D

Typewritten text

2.

D

Typewritten text

3.

Type Term Coverage Exam? Cost 12/06

Utility

Patent

20 yrs fm

filing

Varies with

claim terms

Yes 530 + 840

+ 565 +

1425 +

2365 =

5725

Design

Patent

14 yrs fm

issue

Varies with

novelty

specific

Yes 265 + 495

= 760

Plant

Patent

20 yrs fm

filing

Moderate Yes 415 + 685

= 1110

Trademark

Has C.L.

rights

10 yrs fm

issue

Renewable

Varies with

novelty+goods

Yes 275 to 325

Trade

Secret

Has CL

rights

Perpetual

so log as

kept S.

Varies with

novelty

No None

Copyright

Author+70

95 for hire

Specific No 30 online

50 by mail

Unfair

Compet

Has CL

rights

Perpetual Varies with

novelty

No None

Types of Intellectual Property

Five Statutory Classes of

patentable subject matter

1. Articles (Pen, Belt buckle, Bottle

carrier)

2. Machines (Automobile, Airplane,

Auto. Transmission, I.C., TV,

Computer, Smart Phone)

3. Composition (Drug, Paint, Chemical,

Concrete)

4. Process (Fabrication of IC, Attach

toupee, Internet Idea, Business

Method). Process includes

5. New Use (Use Bar As Corner Brace,

Feed Aspirin to Swine)

D

Typewritten text

6.

Use RESAM If You Invent Something

R: Record: Write Disclosure, sign, date, and get it witnessed and dated and/or file PPA. (No more DDP.)

Purpose: Prove that you invented and when. Sign and date and have two witnesses sign and date.

If you Build and Test, make another disclosure describing B&T.

Under FTI (before 2013 Mar 16) to antedate a reference or win an interference you must (a) prove conception + diligence, (b) prove B&T, or (c) have an earlier-filed Patent Application (PPA or RPA).

Under FTF (after 2013 Mar 16) a written record still very valuable in case of an inventorship dispute or derivation and for good engineering practice.

E: Evaluate Commercial Potential. Use criteria (±) from Ch. 4, interview people, and do market research.

S: Search for patentability: Use Google Patents, PTO, PDL, EPO, Stores, Catalogs, Internet.

Two types: By Class and Subclass and Key Words. Note anything close and review later. You need at least one novel feature that is unobvious ( produces new & unexpected results).

A: Application: Prepare and file a regular patent application.

M: Market it.

Patent Application— Basic Parts Needed To File Online 1. Specification* (Description, Claims, Abstract) 2. Drawings 3. Declaration 4. Application Data Sheet (ADS). (Opt.: Check Non-Pub

Request in ADS)

*Specification — MANDATORY and

Recommended Parts (Rule 77) TITLE

CROSS-REFERECE TO RELATED CASES (Opt.)

FEDERALLY SPONSORED RESEARCH (Opt.)

NAMES OF THE PARTIES TO JOINT RESEARCH AGREEMENT (Opt.)

REF. TO SEQUENCE LISTING or PROGRAM ON CD (Opt.)

BACKGROUND

—Prior Art

—Advantages

SUMMARY

DRAWINGS

—Figures

—Reference Numerals

DETAILED DESCRIPTION

—First Embodiment—Fig(s) x…

—Operation—Fig(s) y…

—Second Embodiment—Fig(s) z…

—Operation—Fig(s) aa…

CLAIMS (New Page)

ABSTRACT(New Page)

SEQUENCE LISTING or PROGRAM (Opt.)

Requirements and Desiderata For A Regular Patent

Application

1. Application must have proper format and parts.

2. Application must teach how to make and use the invention

in full, clear, concise, and exact terms so that a PHOSITA can

make and use it, but so even a lay judge can understand it.

3. State all advantages and ramifications (aspects)of invention.

Make sure every advantage is met by at least one aspect.

4. Never admit anything an adversary can use against you.

5. Make sure all explanations are clear and understandable.

Have someone else read it. Check spelling and grammar.

(www.PolishMyWriting.com)

6. Main (independent) claim(s) should be as broad as prior art

permits but should not read on prior art. Provide three sets of

claims if possible: 1. Apparatus claims with means clauses, 2.

Apparatus claims w/o means clauses, and 3. Method claims.

7. In each set of claims provide a spectrum of claim scopes,

from broad to narrow.

8. Make sure all “said” and “the” phrases in claims have proper

antecedents and claims are free of vague terms, are clear, and

can be diagrammed.

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Analysis Of New Patent Law Changes

(HR 1249--America Invents Act--AIA) Approved 2011 Sep 16

AIA makes major changes in the law but it’s not a complete revision. AIA makes patent laws law substantially more complicated and irregular due to influence of lobbyists, special interests, and pork barrel legislators. Former Patent Court Judge Paul Michel: “many sections are poorly written and ambiguous”. Others: “it will take years to clarify the grey areas”. Most independent inventors against law. Real problem areas not treated, e.g.: (a) inability of independent inventors and small entities to enforce patents,

especially if the infringer has shallow pockets or the infringement volume is

small;

(b) clarifying the nebulous doctrine of equivalents,

(c) clarifying law from the Bilski v. Kappos Supreme Court decision on machine or

transformation test and the eligibility of business methods for patents;

(d) clarify law on claim indefiniteness;

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1. First-To-File Replaces First-To-Invent

FTI: (Present Law)If two individuals invent the same thing, first to build and test (B&T) gets patent unless other conceives first and was diligent in B&T. Inventors can swear behind a cited patent with a date earlier than filing date.

FTF: (AIA Change Effective 2013 Mar 16) First to file a regular or provisional patent application will be entitled to the patent and another who files on same invention will get nothing, even if he or she invented it first and can prove it. Harmonizes US patent law with the rest of the world, but will create a race to the PTO and benefit those (e.g., large companies) who can afford to file a lot of provisional or regular patent applications. Interferences abolished. No more swearing behind patents with an earlier filing date Exception: if a company files an application, it can’t be rejected on any earlier application filed by the company so long as the earlier application was not published as of the filing date of the current application. AIA creates “derivation proceedings” to determine if one person “derived” or purloined the invention from another. If an inventor can prove derivation by another applicant, inventor will get other’s patent application. One-year grace period: Presently if an invention is published, in public use, or offered for sale up to one year before an application’s actual filing date, applicant can swear behind publication if can prove B&T or conception before publication followed by diligence. Under AIA, any publication, public use, or offer of sale before an application’s actual filing date will bar the application. Exception: if the actual inventor-applicant created the publication and it was made up to one year before the filing date, it will not bar the application. Still unwise for an inventor to publish before filing since they will lose foreign filing rights and others may see publication and file their own application on it, requiring expensive and uncertain derivation proceeding. Sec. 3. Effective 2013 Mar 16.

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Advice: Continue to document your conception and building and testing as in

Chapter 3 of PIY. Such evidence may be needed to prove derivation in case anyone

else copies the invention and files their own patent application on it. If you can

afford it, file provisional applications on your inventions and any improvements you

make as soon as possible and file your regular patent application within one year of

your earliest provisional to protect your rights. Be sure that each provisional

teaches how to make and use it in “full, clear, concise, and exact terms,” as

required by § 112 of the patent laws; otherwise you won’t be able to rely on your

PPA’s date.

2. New Fees And Funding The act raised PTO fees 15% effective 2011 Sep 26. Buy Prioritized Examination: A well-heeled inventor or company can buy prioritized examination of a patent application for $4800 (Large Entity) or $2400 (Small Entity). (“Gold rules the law,”) Limited to 10,000 applications the first year. Sec. 11. Effective 2011 Sep 26.

Paper Filing Surcharge: If you file your application in paper form, the PTO will impose a stiff $200 surcharge ($400 for large entities) and filing fee is $625 v. $530. Sec. 10. Effective 2011 Nov 15.

Micro-Entity Fee Reduction: A micro-entity will get a 75% reduction on most fees. ME is an employee of a college who is obligated to assign their invention to the college or an independent inventor (a) who has not filed more than five non-assigned patent applications in their lifetime, (b) whose gross income is less than three times the median US income, and (c) who has no obligation to assign and who has not assigned their application to a non-micro-entity. Sec. 10. Effective 2011 Sep

16. Real effective date est. to be 2012 Sept. Pro Bono Program: The AIA provides that “[t]he Director shall work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.” The PTO has not taken any action in this area yet so we don’t know what benefits will accrue to those that the Act euphemistically calls “under-resourced independent inventors and small businesses”. Sec. 32. Effective 2011 Sep 16.

4

Reserve Fund: The AIA establishes a PTO Fee Reserve Fund in the Treasury so that amounts collected in excess of the PTO’s appropriations for any year shall be held for PTO purposes. Sec. 22. Effective 2011 Oct 1.

3. Unpatentable Subject Matter--Tax Avoidance Schemes and Human

Organisms Sec. 33. Effective 2011 Sep 16.

4. Challenges To Or Supplemental Examination Of Patent Applications and

Patents The AIA provides several ways that patent applications and patents can be challenged or attacked. Patent Applications: Anyone can ask the examiner to consider prior art for any application before (A) a notice of allowance, or (B) the later of (1) six months after the publication of the application, or (2) the date of the first rejection of any claim of the application. Submission must state the relevance of the prior art and pay a fee. Sec. 6. Effective 2012 Sep 16.

Post-Grant Review Of Patents: Anyone can challenge a patent on any invalidity ground for nine months after it issues. Sec. 6. Effective 2012 Sep 16.

Inter-Parties Review Of Patents: Inter parties must be initiated after nine months after grant or after termination of post-grant review proceedings. Sec. 6. Effective

2012 Sep 16.

Supplemental Examination: A patent owner may request reexamination in order to have the PTO consider, reconsider, or correct any information relevant to the patent. Sec. 12. Effective 2012 Sep 16.

Transitional Provision For Business Method Patents: Transitional eight-year period whereby anyone can have the PTO review the validity of any business method patent (excluding those that are for technological inventions) based on prior art. Sec. 18. Effective 2012 Sep 16.

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5. Litigation:

Failure To Disclose Best Mode No Longer A Litigation Defense: Existing law (§ 112) still requires an applicant to disclose the best mode of practicing the invention, but failure to disclose no longer a litigation defense. Sec. 15. Effective 2011 Sep 16.

Multiple Defendants: A patent holder may sue multiple defendants in one suit only if the defendants are in same area and have committed related acts of infringement. Sec. 19. Eff. 2011 Sep 16.

Court Change: D.C. to VA: Suits against the PTO to compel it to grant a patent must now be brought in Fed. Ct. in the E. Dist. of VA. Sec. 9. Eff. 2011 Sep 16.

Patent Number Marking: Patentees may now comply with the patent marking statute by virtual marking, i.e., reference to an Internet site. Also only the U.S. may sue a patent owner for statutory damages for false marking but private parties may sue for compensatory damages due to false marking. Marking a product with an expired patent number is no longer a violation. Sec. 16. Effective 2011 Sep 16.

6. Miscellaneous

Ombudsman: The PTO must establish a Patent Ombudsman to investigate complaints and mediate settlements between (a) small businesses and independent inventors and (b) the PTO. Sec. 28. Effective 2012 Sep 16.

SIR Program Repealed: Statutory Invention Registration (SIR) program is repealed because inventors did not use this enough. Sec. 3. Effective 2012 Sep 16. Satellite PTO Offices: The PTO must open three new satellite offices. The PTO will open first one in Detroit. Purpose: to enable examiners to be interviewed more easily, but can an interview really be effective if the examiner in charge of the application is not in the satellite office? Sec. 23. Effective 2014 Sep 16.

For a full analysis go to Nolo.com; then Products & Services—Legal Updates; then Patent, Copyright & Trademark; then Major Changes Made To Patent Law; then an analysis of the AIA by David Pressman Site: http://www.intellectualpropertylawfirms.com/resources/intellectual-property/patents/america-invents-