General Information on Patents and General Information on Patents and the Patent Process the Patent Process

presented topresented toNorth American Association ofNorth American Association of State and Provincial Lotteries State and Provincial Lotteries

June 24, 2008June 24, 2008

Brian Hanlon, Deputy Director, Office of Patent Legal Administration

Forms of Intellectual Forms of Intellectual Property ProtectionProperty Protection

COPYRIGHTS - Library of CongressCOPYRIGHTS - Library of Congress

TRADEMARKS - U.S. Patent and Trademark TRADEMARKS - U.S. Patent and Trademark Office Office

PATENTS - U.S. Patent and Trademark OfficePATENTS - U.S. Patent and Trademark Office

TRADE SECRETSTRADE SECRETS

Forms of Intellectual Forms of Intellectual Property ProtectionProperty Protection

COPYRIGHT - Library of CongressCOPYRIGHT - Library of Congress Protects “original works of authorship” including Protects “original works of authorship” including

literary, dramatic, musical, artistic and certain literary, dramatic, musical, artistic and certain other intellectual works.other intellectual works.

Term for works created after 1978- Author’s life + Term for works created after 1978- Author’s life + 70 years, or, for anonymous and pseudonymous 70 years, or, for anonymous and pseudonymous works and works made for hire, 95 years from year works and works made for hire, 95 years from year of first publication, or 120 years from year of of first publication, or 120 years from year of creation, whichever expires firstcreation, whichever expires first

Forms of Intellectual Forms of Intellectual Property ProtectionProperty Protection

® TRADEMARK - U.S. Patent and Trademark TRADEMARK - U.S. Patent and Trademark OfficeOffice Word, phrase, symbol or design, which identifies Word, phrase, symbol or design, which identifies

and distinguishes the source of the goods or and distinguishes the source of the goods or services of one party from those of others.services of one party from those of others.

Term - 10-year term with 10-year renewal termsTerm - 10-year term with 10-year renewal terms

Owner must continue to use the mark on or in Owner must continue to use the mark on or in connection with the goods and/or services in the connection with the goods and/or services in the registrationregistration

Forms of Intellectual Forms of Intellectual Property ProtectionProperty Protection

Trade SecretsTrade Secrets• Generally protected by states lawsGenerally protected by states laws

Uniform Trade Secrets Act (UTSA)Uniform Trade Secrets Act (UTSA) Based on contracts – may offer protection indefinitelyBased on contracts – may offer protection indefinitely

• Recourse for breach of contractRecourse for breach of contract• Recourse for misappropriation (federal crime)Recourse for misappropriation (federal crime)• Works only if product cannot be reverse engineeredWorks only if product cannot be reverse engineered

A grant by the U.S. Government conferring to A grant by the U.S. Government conferring to inventors the right to exclude others from the: inventors the right to exclude others from the:

manufacturemanufacture sale or offering for salesale or offering for sale useuse or import or import

of their inventions for set period of time.of their inventions for set period of time.

Letters Letters PatentPatent

What is a Patent?What is a Patent?

Types of PatentsTypes of Patents

Utility PatentsUtility Patents Protect the structureProtect the structure

and utilitarian featuresand utilitarian featuresof an inventionof an invention

Types of PatentsTypes of Patents

Design PatentsDesign Patents Protect the ornamentalProtect the ornamental

appearance of an article appearance of an article of manufacture or of manufacture or portion thereofportion thereof

Patent SystemPatent System

To ensure that inventors’ investments of time and money are rewarded, and to encourage future inventive efforts.

The public is provided a disclosure of how to make and use the invention. This: Promotes innovation Accelerates research and development Strengthens the national economy

Patent Terms – Patent Terms –

Utility Patents:Utility Patents: For most, 20 years from date of filing of For most, 20 years from date of filing of

application.application.

Design Patents:Design Patents: 14 years from issue date14 years from issue date

What is the Term of What is the Term of a Patent?a Patent?

Utility PatentsUtility Patents:: MachinesMachines Articles Of ManufactureArticles Of Manufacture ProcessesProcesses Compositions Of MatterCompositions Of Matter

What is Eligible for Patent What is Eligible for Patent Protection?Protection?

Inventions that:Inventions that: are NOT NEW (lack novelty)are NOT NEW (lack novelty)

were “made PUBLIC” more than one year prior to were “made PUBLIC” more than one year prior to patent application filing datepatent application filing date

invented by another invented by another

are OBVIOUS variations of known technology.are OBVIOUS variations of known technology. lack UTILITY (or usefulness)lack UTILITY (or usefulness)

do not work (e.g. perpetual motion)do not work (e.g. perpetual motion) are not adequately described.are not adequately described.

What Cannot be What Cannot be Patented?Patented?

Inventions which:Inventions which: are mere expressions, ideas or are mere expressions, ideas or

suggestionssuggestions

are laws of nature, physical are laws of nature, physical phenomena, and abstract ideasphenomena, and abstract ideas

What Else Cannot What Else Cannot be Patented?be Patented?

Anyone, anywhere, may apply, Anyone, anywhere, may apply, with only one exception…with only one exception… Officers and employees of the Officers and employees of the

U.S. Patent and Trademark U.S. Patent and Trademark Office.Office.

Who May Apply for Who May Apply for a Patent?a Patent?

Pre-Grant Pre-Grant PublicationPublication

Most applications for patent are published Most applications for patent are published approximately 18 months after the filing date.approximately 18 months after the filing date. The application is published as originally filed, The application is published as originally filed,

with no changes or corrections.with no changes or corrections. Applicants may request that their application not Applicants may request that their application not

be published only at the time of filing, and if no be published only at the time of filing, and if no application has been or will be filed in another application has been or will be filed in another country, or under a multilateral international country, or under a multilateral international agreement, that requires publication at 18 agreement, that requires publication at 18 months after filing.months after filing.

Request must be conspicuous.Request must be conspicuous.

The PatentThe PatentExaminer’s RoleExaminer’s Role

Read and understand the written description of the invention Read and understand the written description of the invention (the “SPECIFICATION”)(the “SPECIFICATION”)

Determine whether specification is adequateDetermine whether specification is adequate

Search existing technology (“PRIOR ART”) for the claimed Search existing technology (“PRIOR ART”) for the claimed inventioninvention

Determine patentability Determine patentability

Issue an “Office Action” which addresses patentability and Issue an “Office Action” which addresses patentability and reasons why rejected claims are not patentablereasons why rejected claims are not patentable

Reconsider and respond to responses from ApplicantsReconsider and respond to responses from Applicants

Examination ProcessExamination Process

AllowanceFirst Examination

FirstFirstExaminationExamination

Notice Notice of of

AllowanceAllowance

Second Examination

Amendment

SecondSecondExaminationExamination

Appeal Process

Appeal BriefAppealProcess

Rejection

Patent Claim Patent Claim Example - ArticleExample - Article

Third Party Submissions ofThird Party Submissions ofPrior Art While PendingPrior Art While Pending

Third Parties (parties other than the Third Parties (parties other than the applicant) may submit information relevant applicant) may submit information relevant to published applications in limited to published applications in limited circumstances (37 CFR 1.99)circumstances (37 CFR 1.99) Submission must be within 2 months after Submission must be within 2 months after

publication of the application.publication of the application. Submissions must be patents or publicationsSubmissions must be patents or publications No comments or explanations by the No comments or explanations by the

submitting party are permitted.submitting party are permitted.

ProtestsProtests

Public may file a protest against a pending Public may file a protest against a pending application (37 CFR 1.291)application (37 CFR 1.291)

Protest must be filed prior to earlier of publication Protest must be filed prior to earlier of publication or allowance, or be accompanied by written or allowance, or be accompanied by written consent of the applicantconsent of the applicant

Protest must list prior art and include concise Protest must list prior art and include concise explanation of relevanceexplanation of relevance

Protestor’s involvement ends after filing of protestProtestor’s involvement ends after filing of protest Protest requires serviceProtest requires service

Citation of Prior Art Citation of Prior Art in Patent Filein Patent File

Any person (3Any person (3rdrd party or patent owner) may cite, to party or patent owner) may cite, to the Office in writing, prior art believed to (i) be the Office in writing, prior art believed to (i) be pertinent and applicable to the patent and (ii) have pertinent and applicable to the patent and (ii) have a bearing on patentability of a claim (37 CFR 1.501)a bearing on patentability of a claim (37 CFR 1.501) Prior art = patents or printed publicationsPrior art = patents or printed publications

Citation may be entered in the patent fileCitation may be entered in the patent file

Citation may be made confidentiallyCitation may be made confidentially

Patent owner should be served copy of citationPatent owner should be served copy of citation

ReexaminationReexamination

Any person (3Any person (3rdrd party or patent owner) may file a party or patent owner) may file a request for reexamination by the Office of any request for reexamination by the Office of any claim of a patent based on prior art (37 CFR 1.510)claim of a patent based on prior art (37 CFR 1.510) Prior art = patents or printed publicationsPrior art = patents or printed publications

Threshold question for Office in determining Threshold question for Office in determining whether to grant the request: whether a substantial whether to grant the request: whether a substantial new question of patentability affecting any claim of new question of patentability affecting any claim of the patent concerned is raised by the requestthe patent concerned is raised by the request

ReexaminationReexamination

Decision on the request made no later than Decision on the request made no later than 3 months from filing3 months from filing

Proceedings conducted with “special Proceedings conducted with “special dispatch” within the Office and BPAIdispatch” within the Office and BPAI

Scope of the coverage provided by the Scope of the coverage provided by the claims cannot be enlarged by amendmentclaims cannot be enlarged by amendment

Two types: Two types: ex parteex parte and and inter partesinter partes

Ex ParteEx Parte ReexaminationReexamination

Limited participation by 3Limited participation by 3rdrd party requester party requester Once reexamination is ordered and the times Once reexamination is ordered and the times

for submitting any responses to the order have for submitting any responses to the order have expired, no further active participation by 3expired, no further active participation by 3rdrd party requester is allowedparty requester is allowed

No requirement to identify party on whose No requirement to identify party on whose behalf reexamination request was filedbehalf reexamination request was filed

Inter partesInter partes ReexaminationReexamination

33rdrd party requesters have greater opportunity to participate party requesters have greater opportunity to participate in reexamination proceedingsin reexamination proceedings

33rdrd party requesters have appeal rights to appeal to the party requesters have appeal rights to appeal to the Board and to participate in any patent owner appeal to the Board and to participate in any patent owner appeal to the BoardBoard

Statutory estoppel created against subsequent review, Statutory estoppel created against subsequent review, either by the Office or by a Federal Court, of the issues that either by the Office or by a Federal Court, of the issues that were or could have been raised in the reexamination were or could have been raised in the reexamination proceedingproceeding

Must identify party on whose behalf reexamination is filed Must identify party on whose behalf reexamination is filed to permit a determination of privityto permit a determination of privity

At the USPTO - - “The Public Search At the USPTO - - “The Public Search Room” – access to electronic search tools Room” – access to electronic search tools used by USPTO examinersused by USPTO examiners

Patent and Trademark Depository Libraries Patent and Trademark Depository Libraries (PTDL’s); more than 80 located in all 50 (PTDL’s); more than 80 located in all 50 states, DC and Puerto Rico.states, DC and Puerto Rico.

Online - www.uspto.govOnline - www.uspto.gov

Where Can Patent Where Can Patent Searches be Performed?Searches be Performed?

Commercial Databases (DIALOG, STN, Commercial Databases (DIALOG, STN, ORBIT, etc.)ORBIT, etc.)

INTERNET (Google, Yahoo, etc.)INTERNET (Google, Yahoo, etc.)

On-lineSearch

Other Search Other Search ResourcesResources

• FY ‘06 419,760

• Growth of 9.2% from ‘05

• FY ’07 441,637

• Growth of 5.2% from ‘06

050000

100000150000200000250000300000350000400000450000

1995

1996

1997

1998

1999

2000

2001

2002

2003

2004

2005

2006

2007

UPR FilingsUPR Filings

Filings, First Actions, Filings, First Actions, and Backlogand Backlog

0

100,000

200,000

300,000

400,000

500,000

600,000

700,000

800,000

2003 2004 2005 2006 2007

Filings First Actions Backlog

Patent Pendency - Patent Pendency - 2nd Quarter FY 20082nd Quarter FY 2008

Technology CenterTechnology CenterAverage 1Average 1stst Action Action

Pendency (months)Pendency (months)11 22ndnd Quarter FY08 Quarter FY08

Average Total Average Total Pendency (months)Pendency (months)22

22ndnd Quarter FY08 Quarter FY08

1600 - Biotechnology and Organic Chemistry1600 - Biotechnology and Organic Chemistry 22.622.6 34.334.3

1700 - Chemical and Materials Engineering1700 - Chemical and Materials Engineering 27.827.8 35.835.8

2100 - Computer Architecture Software and Information Security2100 - Computer Architecture Software and Information Security 31.531.5 42.342.3

2600 – Communications2600 – Communications 34.834.8 44.444.4

2800 - Semiconductor, Electrical, Optical Systems2800 - Semiconductor, Electrical, Optical Systems 20.020.0 27.727.7

3600 - Transportation, Construction, Electronic Commerce3600 - Transportation, Construction, Electronic Commerce 26.826.8 34.034.0

3700 - Mechanical Engineering, Manufacturing and Products3700 - Mechanical Engineering, Manufacturing and Products 25.225.2 32.232.2

UPR Total 2UPR Total 2ndnd Quarter FY 2008 Quarter FY 2008 26.826.8 33.233.2

1 “Average 1st action pendency” is the average age from filing to first action for a newly filed application.2 “Average total pendency” is the average age from filing to issue or abandonment of a newly filed application.

End-of-Year Statistics End-of-Year Statistics (FY 2007)(FY 2007)

441,637 UPR applications filed441,637 UPR applications filed

26,693 design applications filed26,693 design applications filed

5.2% filing growth over 20065.2% filing growth over 2006

9.9% examiner attrition9.9% examiner attrition

Patents StaffPatents Staff 5,477 examiners5,477 examiners 376 Supervisory Patent Examiners376 Supervisory Patent Examiners 100 Quality Assurance Specialists100 Quality Assurance Specialists 56 SPE/trainers for Patent Training Academy56 SPE/trainers for Patent Training Academy

Quality ResultsQuality Results

Improving Quality is our Highest PriorityImproving Quality is our Highest Priority

2006 Result2006 Result 2007 Result2007 Result 2008 Goal2008 Goal

3.5% allowance error3.5% allowance error 3.5% allowance error3.5% allowance error 4% allowance error4% allowance error

90% in process 90% in process compliancecompliance

92.2% in process 92.2% in process compliancecompliance

92% in process 92% in process compliancecompliance

2006 results: 3.5% allowance error and 90.0% in-process compliance 2007 results: 3.5% allowance error and 92.2% in-process compliance 2008 goals: 4% allowance error and 92% in-process compliance

Quality Results Quality Results

2nd Quarter FY08 % allowance error% compliant in-process

examination

FY08 Targets 4.0% 92.0%

USPTO 3.4% 91.7%

TC 1600 (Biotech) 4.1% 91.7%

TC 1700 (Chemical Eng.) 4.1% 91.7%

TC 2100 (Computers) 4.0% 88.6%

TC 2600 (Communications) 4.0% 88.6%

TC 2800 (Semiconductors) 2.8% 92.7%

TC 3600 (Transport. & BM)) 3.1% 94.6%

TC 3700 (Mechanical Eng.) 3.1% 94.6%

0.0

1.0

2.0

3.0

4.0

5.0

6.0

7.0

8.0

1975 1978 1981 1984 1987 1990 1993 1996 1999 2002 2005 2nd QtrFY08

Fiscal Year

Data is through the 2Data is through the 2ndnd Quarter of 2008. Quarter of 2008.

Allowance Error Allowance Error RateRate

40.0

45.0

50.0

55.0

60.0

65.0

70.0

75.0

1975 1978 1981 1984 1987 1990 1993 1996 1999 2002 2005 2nd QtrFY08

Fiscal Year

Data is through the 2Data is through the 2ndnd Quarter of 2008. Quarter of 2008.

Allowance RateAllowance Rate

40%

50%

60%

70%

80%

90%

100%

2002 2003 2004 2005 2006 2007

Allowance Compliance RateIPER Compliance RateBPAI Affirmance/AIPPre App. Brief - proceed to appeal (calendar year)

Performance Performance Measures FY 02-07Measures FY 02-07

Brian E. HanlonBrian E. Hanlon

Deputy Director, Office of Patent Legal Deputy Director, Office of Patent Legal Administration (OPLA) Administration (OPLA)

e-mail:e-mail: brian.hanlon@uspto.gov

Phone: Phone: 571-272-5047571-272-5047

Contact InformationContact Information

Thank YouThank You