Understanding the Patent

Process

Mindy Bickel, Innovation Outreach Coordinator

Patent Process

Patent Process

AllowanceFirst

ExaminationFirst

Examination

Notice of

Allowance

Second Examination

Response

SecondExamination

Appeal Process

Appeal BriefAppealProcess

Rejection

Examination Process

Abandonment

Parts, Form and Content

Arrangement of Application• Title• Cross-Reference to Related Applications• Statement Regarding Federally Sponsored Research or • Development• Background of the Invention• Brief Summary of the Invention• Brief Description of the Drawings• Detailed Description of the Invention• Claims• Abstract• Drawings• Sequence or Computer Program Listings

Examination

Patent Examiner will:•Read specification• Interpret drawings• Diagram claims• Search the prior art• Make legal/engineering determination• Write opinion (Office Action)

-First -Final

Applicant Response

• Amendment- Non-final

• Right of entry- Final

• No right of entry- Requirements

• Answer all formal objections and rejections– Amendment or argument or both– Replacement paragraph, claims or drawing

following rules– For more information on submitting a proper

amendment, visit http://www.uspto.gov/patents/law/moreinfoamdtprac.jsp

Parts, Form and Content

Claims• Must commence on a separate sheet

• Must particularly point out and distinctly claim the subject matter which applicant regards as his/her invention or discovery

• Must conform to the invention as set forth in the specification – there must be antecedence of the terms and phrases found in the written description for the claims

• The claims shall be numbered consecutively in Arabic numerals

• The original numbering of the claims must be preserved throughout the prosecution of the application

– when claims are cancelled the remaining claims must not be renumbered

Typical Misunderstandings

Pro se applicants:• Are not always aware of what protection a patent gives them;

• Are not always aware of what the difference between a provisional patent application and a non-provisional application is; and

• Often lack the necessary knowledge to draft their own patent applications (format, forms, fees, prior art search).

Typical Misunderstandings

Pro se applicants:• Are challenged by the prior art and terminology used in Office actions;

• Frequently fail to respond in writing in a timely manner or with the necessary fees; and

• Frequently fail to ask for help!

Pro se problems

Pro se vs. Represented Abandonment Percentage

Helpful Hints

• Interview- Pro Se

• Phone or in person

- Attorney/Agent• Phone or in person• Inventor cannot have interview without attorney or

agent present

Allowance and Issue

• Fees- No extension of time permitted- To check current fee schedule: http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm

• Amendments after allowance- Minor corrections, drawings, formal matters

• Corrections- Inventorship, misspelled words

• Time to publish patent

After Patent Grant

Protection begins

Maintenance fees - Due at 3.5,7.5 and 11.5 years

Correction- Certificate of Correction- Reissue

• Broadening• Narrowing

Satellite Office Program

Ombudsman Program-Purpose

• Facilitate complaint-handling when applications become stalled in examination process

• Track complaints to ensure each is handled within 10 business days

- Currently averaging 3 business days

• Provide feedback regarding training needs based on complaint trends

- FY13 Examiners will complete stakeholder responsiveness training

Ombudsman Program-Structure

• Central Program Administration- Examiner Detailee

• Ombuds Reps in Each TC- Senior SPEs

- Experienced QAS

• Ombuds Reps in all other business units (internal and external to Patents)

• Coordination with Office of Innovation Development

Ombudsman Program-Process

• Applicant/Attorney access through USPTO.gov website or 571-272-5555

• Ombudsman will call within one business day to obtain details

• Complaint is routed to the person who can best address it (SPE, TC Director, etc.)

• Ombudsman may or may not address the complaint directly

Pro Bono Program

Contacts For Direct Help

• Inventor Assistance Center (IAC) - for general questions about the application process

Telephone: (571) 272-1000 or

(800) 786-9199

8:30 a.m. - 5:00 p.m., eastern time M-F

• Office of Innovation Development: - (571) 272-8877

- independentinventor@uspto.gov

Resources

• Comprehensive Information and Training Material for First Inventor to File: http://www.uspto.gov/aia_implementation/patents.jsp#heading-10

• Inventor Resources: http://www.uspto.gov/inventors/index.jsp

• IP Awareness Assessment Tool: http://www.uspto.gov/inventors/assessment/index.html

• Scam Prevention: http://www.uspto.gov/inventors/scam_prevention/index.jsp

• Pro Se & Pro Bono: http://www.uspto.gov/inventors/proseprobono/index.jsp

• Utility Patent Application Guide: http://www.uspto.gov/patents/resources/types/utility.jsp

Thank You!Mindy Bickel

Innovation and Outreach CoordinatorGreater New York Region

United States Patent and Trademark Office

Mindy.Bickel@uspto.govwww.uspto.gov/cornell