Introduction to Patent Protection

May 20, 2019 posted by



hello my name is Elizabeth Shaw and I'm the international relations advisor in the office of policy and international affairs at the United States Patent and Trademark Office today I will be introducing you to patins what a patent is what a patent protects and how a patent is obtained in the United States the details surrounding these topics are included in the laws and regulations of the United States including the most recent changes in US patent law enacted under the leahy-smith America Invents Act of 2011 or the AIA and in the manual of patent examining procedure or the npep my goal today is to give you useful facts that will enable you to understand the basics of patents and how inventions are protected in the United States and not to go too far into the complexities of patent law and patent examination practice at the end of this presentation I will provide links to websites and web pages where you can explore in detail the intricate laws regulations and examination guidelines for patents in the United States in addition the USPTO offers a variety of assistance to independent inventors and to small and medium-sized businesses a link to those resources will also be found at the end of this presentation patented technology today is everywhere from our smart phones and electronic tablets to our medicine cabinets at home to the cars we drive and in how I am reaching you today with this presentation patents encourage innovation by incentivizing the creation of new products and services that can greatly enrich the quality of our lives obtaining a patent in the United States and in most countries can be a complex process involving laws and regulations that outline the various requirements and conditions that need to be met for today I want you to become familiar with three important aspects of the patenting procedure we will accomplish this by answering three questions question 1 what is a patent here we will look at the history of patents in the States and define what a patent is question two what does a patent protect to answer this question we will explore what kinds of inventions are eligible for a patent and question three what is required to get patent protection we will answer this question in two parts first by identifying conditions that an invention must meet to be patentable and second by exploring the patent examination process because patent laws are complex and patents can be very valuable we usually recommend that inventors who are unfamiliar with the patent system seek the assistance of a patent attorney or agent the patent system was provided for during the founding of the United States and is included in the US Constitution article 1 section 8 Clause 8 where the founders of the United States granted Congress the power to create a patent system that would promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries this clause is also the source for the u.s. copyright system and today we understand the term useful arts as referring to technology why do we have patents our patents beneficial to the United States yes they are they encourage investment in new technologies allowing not only the creation of these new technologies but also the resources to bring them to the marketplace which brings them to individuals like you and me Abraham Lincoln our 16th president and the only president to ever receive a patent famously said in a speech in 1858 that the patent system added the fuel of interest to the fire of genius in the discovery and production of new and useful things here we are at our first question what is a patent in the United States a patent is a property right granted by the United States government to an inventor this property right grants to the inventor the right for a limited time to exclude others from making using selling or offering for sale the invention throughout the United States or from importing the invention into the United States the patent is granted in exchange of the inventor fully disclosing the invention to the public where it otherwise might have remained unknown this disclosure is important because it promotes follow-on innovation a patent is also territorial meaning that it is only enforceable in the territory or country where it is obtained so a patent granted in the United States can only be protected in the United States and the US patent right is a private right that means the patent holder is tasked with protecting and enforcing the patented invention the US government cannot do it for you there are three types of US patents and they are a utility patent a design patent and a plant patent utility patents the most common type of patent sought by inventors are awarded to useful inventions and they have a 20-year term from the date of filing the first utility patent in the United States was issued on July 31st 1792 Samuel Hopkins of Philadelphia Pennsylvania for an improvement in the making of potash and pearl ash by a new apparatus and process in 1790 patents were granted by members of the patent Board which included Thomas Jefferson who was then Secretary of State and considered to be the first administrator of the American patent system and the first patent examiner the original paper patent grant to Samuel Hopkins which was signed by the first US President George Washington is still in existence today in the collections of the Chicago Historical Society here we have an example of a utility patent and underwater dolly with propellers that make it easier for a camera operator to maneuver in water it was invented by filmmaker and inventor James Cameron he created this for his brother Michael to film underwater scenes for the movie the abyss and this underwater dolly was patented in 1989 while a utility patent represents the functional aspects of an invention a design patent covers the ornamental design or the shape for an article of manufacture increasingly businesses are becoming more aware of design patents in providing them with a competitive edge to protect their product designs this example of a design patent shows a drawing from 1931 of an early Minnie Mouse Walt Disney received his design patent for Mickey Mouse a year earlier in 1930 the third type of United States patent is the plant patent some may ask why plant varieties should be protected after all plant varieties are products of nature and should be freely accessible to everyone what this opinion overlooks is that a plant breeder who develops a new variety that may be disease resistant drought resistant cold tolerant or simply aesthetically more pleasing is no less an inventor than someone who improves an automobile engine or develops a new pharmaceutical the only difference is that the medium with which the plant breeder works is living material rather than in adamant matter here is an example of a plant patent for a hydrangea plant named limelight which has become a popular landscape plant used across North America the football-shaped flowers look fresh and clean in summers heat and limelight blooms even in cold climates next we'll take a look at what is patent eligible this will help to answer our second question what does a patent protect in 1980 the united states supreme court answered the question what is patent eligible in the landmark decision of diamond versus Chakravarti which involved the patenting of life forms in this case the Supreme Court stated that Congress's intention was that patent-eligible subject matter included anything under the Sun that is made by man now does this literally mean anything made by humans is eligible for a patent the answer to that question is no to be patent eligible and in ventia must fall into one of the following four categories an invention must be a process machine manufacturer or composition of matter or the invention must be an improvement on one of these four categories even if an invention falls within one of the four previous identified statutory or lawful categories of invention it may still not be patent eligible if it also falls into one of these three judicially created or court-created exceptions to patentability these exceptions include loss of nature for instance newton's law of motion natural phenomena that would be such things as wind sunrise germination erosion or gravity and abstract ideas for instance a mental process such as adding up numbers in your head more examples of inventions not eligible for patent protection in the United States include mathematical algorithms computer software code per se and a newly discovered mineral as it exists in nature you can find more information on patent eligibility in Chapter 2100 of the manual of patent examining procedure or MP ep the npep is published by the USPTO and provides patent examiner's applicants attorneys and agents with a reference work on the practices and procedures relative to the prosecution of patent applications before the US BTO it contains instructions to examiner's and outlines the current procedures which a patent examiner is required to follow in the normal examination of a patent application you will find a link to the npep at the end of this presentation earlier we learned that the United States Constitution provides for rights to inventors for limited times what are the time limits for a US patent how long does an inventor have the benefit of a patent for utility patents filed after June 8th 1995 the patent term is generally 20 years from the date the patent application was filed at the USPTO and once issued utility patents have fees that are due during the 20-year patent term at three and a half years seven and a half years and eleven and a half years if the maintenance fees are not paid the patent can be abandoned and the inventor can lose his or her patent rights plant patents also have a term of twenty years from the date of filing but have no maintenance fees a design patent term lasts 15 years from the date of issue and also has no maintenance fees now that we know what is eligible for patent protection or what kinds of inventions a patent might protect here in the United States let's start to answer our third question what is required to get a patent as I said earlier we will answer this question in two parts the first part is to identify the conditions of patentability or what is required of an invention for it to be patentable does the invention have utility is the invention new or novel is it non obvious to a person having ordinary skill in the art or technology and has specific disclosure of the invention utilizing certain requirements been made in the patent application we will now look at these conditions of patentability one at a time first let's look at utility an invention submitted for a patent in the United States must be useful it must have some function and it must perform as described in the patent application under US law the invention must have specific utility substantial utility and credible utility these determinations are made by a patent examiner who is highly skilled in the subject matter of the claimed invention the USPTO has issued guidelines to assist both patent examiner's and the public in assessing whether an invention has utility that complies with the law these guidelines are available in chapter 20 107 of the em PEP we have also referenced the pertinent law where patent utilities discussed 35 USC or United States Code section 101 and you will find a link to that section of the law and the npep at the end of this presentation now before moving on to novelty and non-obviousness we need to talk about prior art to determine if an invention is novel or new and non-obvious a comparison of the claimed invention with the prior art is required so what is prior art prior art is the state of the art or the technology prior to the filing date of a patent application it is used to determine whether an invention is patentable or not and consists of the body of published information or prior existing disclosures of the relevant field of technology claimed in the patent application made anywhere in the world if an inventor discloses his or her invention before filing a patent application for that invention the inventor may lose out on getting a patent disclosure of an invention can be made in many different ways for instance sale of the invention exhibiting the invention at a trade show or an oral disclosure made anywhere in the world such as discussing an invention in a paper presented at a conference however in the United States the law provides for a 12-month grace period that means that certain disclosures by the inventor or others who derived their disclosure from the inventor may not be used as prior art if that disclosure occurred within 12 months prior to the effective filing date of the patent application you should also be aware that in some countries there is no grace period or a more limited grace period remember disclosure of the invention outside of the 12-month grace period is considered prior art and a patent will not be granted next we will look at the novelty requirement which can be found in the US law at 35 USC Section 102 to be novel an invention must not be disclosed in the prior art when comparing the claimed invention to the existing prior art to determine novelty we determine whether a disclosure of the identical invention has been made in writing or through another type of disclosure such as oral disclosure public use or sale however as I pointed out before if disclosure occurred during twelve month grace period prior to filing the patent application it may not be considered prior art and will not affect the novelty of the invention if the disclosure was by the inventor or by others who derived their disclosure from the inventor now even if disclosure of the identical invention is not shown in the prior art patentability requirements also state the invention must not be obvious in view of the prior art what is non-obviousness again we are comparing the claimed invention against the existing prior art the question being asked for non-obviousness is whether or not the invention would have been obvious to a person having ordinary or an average level of skill in the art in the field of the invention in addition the patent law requires that the assessment be at the time the invention was made this requirement means that patent examiner's must be historical detectives piecing together what was known at the time the invention was made the law also states that patentability will not be denied by the manner in which the invention was made that means that the assessment of obvious nough send on whether the invention took ten thousand hours to develop through trial and error or was developed relatively quickly as a result of a flash of genius the key is whether the differences between the claimed invention and the prior art are non-obvious even if the invention is not identically disclosed and considered novel we learned earlier that a patent grants and inventor certain rights to their invention and for a limited time the right to exclude others from making using selling or offering for sale the invention throughout the United States or importing that invention into the United States in exchange for a patent the inventor is required to make sure that the claimed invention is communicated or disclosed to the public in a meaningful way a patent application is required to have specific information as to ensure that anyone skilled in the art or technology of the invention is able to make and use the invention in the disclosure the specific information of the manner and of making and using the invention must be in full clear concise and exact terms so that anyone skilled in the art of the claimed invention can make it and use it on their own that is the disclosure must be an enabling and clear disclosure more information on these requirements of written description and enablement can be found in 35 USC Section 112 and in the npep we have now reviewed many of the critical statutory requirements that must be met to receive a patent grant in the United States now let's look at how a patent application processes through the USPTO patent examination is a process by which a patent examiner reviews the contents of a patent application for compliance with US legal requirements these are the requirements that we have talked about earlier in the presentation after a thorough examination of the application the patent examiner comes to a conclusion as to the inventions patentability and decides whether to grant or reject the patent application all patent examiner's at the USPTO have at least a bachelor's degree relative to the subject matter applications that they will be assigned to examine though many have graduate degrees as well for example USPTO patent examiner's have degrees in engineering including electrical mechanical and chemical biology and microbiology physics and design examiner's may have degrees in architecture applied arts or graphics every new examiner receives both on-the-job and formal training which cover all aspects of basic and advanced examining functions and corresponding legal concepts and the burden lies first with the patent examiner to prove that the claimed invention fails to comply with one or more of the patentability requirements the first step is to file an application for patent and I want to point out one of the most important changes that the American Invents Act made to the u.s. patent system that is the United States switched from being a first to invent system to a first inventor to file system changing to first-inventor-to-file brought to you States in line with other countries laws and brought more certainty to the US patent process all patent applications filed in the United States after March 16 2013 are filed under the first-inventor-to-file rules a patent application may be filed either electronically or in paper form but be aware that the American Invents Act provides for an additional fee for filings made by non electronic means the USPTO has a series of informational videos specifically on first-inventor-to-file changes and these videos along with others relative to the America Invents Act can be found on our website at wwlp.com I have also provided the link to the webpage with aia informational videos at the end of this presentation here are the requirements for utility patent application it must include a written description or specification of the invention we talked about that requirement earlier at least one claim drawings if necessary to understand the invention and oath or declaration stating among other things that the inventor or inventors truly came up with the invention and for Biotechnology inventions and nucleotide and/or amino acid sequence listing if necessary patent claims define the legal scope of the patent and can be compared to the D 2 a house or piece of land like a property deed the claims define the legal boundary between what constitutes a trespass of the property rights or in the patent world what is an infringing or non-infringing action when the application is received at the USPTO the office will conduct a formalities review of the application and will notify the applicant of any deficiencies found this is more of an administrative check to ensure all patent application documents have been properly filled out or included once the application has passed the formalities review it is then assigned to an examiner who will evaluate the application based on the patentability requirements we discussed earlier once the application is taken up by the patent examiner for examination the examiner will read the patent application to gain an understanding of the event and the claims next a search of the prior art begins these pictures were taken in the early and the mid 20th century showing how examiner's in the US Patent Office used to search for prior art before computers changed how we all work patent searches were done by hand through stacks and stacks of granted patents and by searching other printed materials such as books treatises magazines and newspapers today patent examiner's have access to the latest electronic databases and resources to search for prior art related to the technology of an invention claimed in a patent application and can perform patent application searches at any location that has computer access to the Internet once the search is completed the examiner will prepare a written communication called an office action indicating the examiners decisions regarding compliance or non-compliance with the patentability requirements with supporting reasoning and evidence if at any point in the process the patent examiner is satisfied that the claimed invention is fully compliant with all legal requirements the application is allowed to be issued as a patent if however the examiner determines that one or more laws have not been complied with the examiner will send an office action containing a rejection or rejections to the applicant for response the applicant must then respond to the patent examiner's rejections the response can include cancellation of any rejected claims amendments of those claims to overcome the rejection arguments that the rejection does not apply or evidence that calls into question the basis of the rejection if the examiner is still not convinced by the inventors response that the rejection should be withdrawn the examiner may make the rejection final does an inventor have any options after receiving a final rejection the answer is yes after receiving a final rejection the inventor has the option to a he'll the examiners decision to the patent trial and appeal board or P tab for further review the inventor also has the option to file a request for continued examination or RCE to begin another round of examination where the inventor can introduce some additional claim amendments or arguments and finally if the inventor does not respond to the final rejection the patent application will be abandoned and no further action will be taken on it by the USPTO if the claimed invention is found by the examiner to be fully compliant with all the US patent laws the application will be allowed and a patent will be granted once a patent is granted the inventor or patent owner has the right to exclude others from exploiting the invention the patent grant is now an asset that can allow the inventor time to enter and develop a market for the invention attract investors to risk their capital in financing the commercialization of the invention or to license the patent to others who seek to develop the technology now this has been a very simplified version of the patent examination process and in the case of a real patent application the process could have many more steps and take many months to complete I hope you now have a good understanding of the basics of patents what they are what they protect and what it takes to get patent protection in the United States for more detailed information on US patent laws and regulations the USPTO examination process the America Invents Act and resources available from the USPTO for inventors including the patent pro bono program where free legal assistance is available to under-resourced inventors interested in securing patent protection for their inventions and the pro se assistance program where inventors who may not have the resources to hire a patent attorney Regent can get help meeting their goals of protecting their valuable intellectual property please use the links shown on this slide or visit our website at wwlp.com

3 Comments

3 Replies to “Introduction to Patent Protection”

  1. Frank Priego W says:

    is a PPA considered as a 12 month grace period?

  2. Tan Chew Charn says:

    I had just started on Global Intellectual Property (IP) a few days ago with AGA.

  3. SymballerO says:

    4:55
    “There is no worldwide patent.”
    WHY NOT !?

Leave a Comment

Your email address will not be published. Required fields are marked *