1 00:00:03,639 --> 00:00:08,260 Hello, my name is Elizabeth Shaw, and I am the International Relations Advisor in the 2 00:00:08,260 --> 00:00:12,920 Office of Policy and International Affairs at the United States Patent and Trademark 3 00:00:12,920 --> 00:00:13,920 Office. 4 00:00:13,920 --> 00:00:19,390 Today, I will be introducing you to patents – what a patent is, what a patent protects, 5 00:00:19,390 --> 00:00:22,310 and how a patent is obtained in the United States. 6 00:00:22,310 --> 00:00:26,710 The details surrounding these topics are included in the laws and regulations of the United 7 00:00:26,710 --> 00:00:32,200 States including the most recent changes in U.S. patent law enacted under the Leahy-Smith 8 00:00:32,200 --> 00:00:38,780 America Invents Act of 2011, or the AIA, and in the Manual of Patent Examining Procedure, 9 00:00:38,780 --> 00:00:40,930 or the MPEP. 10 00:00:40,930 --> 00:00:45,539 My goal today is to give you useful facts that will enable you to understand the basics 11 00:00:45,539 --> 00:00:50,579 of patents and how inventions are protected in the United States and not to get too far 12 00:00:50,579 --> 00:00:55,489 off into the complexities of patent law and patent examination practice. 13 00:00:55,489 --> 00:01:00,800 At the end of this presentation, I will provide links to web sites and web pages where you 14 00:01:00,800 --> 00:01:07,180 can explore in detail the intricate laws, regulations, and examination guidelines for 15 00:01:07,180 --> 00:01:09,939 patents in the United States. 16 00:01:09,939 --> 00:01:15,230 In addition, the USPTO offers a variety of assistance to independent inventors and to 17 00:01:15,230 --> 00:01:17,320 small and medium size businesses. 18 00:01:17,320 --> 00:01:24,100 A link to those resources will also be found at the end of this presentation. 19 00:01:24,100 --> 00:01:29,201 Patented technology today is everywhere: from our smart phones and electronic tablets; to 20 00:01:29,201 --> 00:01:34,659 our medicine cabinets at home; to the cars we drive; and in how I am reaching you today 21 00:01:34,659 --> 00:01:38,330 with this presentation. 22 00:01:38,330 --> 00:01:43,340 Patents encourage innovation by incentivizing the creation of new products and services 23 00:01:43,340 --> 00:01:49,380 that can greatly enrich the quality of our lives. 24 00:01:49,380 --> 00:01:54,240 Obtaining a patent in the United States and in most countries can be a complex process 25 00:01:54,240 --> 00:01:59,430 involving laws and regulations that outline the various requirements and conditions that 26 00:01:59,430 --> 00:02:01,229 need to be met. 27 00:02:01,229 --> 00:02:07,000 For today, I want you to become familiar with 3 important aspects of the patenting procedure. 28 00:02:07,000 --> 00:02:10,920 We will accomplish this by answering three questions. 29 00:02:10,920 --> 00:02:13,910 Question One – what is a patent? 30 00:02:13,910 --> 00:02:17,760 Here we will look at the history of patents in the United States and define what a patent 31 00:02:17,760 --> 00:02:19,480 is. 32 00:02:19,480 --> 00:02:22,660 Question Two – what does a patent protect? 33 00:02:22,660 --> 00:02:28,680 To answer this question, we will explore what kinds of inventions are eligible for a patent. 34 00:02:28,680 --> 00:02:33,420 And Question Three – what is required to get patent protection? 35 00:02:33,420 --> 00:02:38,960 We will answer this question in 2 parts – first by identifying conditions that an invention 36 00:02:38,960 --> 00:02:45,720 must meet to be patentable and second by exploring the patent examination process. 37 00:02:45,720 --> 00:02:51,250 Because patents laws are complex and patents can be very valuable, we usually recommend 38 00:02:51,250 --> 00:02:56,319 that inventors who are unfamiliar with the patent system seek the assistance of a patent 39 00:02:56,319 --> 00:02:59,540 attorney or agent. 40 00:02:59,540 --> 00:03:04,379 The patent system was provided for during the founding of the United States and is included 41 00:03:04,379 --> 00:03:11,069 in the U.S. Constitution, Article 1, Section 8, Clause 8 where the founders of the United 42 00:03:11,069 --> 00:03:17,239 States granted “Congress the power to create a patent system that would promote the progress 43 00:03:17,239 --> 00:03:23,590 of science and the useful arts, by securing for limited times to authors and inventors 44 00:03:23,590 --> 00:03:28,110 the exclusive right to their respective writings and discoveries.” 45 00:03:28,110 --> 00:03:33,069 This clause is also the source for the U.S. copyright system, and today we understand 46 00:03:33,069 --> 00:03:37,700 the term “useful arts” as referring to technology. 47 00:03:37,700 --> 00:03:39,409 Why do we have patents? 48 00:03:39,409 --> 00:03:41,519 Are patents beneficial to the United States? 49 00:03:41,519 --> 00:03:43,379 Yes, they are. 50 00:03:43,379 --> 00:03:48,549 They encourage investment in new technologies, allowing not only the creation of these new 51 00:03:48,549 --> 00:03:53,340 technologies, but also the resources to bring them to the marketplace which brings them 52 00:03:53,340 --> 00:03:56,170 to individuals like you and me. 53 00:03:56,170 --> 00:04:02,300 Abraham Lincoln, our 16th president and the only president to ever receive a patent, famously 54 00:04:02,300 --> 00:04:08,090 said in a speech in 1858 that the “patent system … added the fuel of interest to the 55 00:04:08,090 --> 00:04:14,200 fire of genius, in the discovery and production of new and useful things.” 56 00:04:14,200 --> 00:04:18,320 Here we are at our first question - what is a patent? 57 00:04:18,320 --> 00:04:23,910 In the United States, a patent is a property right granted by the United States government 58 00:04:23,910 --> 00:04:25,700 to an inventor. 59 00:04:25,700 --> 00:04:30,700 This property right grants to the inventor the right, for a limited time, to exclude 60 00:04:30,700 --> 00:04:37,030 others from making, using, selling, or offering for sale the invention throughout the United 61 00:04:37,030 --> 00:04:42,330 States, or from importing the invention into the United States. 62 00:04:42,330 --> 00:04:48,020 The patent is granted in exchange of the inventor fully disclosing the invention to the public, 63 00:04:48,020 --> 00:04:51,330 where it otherwise might have remained unknown. 64 00:04:51,330 --> 00:04:57,630 This disclosure is important because it promotes follow-on innovation. 65 00:04:57,630 --> 00:05:03,070 A patent is also territorial meaning that it is only enforceable in the territory or 66 00:05:03,070 --> 00:05:05,080 country where it was obtained. 67 00:05:05,080 --> 00:05:10,710 So, a patent granted in the United States can only be protected in the United States. 68 00:05:10,710 --> 00:05:14,890 And, the U.S. patent right is a private right. 69 00:05:14,890 --> 00:05:20,200 That means the patent holder is tasked with protecting and enforcing the patented invention 70 00:05:20,200 --> 00:05:23,170 – the U.S. government cannot do it for you. 71 00:05:23,170 --> 00:05:31,120 There are 3 types of U.S. patents and they are: a utility patent; a design patent; and 72 00:05:31,120 --> 00:05:33,220 a plant patent. 73 00:05:33,220 --> 00:05:39,020 Utility patents, the most common type of patent sought by inventors, are awarded to useful 74 00:05:39,020 --> 00:05:43,000 inventions, and they have a 20 year term from the date of filing. 75 00:05:43,000 --> 00:05:49,840 The first utility patent in the United States was issued on July 31, 1790, to Samuel Hopkins 76 00:05:49,840 --> 00:05:55,050 of Philadelphia, Pennsylvania for an improvement in “the making of pot ash and pearl ash 77 00:05:55,050 --> 00:05:57,770 by a new apparatus and process.” 78 00:05:57,770 --> 00:06:04,300 In 1790, patents were granted by members of the Patent Board which included Thomas Jefferson 79 00:06:04,300 --> 00:06:09,800 who was then Secretary of State and considered to be the first administrator of the American 80 00:06:09,800 --> 00:06:14,350 patent system and the first patent examiner. 81 00:06:14,350 --> 00:06:19,610 The original paper patent grant to Samuel Hopkins, which was signed by the first U.S. 82 00:06:19,610 --> 00:06:23,901 President, George Washington, is still in existence today in the collections of the 83 00:06:23,901 --> 00:06:26,310 Chicago Historical Society. 84 00:06:26,310 --> 00:06:31,060 Here we have an example of a utility patent – an underwater dolly with propellers that 85 00:06:31,060 --> 00:06:35,270 make it easier for a camera operator to maneuver in water. 86 00:06:35,270 --> 00:06:39,300 It was invented by filmmaker and inventor, James Cameron. 87 00:06:39,300 --> 00:06:45,020 He created this for his brother Michael to film underwater scenes for the movie “The 88 00:06:45,020 --> 00:06:49,970 Abyss, “ and this underwater dolly was patented in 1989. 89 00:06:49,970 --> 00:06:55,660 While a utility patent represents the functional aspects of an invention, a design patent covers 90 00:06:55,660 --> 00:07:00,190 the ornamental design or the shape for an article of manufacture. 91 00:07:00,190 --> 00:07:05,160 Increasingly, businesses are becoming more aware of design patents in providing them 92 00:07:05,160 --> 00:07:09,350 with a competitive edge to protect their product designs. 93 00:07:09,350 --> 00:07:15,140 This example of a design patent shows a drawing from 1931 of an early Minnie Mouse. 94 00:07:15,140 --> 00:07:21,560 Walt Disney received his design patent for Mickey Mouse a year earlier in 1930. 95 00:07:21,560 --> 00:07:25,350 The third type of United States patent is the plant patent. 96 00:07:25,350 --> 00:07:27,940 Some may ask why plant varieties should be protected. 97 00:07:27,940 --> 00:07:33,100 After all, plant varieties are products of nature and should be freely accessible to 98 00:07:33,100 --> 00:07:34,420 everyone. 99 00:07:34,420 --> 00:07:38,650 What this opinion overlooks is that a plant breeder who develops a new variety that may 100 00:07:38,650 --> 00:07:45,120 be disease resistant, drought resistant, cold tolerant, or simply aesthetically more pleasing, 101 00:07:45,120 --> 00:07:51,530 is no less an inventor than someone who improves an automobile engine or develops a new pharmaceutical. 102 00:07:51,530 --> 00:07:56,990 The only difference is that the medium with which the plant breeder works is living material 103 00:07:56,990 --> 00:07:59,880 rather than inanimate matter. 104 00:07:59,880 --> 00:08:05,360 Here is an example of a plant patent - for a Hydrangea plant named Limelight which has 105 00:08:05,360 --> 00:08:09,590 become a popular landscape plant used across North America. 106 00:08:09,590 --> 00:08:14,470 The football-shaped flowers look fresh and clean in summer’s heat, and Limelight blooms 107 00:08:14,470 --> 00:08:16,590 even in cold climates. 108 00:08:16,590 --> 00:08:19,830 Next we’ll take a look at what is patent eligible. 109 00:08:19,830 --> 00:08:24,440 This will help to answer our second question – what does a patent protect? 110 00:08:24,440 --> 00:08:31,500 In 1980, the United States Supreme Court answered the question, “what is patent eligible,” 111 00:08:31,500 --> 00:08:36,260 in the landmark decision of Diamond versus Chakrabarty, which involved the patenting 112 00:08:36,260 --> 00:08:38,120 of life forms. 113 00:08:38,120 --> 00:08:43,660 In this case, the Supreme Court stated that Congress’ intention was that patent eligible 114 00:08:43,660 --> 00:08:48,400 subject matter included “anything under the sun that is made by man…” 115 00:08:48,400 --> 00:08:53,390 Now, does this literally mean anything made by humans is eligible for a patent? 116 00:08:53,390 --> 00:08:55,870 The answer to that question is “no.” 117 00:08:55,870 --> 00:09:01,760 To be patent eligible, an invention must fall into one of the following 4 categories. 118 00:09:01,760 --> 00:09:08,760 An invention must be a process, machine, manufacture, or composition of matter OR the invention 119 00:09:08,760 --> 00:09:12,280 must be an improvement of one of these 4 categories. 120 00:09:12,280 --> 00:09:18,690 Even if an invention falls within one of the 4 previous identified statutory, or lawful, 121 00:09:18,690 --> 00:09:24,490 categories of invention, it may still not be patent eligible if it also falls into one 122 00:09:24,490 --> 00:09:30,830 of these three judicially-created, or court-created, exceptions to patentability. 123 00:09:30,830 --> 00:09:36,901 These exceptions include: laws of nature (for instance, Newton’s law of motion); natural 124 00:09:36,901 --> 00:09:43,960 phenomena (that would be such things as wind, sunrise, germination, erosion, or gravity) 125 00:09:43,960 --> 00:09:48,890 and abstract ideas (for instance, a mental process – such as adding up numbers in your 126 00:09:48,890 --> 00:09:50,690 head). 127 00:09:50,690 --> 00:09:55,780 More examples of inventions not eligible for patent protection in the United States include: 128 00:09:55,780 --> 00:10:01,630 mathematical algorithms; computer software code per se; and a newly discovered mineral 129 00:10:01,630 --> 00:10:04,900 as it exists in nature. 130 00:10:04,900 --> 00:10:11,150 You can find more information on patent eligibility in Chapter 2100 of the Manual of Patent Examining 131 00:10:11,150 --> 00:10:14,140 Procedure or MPEP. 132 00:10:14,140 --> 00:10:21,160 The MPEP is published by the USPTO and provides patent examiners, applicants, attorneys, and 133 00:10:21,160 --> 00:10:26,590 agents with a reference work on the practices and procedures relative to the prosecution 134 00:10:26,590 --> 00:10:30,190 of patent applications before the USPTO. 135 00:10:30,190 --> 00:10:35,310 It contains instructions to examiners and outlines the current procedures which a patent 136 00:10:35,310 --> 00:10:40,450 examiner is required to follow in the normal examination of a patent application. 137 00:10:40,450 --> 00:10:44,520 You will find a link to the MPEP at the end of this presentation. 138 00:10:44,520 --> 00:10:50,190 Earlier, we learned that the United States Constitution provides for rights to inventors 139 00:10:50,190 --> 00:10:52,170 for “limited times.” 140 00:10:52,170 --> 00:10:54,660 What are the time limits for a U.S. patent? 141 00:10:54,660 --> 00:10:58,400 How long does an inventor have the benefit of a patent? 142 00:10:58,400 --> 00:11:04,530 For utility patents filed after June 8, 1995, the patent term is generally 20 years from 143 00:11:04,530 --> 00:11:10,500 the date the patent application was filed at the USPTO, and once issued, utility patents 144 00:11:10,500 --> 00:11:15,390 have maintenance fees that are due during the 20-year patent term at 3.5 years, 7.5 145 00:11:15,390 --> 00:11:19,060 years, and 11.5 years. 146 00:11:19,060 --> 00:11:23,440 If the maintenance fees are not paid, the patent can be abandoned and the inventor can 147 00:11:23,440 --> 00:11:26,690 lose his or her patent rights. 148 00:11:26,690 --> 00:11:31,190 Plant patents also have a term of 20 years from the date of filing but have no maintenance 149 00:11:31,190 --> 00:11:32,190 fees. 150 00:11:32,190 --> 00:11:37,690 A design patent term lasts 15 years from the date of issue and also have no maintenance 151 00:11:37,690 --> 00:11:39,480 fees. 152 00:11:39,480 --> 00:11:43,620 Now that we know what is eligible for patent protection, or what kinds of inventions a 153 00:11:43,620 --> 00:11:48,000 patent might protect here in the United States, let’s start to answer our third question 154 00:11:48,000 --> 00:11:51,160 – What is required to get a patent? 155 00:11:51,160 --> 00:11:54,920 As I said earlier, we will answer this question in 2 parts. 156 00:11:54,920 --> 00:12:00,240 The first part is to identify the conditions of patentability or what is required of an 157 00:12:00,240 --> 00:12:02,560 invention for it to be patentable. 158 00:12:02,560 --> 00:12:04,580 Does the invention have utility? 159 00:12:04,580 --> 00:12:07,240 Is the invention new or novel? 160 00:12:07,240 --> 00:12:12,350 Is it non-obvious to a person having ordinary skill in the art (or technology)? 161 00:12:12,350 --> 00:12:17,010 And has specific disclosure of the invention utilizing certain requirements been made in 162 00:12:17,010 --> 00:12:19,570 the patent application? 163 00:12:19,570 --> 00:12:23,550 We will now look at these conditions of patentability one at a time. 164 00:12:23,550 --> 00:12:25,880 First, let’s look at utility. 165 00:12:25,880 --> 00:12:30,610 An invention submitted for a patent in the United States must be useful – it must have 166 00:12:30,610 --> 00:12:36,220 some function, and it must perform as described in the patent application. 167 00:12:36,220 --> 00:12:43,310 Under U.S. law, the invention must have specific utility, substantial utility, and credible 168 00:12:43,310 --> 00:12:44,340 utility. 169 00:12:44,340 --> 00:12:48,840 These determinations are made by a patent examiner who is highly skilled in the subject 170 00:12:48,840 --> 00:12:51,160 matter of the claimed invention. 171 00:12:51,160 --> 00:12:56,930 The USPTO has issued guidelines to assist both patent examiners and the public is assessing 172 00:12:56,930 --> 00:13:00,820 whether an invention has utility that complies with the law. 173 00:13:00,820 --> 00:13:06,590 These guidelines are available in Chapter 2107 of the MPEP. 174 00:13:06,590 --> 00:13:11,920 We have also referenced the pertinent law where patent utility is discussed, 35 U.S.C. 175 00:13:11,920 --> 00:13:18,350 (or United States Code) section 101, and you will find a link to that section of laws and 176 00:13:18,350 --> 00:13:21,790 the MPEP at the end of this presentation. 177 00:13:21,790 --> 00:13:28,500 Now, before moving on to novelty and non-obviousness, we need to talk about prior art. 178 00:13:28,500 --> 00:13:34,020 To determine if an invention is novel (or new) and non-obvious, a comparison of the 179 00:13:34,020 --> 00:13:36,890 claimed invention with the prior art is required. 180 00:13:36,890 --> 00:13:40,040 So what is prior art? 181 00:13:40,040 --> 00:13:44,480 Prior art is the state of the art (or the technology) prior to the filing date of a 182 00:13:44,480 --> 00:13:46,360 patent application. 183 00:13:46,360 --> 00:13:51,029 It is used to determine whether an invention is patentable or not and consists of the body 184 00:13:51,029 --> 00:13:56,510 of published information or prior existing disclosures of the relevant field of technology 185 00:13:56,510 --> 00:14:01,300 claimed in a patent application made anywhere in the world. 186 00:14:01,300 --> 00:14:06,870 If an inventor discloses his or her invention before filing a patent application for that 187 00:14:06,870 --> 00:14:10,860 invention, the inventor may lose out on getting a patent. 188 00:14:10,860 --> 00:14:15,100 Disclosure of an invention can be made in many different ways – for instance: sale 189 00:14:15,100 --> 00:14:20,540 of the invention; exhibiting the invention at a trade show; or an oral disclosure made 190 00:14:20,540 --> 00:14:26,430 anywhere in the world such as discussing an invention in a paper presented at a conference. 191 00:14:26,430 --> 00:14:31,680 However, in the United States, the law provides for a 12 month grace period. 192 00:14:31,680 --> 00:14:37,810 This means that certain disclosures by the inventor, or others who derived their disclosure 193 00:14:37,810 --> 00:14:43,970 from the inventor, may not be used as prior art if that disclosure occurred within 12 194 00:14:43,970 --> 00:14:48,170 months prior to the effective filing date of the patent application. 195 00:14:48,170 --> 00:14:53,630 You should also be aware that in some countries there is no grace period or a more limited 196 00:14:53,630 --> 00:14:55,560 grace period. 197 00:14:55,560 --> 00:15:01,210 Remember: disclosure of the invention outside of the 12 month grace period is considered 198 00:15:01,210 --> 00:15:04,800 prior art, and a patent will not be granted. 199 00:15:04,800 --> 00:15:11,529 Next, we will look at the novelty requirement which can be found in the U.S. law at 35 U.S.C. 200 00:15:11,529 --> 00:15:13,029 section 102. 201 00:15:13,029 --> 00:15:18,020 To be novel, an invention must not be disclosed in the prior art. 202 00:15:18,020 --> 00:15:23,300 When comparing the claimed invention to the existing prior art to determine novelty, we 203 00:15:23,300 --> 00:15:28,300 determine whether a disclosure of the identical invention has been made in writing or through 204 00:15:28,300 --> 00:15:34,070 another type of disclosure such as oral disclosure, public use, or sale. 205 00:15:34,070 --> 00:15:39,670 However, as I pointed out before, if disclosure occurred during the 12 month grace period 206 00:15:39,670 --> 00:15:44,830 prior to filing the patent application, it may not be considered prior art and will not 207 00:15:44,830 --> 00:15:49,880 affect the novelty of the invention if the disclosure was by the inventor or by others 208 00:15:49,880 --> 00:15:53,440 who derived their disclosure from the inventor. 209 00:15:53,440 --> 00:15:59,560 Now - even if disclosure of the identical invention is not shown in the prior art, patentability 210 00:15:59,560 --> 00:16:05,830 requirements also state the invention must not be obvious in view of the prior art. 211 00:16:05,830 --> 00:16:07,270 What is non-obviousness? 212 00:16:07,270 --> 00:16:12,730 Again, we are comparing the claimed invention against the existing prior art. 213 00:16:12,730 --> 00:16:17,610 The question being asked for non-obviousness is whether or not the invention would have 214 00:16:17,610 --> 00:16:23,060 been obvious to a person having ordinary, or an average level of skill, in the art in 215 00:16:23,060 --> 00:16:25,100 the field of the invention. 216 00:16:25,100 --> 00:16:29,980 In addition, the patent law requires that the assessment be “at the time the invention 217 00:16:29,980 --> 00:16:31,410 was made.” 218 00:16:31,410 --> 00:16:36,960 This requirement means that patent examiners must be historical detectives, piecing together 219 00:16:36,960 --> 00:16:39,710 what was known at the time the invention was made. 220 00:16:39,710 --> 00:16:44,480 The law also states that patentability will not be denied by the manner in which the invention 221 00:16:44,480 --> 00:16:45,740 was made. 222 00:16:45,740 --> 00:16:50,960 That means that the assessment of obviousness does not depend on whether the invention took 223 00:16:50,960 --> 00:16:56,180 10,000 hours to develop through trial and error, or was developed relatively quickly, 224 00:16:56,180 --> 00:16:58,520 as a result of a flash of genius! 225 00:16:58,520 --> 00:17:04,490 The key is whether the differences between the claimed invention and the prior art are 226 00:17:04,490 --> 00:17:10,270 non-obvious, even if the invention is not identically disclosed and considered novel. 227 00:17:10,270 --> 00:17:14,380 We learned earlier that a patent grants an inventor certain rights to their invention 228 00:17:14,380 --> 00:17:20,870 – and for a limited time the right to exclude others from making, using, selling, or offering 229 00:17:20,870 --> 00:17:25,870 for sale the invention throughout the United States, or importing the invention into the 230 00:17:25,870 --> 00:17:27,579 United States. 231 00:17:27,579 --> 00:17:32,170 In exchange for a patent, the inventor is required to make sure that the claimed invention 232 00:17:32,170 --> 00:17:36,760 is communicated (or disclosed) to the public in a meaningful way. 233 00:17:36,760 --> 00:17:42,360 A patent application is required to have specific information as to ensure that anyone skilled 234 00:17:42,360 --> 00:17:48,260 in the art (or technology of the invention) is able to make and use the invention. 235 00:17:48,260 --> 00:17:53,370 In the disclosure, the specific information of the manner and process of making and using 236 00:17:53,370 --> 00:18:00,300 the invention must be in full, clear, concise, and exact terms so that anyone skilled in 237 00:18:00,300 --> 00:18:04,710 the art of the claimed invention can make it and use it on their own. 238 00:18:04,710 --> 00:18:09,920 That is, the disclosure must be an enabling and clear disclosure. 239 00:18:09,920 --> 00:18:14,300 More information on these requirements of written description and enablement can be 240 00:18:14,300 --> 00:18:19,570 found in 35 U.S.C. section 112 and in the MPEP. 241 00:18:19,570 --> 00:18:23,860 We have now reviewed many of the critical statutory requirements that must be met to 242 00:18:23,860 --> 00:18:26,960 receive a patent grant in the United States. 243 00:18:26,960 --> 00:18:32,330 Now let’s look at how a patent application processes through the USPTO. 244 00:18:32,330 --> 00:18:36,929 Patent examination is a process by which a patent examiner reviews the contents of a 245 00:18:36,929 --> 00:18:40,780 patent application for compliance with U.S. legal requirements. 246 00:18:40,780 --> 00:18:44,860 These are the requirements that we have talked about earlier in the presentation. 247 00:18:44,860 --> 00:18:50,510 After a thorough examination of the application, the patent examiner comes to a conclusion 248 00:18:50,510 --> 00:18:56,020 as to the invention’s patentability and decides whether to grant or reject the patent 249 00:18:56,020 --> 00:18:57,400 application. 250 00:18:57,400 --> 00:19:02,290 All patent examiners at the USPTO have at least a bachelor’s degree relative to the 251 00:19:02,290 --> 00:19:07,040 subject matter applications that they will be assigned to examine, though many have graduate 252 00:19:07,040 --> 00:19:08,610 degrees as well. 253 00:19:08,610 --> 00:19:15,150 For example, USPTO patent examiners have degrees in; engineering including electronical, mechanical, 254 00:19:15,150 --> 00:19:22,750 and chemical; biology and microbiology; physics; and design examiners may have degrees in architecture, 255 00:19:22,750 --> 00:19:25,670 applied arts, or graphics. 256 00:19:25,670 --> 00:19:31,010 Every new examiner receives both on-the-job and formal training which cover all aspects 257 00:19:31,010 --> 00:19:36,660 of basic and advanced examining functions and corresponding legal concepts. 258 00:19:36,660 --> 00:19:40,890 And the burden lies first with the patent examiner to prove that the claimed invention 259 00:19:40,890 --> 00:19:46,130 fails to comply with one or more of the patentability requirements. 260 00:19:46,130 --> 00:19:50,610 The first step is to file an application for a patent, and I want to point out one of the 261 00:19:50,610 --> 00:19:55,790 most important changes that the America Invents Act made to the U.S. patent system. 262 00:19:55,790 --> 00:20:01,260 That is, the United States switched from being a “first-to-invent” system to a “first- 263 00:20:01,260 --> 00:20:03,110 inventor- to-file” system. 264 00:20:03,110 --> 00:20:07,470 Changing to first inventor to file brought the United States in line with other countries’ 265 00:20:07,470 --> 00:20:11,570 laws and brought more certainty to the U.S. patent process. 266 00:20:11,570 --> 00:20:17,740 All patent applications filed in the United States after March 16, 2013, are filed under 267 00:20:17,740 --> 00:20:20,790 the first inventor to file rules. 268 00:20:20,790 --> 00:20:25,220 A patent application may be filed either electronically or in paper form. 269 00:20:25,220 --> 00:20:30,679 But, be aware that the America Invents Act provides for an additional fee for filings 270 00:20:30,679 --> 00:20:33,299 made by non-electronic means. 271 00:20:33,299 --> 00:20:39,920 The USPTO has a series of informational videos specifically on first inventor to file changes, 272 00:20:39,920 --> 00:20:45,380 and these videos, along with others relative to the America Invents Act, can be found on 273 00:20:45,380 --> 00:20:48,270 our web site at www.uspto.gov. 274 00:20:48,270 --> 00:20:56,320 I have also provided the link to the web page with AIA informational videos at the end of 275 00:20:56,320 --> 00:20:57,910 this presentation. 276 00:20:57,910 --> 00:21:02,030 Here are the requirements for a utility patent application – it must include a written 277 00:21:02,030 --> 00:21:07,590 description or specification of the invention (we talked about that requirement earlier), 278 00:21:07,590 --> 00:21:14,610 at least one claim, drawings if necessary to understand the invention, an oath or declaration 279 00:21:14,610 --> 00:21:20,580 stating among other things that the inventor or inventors truly came up with the invention, 280 00:21:20,580 --> 00:21:29,400 and for biotechnology inventions, a nucleotide and/or amino acid sequence listing if necessary. 281 00:21:29,400 --> 00:21:34,010 Patent claims define the legal scope of the patent and can be compared to the deed to 282 00:21:34,010 --> 00:21:36,640 a house or piece of land. 283 00:21:36,640 --> 00:21:41,650 Like a property deed, the claims define the legal boundary between what constitutes a 284 00:21:41,650 --> 00:21:48,020 trespass of the property rights, or in the patent world, what is an infringing or non-infringing 285 00:21:48,020 --> 00:21:49,830 action. 286 00:21:49,830 --> 00:21:55,090 When the application is received at the USPTO, the office will conduct a formalities review 287 00:21:55,090 --> 00:22:00,540 of the application and will notify the applicant of any deficiencies found. 288 00:22:00,540 --> 00:22:05,580 This is more of an administrative check to ensure all patent application documents have 289 00:22:05,580 --> 00:22:09,090 been property filled out or included. 290 00:22:09,090 --> 00:22:14,280 Once the application has passed the formalities review, is it then assigned to an examiner 291 00:22:14,280 --> 00:22:18,780 who will evaluate the application based on the patentability requirements we discussed 292 00:22:18,780 --> 00:22:20,400 earlier. 293 00:22:20,400 --> 00:22:25,090 Once the application is taken up by the patent examiner for examination, the examiner will 294 00:22:25,090 --> 00:22:30,500 read the patent application to gain an understanding of the invention and the claims. 295 00:22:30,500 --> 00:22:34,080 Next, a search of the prior art begins. 296 00:22:34,080 --> 00:22:39,000 These pictures were taken in the early and the mid-20th century showing how examiners 297 00:22:39,000 --> 00:22:42,960 in the U.S. Patent Office used to search for prior art. 298 00:22:42,960 --> 00:22:47,650 Before computers changed how we all work, patent searches were done by hand through 299 00:22:47,650 --> 00:22:52,850 stacks and stacks of granted patents and by searching other printed materials such as 300 00:22:52,850 --> 00:22:56,630 books, treatises, magazines, and newspapers. 301 00:22:56,630 --> 00:23:01,820 Today, patent examiners have access to the latest electronic databases and resources 302 00:23:01,820 --> 00:23:07,470 to search for prior art related to the technology of an invention claimed in a patent application 303 00:23:07,470 --> 00:23:12,720 and can perform patent application searches at any location that has computer access to 304 00:23:12,720 --> 00:23:14,540 the Internet. 305 00:23:14,540 --> 00:23:18,870 Once the search is completed, the examiner will prepare a written communication called 306 00:23:18,870 --> 00:23:24,950 an office action indicating the examiner’s decisions regarding compliance or non-compliance 307 00:23:24,950 --> 00:23:29,940 with the patentability requirements, with supporting reasoning and evidence. 308 00:23:29,940 --> 00:23:34,870 If at any point in the process the patent examiner is satisfied that the claimed invention 309 00:23:34,870 --> 00:23:40,059 is fully compliant with all legal requirements, the application is allowed to be issued as 310 00:23:40,059 --> 00:23:41,390 a patent. 311 00:23:41,390 --> 00:23:48,070 If, however, the examiner determines that one or more laws have not been complied with, 312 00:23:48,070 --> 00:23:53,980 the examiner will send an office action containing a rejection or rejections to the applicant 313 00:23:53,980 --> 00:23:55,740 for response. 314 00:23:55,740 --> 00:23:59,870 The applicant must then respond to the patent examiner’s rejections. 315 00:23:59,870 --> 00:24:05,100 The response can include cancellation of any rejected claims, amendments of those claims 316 00:24:05,100 --> 00:24:10,390 to overcome the rejection, arguments that the rejection does not apply, or evidence 317 00:24:10,390 --> 00:24:13,800 that calls into question the basis of the rejection. 318 00:24:13,800 --> 00:24:18,010 If the examiner is still not convinced by the inventor’s response that the rejection 319 00:24:18,010 --> 00:24:22,840 should be withdrawn, the examiner may make the rejection final. 320 00:24:22,840 --> 00:24:26,720 Does an inventor have any options after receiving a final rejection? 321 00:24:26,720 --> 00:24:29,380 The answer is yes. 322 00:24:29,380 --> 00:24:34,530 After receiving a final rejection, the inventor has the option to appeal the examiner’s 323 00:24:34,530 --> 00:24:39,980 decision to the Patent Trial and Appeal Board (or PTAB) for further review. 324 00:24:39,980 --> 00:24:46,220 The inventor also has the option to file a request for continued examination (or RCE) 325 00:24:46,220 --> 00:24:49,919 to begin another round of examination where the inventor can introduce some additional 326 00:24:49,919 --> 00:24:52,210 claim amendments or arguments. 327 00:24:52,210 --> 00:24:57,300 And finally, if the inventor does not respond to the final rejection, the patent application 328 00:24:57,300 --> 00:25:02,150 will be abandoned and no further action will be taken on it by the USPTO. 329 00:25:02,150 --> 00:25:07,290 If the claimed invention is found by the examiner to be fully compliant with all the U.S. patent 330 00:25:07,290 --> 00:25:11,620 laws, the application will be allowed and a patent will be granted. 331 00:25:11,620 --> 00:25:16,590 Once a patent is granted, the inventor or patent owner has the right to exclude others 332 00:25:16,590 --> 00:25:18,750 from exploiting the invention. 333 00:25:18,750 --> 00:25:23,220 The patent grant is now an asset that can allow the inventor time to enter and develop 334 00:25:23,220 --> 00:25:29,520 a market for the invention, attract investors to risk their capital in financing the commercialization 335 00:25:29,520 --> 00:25:34,730 of the invention, or to license the patent to others who seek to develop the technology. 336 00:25:34,730 --> 00:25:40,210 Now, this has been a very simplified version of the patent examination process, and in 337 00:25:40,210 --> 00:25:44,840 the case of a real patent application, the process could have many more steps and take 338 00:25:44,840 --> 00:25:46,480 many months to complete. 339 00:25:46,480 --> 00:25:51,761 I hope you now have a good understanding of the basics of patents: what they are; what 340 00:25:51,761 --> 00:25:56,850 they protect; and what it takes to get patent protection in the United States. 341 00:25:56,850 --> 00:26:03,390 For more detailed information on U.S. patent laws and regulations, the USPTO examination 342 00:26:03,390 --> 00:26:10,700 process, the America Invents Act, and resources available from the USPTO for inventors including 343 00:26:10,700 --> 00:26:15,880 the Patent Pro Bono Program, where free legal assistance is available to under-resourced 344 00:26:15,880 --> 00:26:22,030 inventors interested in securing patent protection for their inventions, and the Pro Se Assistance 345 00:26:22,030 --> 00:26:26,160 Program, where inventors who may not have the resources to hire a patent attorney or 346 00:26:26,160 --> 00:26:31,770 agent can get help meeting their goals of protecting their valuable intellectual property, 347 00:26:31,770 --> 00:26:40,350 please use the links shown on this slide or visit our web site at www.uspto.gov.