 8, 1995,
the patent term is generally 20 years from

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the date the patent application was filed
at the USPTO, and once issued, utility patents

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have maintenance fees that are due during
the 20-year patent term at 3.5 years, 7.5

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years, and 11.5 years.

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If the maintenance fees are not paid, the
patent can be abandoned and the inventor can

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lose his or her patent rights.

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Plant patents also have a term of 20 years
from the date of filing but have no maintenance

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fees.

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A design patent term lasts 15 years from the
date of issue and also have no maintenance

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fees.

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Now that we know what is eligible for patent
protection, or what kinds of inventions a

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patent might protect here in the United States,
let’s start to answer our third question

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– What is required to get a patent?

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As I said earlier, we will answer this question
in 2 parts.

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The first part is to identify the conditions
of patentability or what is required of an

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invention for it to be patentable.

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Does the invention have utility?

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Is the invention new or novel?

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Is it non-obvious to a person having ordinary
skill in the art (or technology)?

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And has specific disclosure of the invention
utilizing certain requirements been made in

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the patent application?

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We will now look at these conditions of patentability
one at a time.

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First, let’s look at utility.

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An invention submitted for a patent in the
United States must be useful – it must have

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some function, and it must perform as described
in the patent application.

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Under U.S. law, the invention must have specific
utility, substantial utility, and credible

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utility.

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These determinations are made by a patent
examiner who is highly skilled in the subject

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matter of the claimed invention.

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The USPTO has issued guidelines to assist
both patent examiners and the public is assessing

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whether an invention has utility that complies
with the law.

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These guidelines are available in Chapter
2107 of the MPEP.

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We have also referenced the pertinent law
where patent utility is discussed, 35 U.S.C.

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(or United States Code) section 101, and you
will find a link to that section of laws and

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the MPEP at the end of this presentation.

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Now, before moving on to novelty and non-obviousness,
we need to talk about prior art.

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To determine if an invention is novel (or
new) and non-obvious, a comparison of the

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claimed invention with the prior art is required.

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So what is prior art?

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Prior art is the state of the art (or the
technology) prior to the filing date of a

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patent application.

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It is used to determine whether an invention
is patentable or not and consists of the body

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of published information or prior existing
disclosures of the relevant field of technology

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claimed in a patent application made anywhere
in the world.

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If an inventor discloses his or her invention
before filing a patent application for that

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invention, the inventor may lose out on getting
a patent.

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Disclosure of an invention can be made in
many different ways – for instance: sale

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of the invention; exhibiting the invention
at a trade show; or an oral disclosure made

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anywhere in the world such as discussing an
invention in a paper presented at a conference.

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However, in the United States, the law provides
for a 12 month grace period.

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This means that certain disclosures by the
inventor, or others who derived their disclosure

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from the inventor, may not be used as prior
art if that disclosure occurred within 12

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months prior to the effective filing date
of the patent application.

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You should also be aware that in some countries
there is no grace period or a more limited

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grace period.

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Remember: disclosure of the invention outside
of the 12 month grace period is considered

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prior art, and a patent will not be granted.

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Next, we will look at the novelty requirement
which can be found in the U.S. law at 35 U.S.C.

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section 102.

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To be novel, an invention must not be disclosed
in the prior art.

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When comparing the claimed invention to the
existing prior art to determine novelty, we

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determine whether a disclosure of the identical
invention has been made in writing or through

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another type of disclosure such as oral disclosure,
public use, or sale.

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However, as I pointed out before, if disclosure
occurred during the 12 month grace period

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prior to filing the patent application, it
may not be considered prior art and will not

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affect the novelty of the invention if the
disclosure was by the inventor or by others

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who derived their disclosure from the inventor.

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Now - even if disclosure of the identical
invention is not shown in the prior art, patentability

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requirements also state the invention must
not be obvious in view of the prior art.

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What is non-obviousness?

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Again, we are comparing the claimed invention
against the existing prior art.

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The question being asked for non-obviousness
is whether or not the invention would have

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been obvious to a person having ordinary,
or an average level of skill, in the art in

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the field of the invention.

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In addition, the patent law requires that
the assessment be “at the time the invention

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was made.”

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This requirement means that patent examiners
must be historical detectives, piecing together

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what was known at the time the invention was
made.

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The law also states that patentability will
not be denied by the manner in which the invention

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was made.

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That means that the assessment of obviousness
does not depend on whether the invention took

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10,000 hours to develop through trial and
error, or was developed relatively quickly,

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as a result of a flash of genius!

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The key is whether the differences between
the claimed invention and the prior art are

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non-obvious, even if the invention is not
identically disclosed and considered novel.

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We learned earlier that a patent grants an
inventor certain rights to their invention

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– and for a limited time the right to exclude
others from making, using, selling, or offering

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for sale the invention throughout the United
States, or importing the invention into the

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United States.

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In exchange for a patent, the inventor is
required to make sure that the claimed invention

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is communicated (or disclosed) to the public
in a meaningful way.

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A patent application is required to have specific
information as to ensure that anyone skilled

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in the art (or technology of the invention)
is able to make and use the invention.

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In the disclosure, the specific information
of the manner and process of making and using

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the invention must be in full, clear, concise,
and exact terms so that anyone skilled in

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the art of the claimed invention can make
it and use it on their own.

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That is, the disclosure must be an enabling
and clear disclosure.

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More information on these requirements of
written description and enablement can be

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found in 35 U.S.C. section 112 and in the
MPEP.

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We have now reviewed many of the critical
statutory requirements that must be met to

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receive a patent grant in the United States.

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Now let’s look at how a patent application
processes through the USPTO.

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Patent examination is a process by which a
patent examiner reviews the contents of a

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patent application for compliance with U.S.
legal requirements.

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These are the requirements that we have talked
about earlier in the presentation.

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After a thorough examination of the application,
the patent examiner comes to a conclusion

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as to the invention’s patentability and
decides whether to grant or reject the patent

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application.

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All patent examiners at the USPTO have at
least a bachelor’s degree relative to the

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subject matter applications that they will
be assigned to examine, though many have graduate

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degrees as well.

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For example, USPTO patent examiners have degrees
in; engineering including electronical, mechanical,

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and chemical; biology and microbiology; physics;
and design examiners may have degrees in architecture,

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applied arts, or graphics.

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Every new examiner receives both on-the-job
and formal training which cover all aspects

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of basic and advanced examining functions
and corresponding legal concepts.

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And the burden lies first with the patent
examiner to prove that the claimed invention

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fails to comply with one or more of the patentability
requirements.

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The first step is to file an application for
a patent, and I want to point out one of the

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most important changes that the America Invents
Act made to the U.S. patent system.

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That is, the United States switched from being
a “first-to-invent” system to a “first-

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inventor- to-file” system.

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Changing to first inventor to file brought
the United States in line with other countries’

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laws and brought more certainty to the U.S.
patent process.

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All patent applications filed in the United
States after March 16, 2013, are filed under

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the first inventor to file rules.

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A patent application may be filed either electronically
or in paper form.

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But, be aware that the America Invents Act
provides for an additional fee for filings

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made by non-electronic means.

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The USPTO has a series of informational videos
specifically on first inventor to file changes,

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and these videos, along with others relative
to the America Invents Act, can be found on

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our web site at www.uspto.gov.

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I have also provided the link to the web page
with AIA informational videos at the end of

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this presentation.

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Here are the requirements for a utility patent
application – it must include a written

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description or specification of the invention
(we talked about that requirement earlier),

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at least one claim, drawings if necessary
to understand the invention, an oath or declaration

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stating among other things that the inventor
or inventors truly came up with the invention,

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and for biotechnology inventions, a nucleotide
and/or amino acid sequence listing if necessary.

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Patent claims define the legal scope of the
patent and can be compared to the deed to

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a house or piece of land.

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Like a property deed, the claims define the
legal boundary between what constitutes a

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trespass of the property rights, or in the
patent world, what is an infringing or non-infringing

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action.

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When the application is received at the USPTO,
the office will conduct a formalities review

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of the application and will notify the applicant
of any deficiencies found.

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This is more of an administrative check to
ensure all patent application documents have

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been property filled out or included.

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Once the application has passed the formalities
review, is it then assigned to an examiner

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who will evaluate the application based on
the patentability requirements we discussed

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earlier.

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Once the application is taken up by the patent
examiner for examination, the examiner will

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read the patent application to gain an understanding
of the invention and the claims.

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Next, a search of the prior art begins.

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These pictures were taken in the early and
the mid-20th century showing how examiners

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in the U.S. Patent Office used to search for
prior art.

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Before computers changed how we all work,
patent searches were done by hand through

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stacks and stacks of granted patents and by
searching other printed materials such as

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books, treatises, magazines, and newspapers.

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Today, patent examiners have access to the
latest electronic databases and resources

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to search for prior art related to the technology
of an invention claimed in a patent application

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and can perform patent application searches
at any location that has computer access to

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the Internet.

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Once the search is completed, the examiner
will prepare a written communication called

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an office action indicating the examiner’s
decisions regarding compliance or non-compliance

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with the patentability requirements, with
supporting reasoning and evidence.

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If at any point in the process the patent
examiner is satisfied that the claimed invention

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is fully compliant with all legal requirements,
the application is allowed to be issued as

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a patent.

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If, however, the examiner determines that
one or more laws have not been complied with,

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the examiner will send an office action containing
a rejection or rejections to the applicant

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for response.

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The applicant must then respond to the patent
examiner’s rejections.

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The response can include cancellation of any
rejected claims, amendments of those claims

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to overcome the rejection, arguments that
the rejection does not apply, or evidence

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that calls into question the basis of the
rejection.

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If the examiner is still not convinced by
the inventor’s response that the rejection

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should be withdrawn, the examiner may make
the rejection final.

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Does an inventor have any options after receiving
a final rejection?

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The answer is yes.

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After receiving a final rejection, the inventor
has the option to appeal the examiner’s

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decision to the Patent Trial and Appeal Board
(or PTAB) for further review.

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The inventor also has the option to file a
request for continued examination (or RCE)

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to begin another round of examination where
the inventor can introduce some additional

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claim amendments or arguments.

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And finally, if the inventor does not respond
to the final rejection, the patent application

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will be abandoned and no further action will
be taken on it by the USPTO.

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If the claimed invention is found by the examiner
to be fully compliant with all the U.S. patent

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laws, the application will be allowed and
a patent will be granted.

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Once a patent is granted, the inventor or
patent owner has the right to exclude others

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from exploiting the invention.

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The patent grant is now an asset that can
allow the inventor time to enter and develop

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00:25:23,220 --> 00:25:29,520
a market for the invention, attract investors
to risk their capital in financing the commercialization

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of the invention, or to license the patent
to others who seek to develop the technology.

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Now, this has been a very simplified version
of the patent examination process, and in

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the case of a real patent application, the
process could have many more steps and take

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many months to complete.

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I hope you now have a good understanding of
the basics of patents: what they are; what

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they protect; and what it takes to get patent
protection in the United States.

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For more detailed information on U.S. patent
laws and regulations, the USPTO examination

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00:26:03,390 --> 00:26:10,700
process, the America Invents Act, and resources
available from the USPTO for inventors including

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the Patent Pro Bono Program, where free legal
assistance is available to under-resourced

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00:26:15,880 --> 00:26:22,030
inventors interested in securing patent protection
for their inventions, and the Pro Se Assistance

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00:26:22,030 --> 00:26:26,160
Program, where inventors who may not have
the resources to hire a patent attorney or

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agent can get help meeting their goals of
protecting their valuable intellectual property,

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please use the links shown on this slide or
visit our web site at www.uspto.gov.