What To Expect When Filing An Application:

The Patent Examination Process

Mindy Bickel Associate Commissioner Office of Innovation Development United States Patent and Trademark Office

Common 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 and a non-provisional application is

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

Common Misunderstandings Pro se applicants: •  Are unfamiliar with prior art and the terminology

used in Office Actions •  Frequently fail to respond in writing in a timely

manner or with the necessary fees •  Frequently fail to ask for help!

What does patent protection give you?

A Property Right •  Right to exclude others from making, using,

selling, offering for sale, or importing the claimed invention

•  Limited term •  Territorial: protection only in territory that granted

patent; NO world-wide patent

Utility Patents v. Design Patents Utility Patents (35 U.S.C. § 101) •  Protects the way an article is used and works

Design Patents (35 U.S.C. § 171) •  Protects the way an article looks •  No provisional application or maintenance fees

Can obtain both a design and utility patent •  If invention resides both in the article’s utility and

ornamental appearance

Why get a Patent? A patent can be: •  Used to gain entry into and/or deter others from a

market •  Used as a marketing tool to promote unique aspects of

a product •  Assert/enforce rights against an infringer or competitor •  Used as collateral to obtain funding •  Create revenue – sell or license like other property

Why do ‘savvy’ startups file Patent Applications?

•  Attractive to investors and buyers • Deter patent infringement lawsuits • Can increase leveraging power

– i.e. mergers and acquisitions •  Patents are a form of property that can

add value to a company’s assets

Provisional vs. Non-provisional Provisional Non-provisional

•  Not examined or published •  One-year time limit •  Only for utility patents •  A low-cost way to establish an

early effective filing date (priority date) in a non-provisional patent application with few formalities

•  Examined •  Published 18 months from

earliest filing date (unless a request for a non-publication at filing)

•  Can become a patent

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 the Invention •  Claims •  Abstract •  Drawings •  Sequence or Computer Program Listings

Parts, Form, and Content Claims

•  Must commence on a separate sheet •  Must particularly point out distinctly claim the subject matter

which applicant regards as their invention or discovery •  Every claim needs a preamble and a transition:

–  i.e. “A headgear apparatus, comprising:…” •  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 and within the claims

•  The claims shall be numbered consecutively and the original numbering of the claims must be preserved throughout prosecution

Parts, Form, and Content (Claims)

Too Specific

Invention

Too General

Not valuable

Not patentable

Patent Examination • Patent Examiner reviews contents of

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

• Burden is on the examiner: An applicant is entitled to a patent unless… – Requirements of U.S. patent law are not met

Role of a U.S. Patent Examiner •  Reads and understands invention •  Determines whether the application is adequate to

define the metes and bounds of the claimed invention

•  Determines the scope of the claims •  Searches existing technology for claimed

invention •  Determines patentability of claimed invention •  Writes opinion – called an Office Action that

notifies applicant of the examiner’s patentability determination

Examination Process First Examination

Second Examination

Amendment

Appeal Process Appeal Brief Appeal Process

Please note that a negative opinion by the examiner may be correct. In those instances, a patent will not be granted.

Rejection Allowance

Office Action •  Summary Sheet • Detailed reasons

why applicant is not entitled to a patent

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/patent/laws-and-regulations/final-rule-37-cfr-1121-revised-amendment-practice-more-information

Helpful Hint: Have an Interview

Interview •  Pro Se

– In person, over the phone, or via WebEx •  Attorney/Agent

– In person, over the phone, or via WebEx – Inventor cannot have an interview without their

attorney or agent present

Allowance and Issue •  Fees

– No extension of time permitted – Check the current fee schedule at: http://

www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

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

•  Corrections –  Inventorship, misspelled words

•  Time to publish the patent

After Patent Grant •  Protection begins

– Utility patent: 20 years from the date of filing – Design patent: 15 years from the date of issue

• Maintenance fees – Due at 3.5, 7.5, and 11.5 years

• Correction – Certificate of Correction

Resources – USPTO on the web www.uspto.gov

Features of the website •  Apply online for a patent using EFS-Web •  Obtain status of a patent application •  Determine when an application will be picked up for examination

(First Office Action Estimator) •  Access details of all currently pending published patent applications

(Public PAIR) •  Search US patent database •  Search patent classification •  Download forms and fee schedules •  Information about Pro Se and Pro Bono programs •  Inventors Assistance Center (AIC), Patents Ombudsman Program,

scam prevention, IP Awareness Assessment Tool

Inventor & Entrepreneurs Resources •  Wide variety of resources to

help Independent Inventors and Entrepreneurs

•  Pro Se, Pro Bono, Education & Information, Current Events, State Resources, and more

•  http://www.uspto.gov/learning-and-resources/inventors-entrepreneurs-resources

Pro Bono Program In general there are 3 basic requirements: •  Income below a certain threshold •  Knowledge of the patent system •  Possession of an actual invention

(not just an idea)

More information can be found at: •  http://www.uspto.gov/patents-

getting-started/using-legal-services/pro-bono/patent-pro-bono-program

Pro Se Assistance Program The Pro Se Assistance Program offers various services to the public, including: •  Dedicated personnel for assisting Pro Se Applicants •  Walk-in assistance for the general public at USPTO

headquarters in Alexandria, VA •  Targeted support to connect applicants with relevant resources

and information •  Online resources

More information can be found at: •  http://www.uspto.gov/patents-getting-started/using-legal-

services/pro-se-assistance-program

Basic Fees •  Utility (Large Entity / Small Entity / Micro Entity)

– Basic filing fee: $280 / $140 / $70 – Search fee: $600 / $300 / $150 – Examination fee: $720 / $360 / $180 –  Issue fee: $960 / $480 / $240 – Non-electronic filing fee: $400 / $200 / $200

•  Design (Large Entity / Small Entity / Micro Entity) – Basic filing fee: $180 / $90 / $45 – Search fee: $120 / $60 / $30 – Examination fee: $460 / $230 / $115 –  Issue fee: $560 /$ 280 / $140

Micro Entity (75% reduction in most fees) The AIA defines a micro entity as an applicant who certifies that he/she: 1.  Qualifies as a small entity 2.  Has not been named as an inventor on more than 4

previously filed patent applications 3.  Did not, in the calendar year preceding the calendar year in

which the applicable fee is paid, have a gross income exceeding 3 times the median household income

4.  Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income.

•  Process designed for issues that arise during patent application prosecution; used to get an application “back on track”

•  More information can be found at: http://www.uspto.gov/patent/ombudsman-program

“This program brings a voice to the inventor that he normally would not have…THANK YOU!!!!!”

Contacts for Direct Help •  Pro Se Assistance Program

!  1-866-767-3848 !  innovationdevelopment@uspto.gov

•  Inventors Assistance Center (IAC) !  571-272-1000 or 1-800-786-9199 !  Monday – Friday, 8:30 AM – 8:00 PM (ET)

•  Patent Ombudsman !  571-272-5555 !  OmbudsmanProgram@uspto.gov

Thank You! Mindy Bickel Associate Commissioner Office of Innovation Development United States Patent and Trademark Office

innovationdevelopment@uspto.gov www.uspto.gov