1 the patent process and the america invents act evan boetticher, m.s. judy mohr, ph.d. mcdermott...
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The Patent Process and the America Invents ActThe Patent Process and the America Invents Act
Evan Boetticher, M.S.Judy Mohr, Ph.D.McDermott Will & Emery LLP
March 11, 2013
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3http://www.whitehouse.gov/photos-and-video/video/2011/09/16/president-obama-signs-america-invents-act
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Tonight’s Topics
How did Ms. Rebecca Hyndman obtain her patent?
– what is a patent?
– what is the process to obtain a patent?
– how does the America Invents Act change the patent system?
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what is a patent
patent process
impact of AIA – first to file
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+ 20 years
Expires: Jan. 4, 2028
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What is a Patent?
Granted U.S. Design Patent
on iPhone
Date of patent + 14 years
Expires: June 29, 2024
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Lesson #1
a patent gives the right to exclude others from making, using, selling the idea set forth in the claims of the patent for 20 years from the earliest non-provisional application filing date
patent application publications are not legally enforceable property rights
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what is a patent
patent process
impact of AIA – first to file
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How to Obtain a Patent
Basic requirements:
– novel
– not obvious
– patent eligible subject matter
– sufficient written description of the idea to teach how to make and use the full scope of the claims
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How to Obtain a Patent
Provisional Application
“6x/xxx,xxx”
Non-provisional (“utility”) Application
“1x/xxx,xxx”
1 year
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How to Obtain a Patent (cont’d)
Published iPodPatent Application
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Patent Application Lifecycle
Non-provisional (“utility”)
Application FiledOctober 2002
1 year
3rd Provisional Application Filed in June 2002
1st Provisional Application Filed in October 2001
2nd Provisional Application Filed in February 2002
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Patent Application Lifecycle (cont’d)
Pay Issue Fee;Patent Grants
Pay Issue Fee;Patent Grants
InternationalApplications
InternationalApplications
14 months(can be
2-3 years)
3-6 months
4 months
U.S. Provisional Application(s)
U.S. Non-Provisional
(“utility”) Application
1 year
1st Office Action1st Office Action
app. publishes18 months fromprovisional filing
Final Office Action or
Notice of Allowance
Final Office Action or
Notice of Allowance Written
Response to Office Action
Written Response
to Office Action
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Patent Application Lifecycle (cont’d)
Written Response to Office Action
Pay Issue Fee;Patent Grants
14 months
3-6 months
4 months
Provisional Application Filed
“60/xxx,xxx”
Regular (“utility”) Application Filed
1 year
1st Office Action
Final Office Action orNotice of Allowance
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Patent Application Lifecycle (cont’d)
14 months
3-6 months
4 months
1 year
3-6 months
4 months
Provisional Application Filed
“60/xxx,xxx”
Regular (“utility”) Application Filed
1st/3rd Office Action
Written Response to Office Action
Written Response to Office Action
if Examiner refuses to consider response, then file a “Request for Continued
Examination (RCE)”
Final Office Action
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Costs Associated withPatent Application Lifecycle
14 months
3-6 months
4 months
U.S. Provisional Application
$8,000 - $15,000 Atty Fees; $260 USPTO Fee
non-provisional application$1,000 - $8,000 Atty Fees;
$1,600 USPTO Fee
1 year
1st Office Action1st Office Action
Written Response to Office Action
$3,000 - $6,000 Atty Fees
Written Response to Office Action
$3,000 - $6,000 Atty Fees
Final Office Action orNotice of Allowance
Final Office Action orNotice of Allowance
Pay Issue Fee$1,780 USPTO
Fee
Pay Issue Fee$1,780 USPTO
Fee
File “Request for Continued
Examination (RCE)” $1,200 or $1,700
USPTO Fee
*USPTO Fees shown are “large entity” fees
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Patent Application Lifecycle (cont’d)
Pay Issue Fee;Patent Grants
Pay Issue Fee;Patent Grants
InternationalApplications
InternationalApplications
14 months(can be
2-3 years)
3-6 months
4 months
U.S. Provisional Application(s)
U.S. Non-Provisional
(“utility”) Application
1 year
1st Office Action1st Office Action
app. publishes18 months fromprovisional filing
Final Office Action or
Notice of Allowance
Final Office Action or
Notice of Allowance Written
Response to Office Action
Written Response
to Office Action
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International Patent Filings
PCT Application Publication
PCT Application Publication
2 months
Korea India
China
EuropeAustr.
Canada
Japan
Brazil
Mexico
national phase filings (30 or 31 months from provisional appln. filing date)
U.S. Provisional ApplicationInternational (PCT)
Application(s)
1 year
4 months
International Search Report
and Written Opinion
International Search Report
and Written Opinion
12 months
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Section 1: Patent Process
what is a patent
patent process
impact of AIA – first to file
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First to Invent: Current US Patent System
patent application filed on floor storage tiles
Rebecca (Blue)
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First to Invent: Current US Patent System
Rebecca (Blue) can provide evidence of having the idea first, and Rebecca is entitled to the patent even though Rebecca filed after Grey
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date of publication date of patent application filing
1 year
First to Invent: Current US Patent SystemOne Year Grace Period
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First to Invent: Current US Patent System
FIRST TO FILE: Effective March 16, 2013
Blue can provide evidence of having the idea first, and Blue is entitled to the patent even though Blue filed after Grey
Blue can no longer “swear behind” Grey’s earlier patent application filing date by proving Blue invented first
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FIRST TO FILE: Effective March 16, 2013
A person shall be entitled to a patent, unless:
• before the filing date, the invention was:• patented• described in printed publication• in public use• on sale• otherwise available to the public (35 USC 102(a)(1))
or
• the claimed invention was described in an issued patent or published application, which
• names another inventor; and• was filed before applicant’s filing date (35 USC 102(a)(2))
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FIRST TO FILE: Effective March 16, 2013
the following events destroy patentability if they occur before the application filing date:
• patented• described in printed publication• in public use• on sale• otherwise available to the public• described in a patent publication filed
by another (35 USC 102(a)(1) and 102(a)(2))
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FIRST TO FILE: Effective March 16, 2013
EXCEPT:
• A “disclosure” (printed publication, public use, sale, etc.) <1 year before the application filing date is not prior art if
• (i) it was made by the inventor or another who obtained it from the inventor; or
• (ii) it was made by another but preceded by a disclosure by the inventor or another who obtained it from the inventor
• Effect of the Exception “first to publish” regime
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FIRST TO FILE: Inspect the Exception:1 Year Grace Period Retained
date of publication date of patent application filing
1 year
Example 1/6
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FIRST TO FILE: Effect of Publishing?
Example 2/6
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FIRST TO FILE: First to Publish
1 year
Although Blue is the First to File, Gray is entitled to the patent because Gray is first to publish
Example 2/6
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FIRST TO FILE: First to Publish
Although Gray is the First to File, Gray is NOT entitled to the patent because Blue is first to publish
Example 3/6
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FIRST TO FILE: Does First to Publish Always Win?
1 year
Example 4/6
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FIRST TO FILE: Does First to Publish Always Win?
Example 5/6
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FIRST TO FILE: Is the strategy to first publish and then file a patent application a viable
strategy?
Yes, but only if • the patent application is filed within 1 year of the date of disclosure
• the disclosure/publication and patent application have a substantially identical disclosure
• patent protection outside the U.S. is not desired
1 year
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FIRST TO FILE: Complications and Unknowns
1 year
AND/OR
AB
prov. app
A BAA BA
B BAA BA
Example 6/6
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THANK YOU
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Patent Searching and Patent Copies
• USPTO database• http://uspto.gov
• Google patent database• http://www.google.com/advanced_patent_search
• Espace database• http://worldwide.espacenet.com/?locale=en_EP
• WIPO (World Intellectual Property Organization)• http://www.wipo.int/pctdb/en/
• PatentFetcher• http://www.patentfetcher.com/