what you need to know about the uspto · patent pro bono program • the america invents act (aia)...

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UNITED STATES PATENT AND TRADEMARK OFFICE

A full transcript of this presentation can be found under the “Notes” Tab.

What you need to know about the USPTO

Sue A. Purvis Outreach and Education Advisor

Office of Innovation Development


OUTLINE

• Overview of Intellectual Property

• Resources offered by the USPTO before application is filed

• Resources offered during patent prosecution

• Resources offered after a patent is obtained

• Additional resources

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Overview of Intellectual Property

Utility Patent Design Patent Trade Secrets Copyrights Trademarks

What is protected

Inventions – Process, machine, manufacture, or composition of

matter

Ornamental characteristics

embodied in, or applied to, an article

of manufacture

Business-related information (formulas,

techniques, information)

Art, in an all-encompassing sense

Marks that indicates the source or origin of goods or services

Requirements Utility, novelty, and

nonobviousness

Novelty and

nonobviousness

Commercial value,

generally not known,

and reasonable efforts

of secrecy

Original, authorship,

and fixation in a

tangible medium

Use in commerce and

either distinctiveness

or secondary

meaning

Protects Against…

Making, selling,

offering for sale, and

importing

Making, selling,

offering for sale, and

importing

Stealing Copies,

performances,

displays, and

derivative works

Use of a mark that

causes the likelihood

of confusion

Endures until…

20 years from filing

date

15 years from

issuance

Publicly disclosed The life of the author

+ 70 years

Abandoned

Rights of Independent Third Party Creators

None None Full Full None

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IP Awareness Assessment

• The IP Awareness Assessment, developed under the joint efforts of United

States Patent and Trademark Office (USPTO) and National Institute of Standards and Technology/Manufacturing Extension Partnership (NIST/MEP), allows you to assess your intellectual property awareness. Following the completion of the assessment, you will receive customized training material.

• http://www.uspto.gov/inventors/assessment/index.html

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http://www.uspto.gov/inventors/assessment/index.html

http://www.uspto.gov/inventors/assessment/index.html

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Patent Pro Bono Program

• The America Invents Act (AIA) encourages the United States Patent and Trademark Office (USPTO) to “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.”

• http://www.uspto.gov/inventors/proseprobono/index.jsp

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Law School Clinical Programs

6/25/2014 6 http://www.uspto.gov/ip/boards/oed/practitioner/agents/law_school_pilot.jsp

http://www.uspto.gov/inventors/proseprobono/index.jsp

http://www.uspto.gov/inventors/proseprobono/index.jsp

http://www.uspto.gov/ip/boards/oed/practitioner/agents/law_school_pilot.jsp

http://www.uspto.gov/ip/boards/oed/practitioner/agents/law_school_pilot.jsp

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Patent and Trademark Resource Centers

• A nationwide network of public, state and academic libraries that are designated by the USPTO to disseminate patent and trademark information and to support intellectual property needs of the public.

• Located in almost every state - http://www.uspto.gov/products/library/ptdl/locations/index.jsp

• PTRC library staff can assist with the following: – Provide access to resources PubEAST and PubWEST, examiner-based search systems

– Explain the application process and fee schedule

– Demonstrate how to use search tools to conduct a patent or trademark search

– Share a directory of local patent attorneys who are licensed to practice before USPTO

– Offer classes on intellectual property (varies by location)

– Offer assistance on how to do historical research on patents and trademarks

– Show how to track current research by company or nonprofit

– Help find assignee information and much more

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Cooperative Patent Classification

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The Cooperative Patent Classification (CPC) was initiated as a joint partnership between the USPTO and the EPO where the Offices have agreed to harmonize their existing classification systems (ECLA and USPC, respectively) and migrate towards a common classification scheme.

http://www.uspto.gov/products/library/ptdl/locations/index.jsp



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Cooperative Patent Classification

• CPC Products via www.cpcinfo.org

• Training e-learning modules by

– the USPTO (http://www.uspto.gov/patents/resources/classification/CPC_Training.jsp)

– the EPO European Patent Academy (https://e-courses.epo.org/course/view.php?id=167)

• Questions - [email protected]

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Micro Entity

• Requires Certification of Micro Entity Status: – Qualifies as a small entity (less than 500 employees);

– Has not been named as an inventor on more than 4 previously filed patent applications;

– Did not, in calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding 3 times median household income; and

– 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 calendar year preceding the calendar year in which applicable fee is paid, had a gross income exceeding 3 times the median household income.

• Use Form PTO/SB/15A

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USPTO Patent Application Initiatives

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Prior to Examination

During Examination

After Close of

Prosecution

After Notice of Appeal

After Payment of Issue Fee

http://www.uspto.gov/patents/init_events/patapp-initiatives-timeline.jsp


Tools Prior to Examination

Track One – Prioritized

Examination

Full First Action Interview Pilot

Global Patent Prosecution

Highway ( IP5 - 1/6/14)

Patent Prosecution Highway (PPH 2.0, includes PCT PPH

2.0)

Glossary Pilot Ombudsman

Program

6/25/2014 12 http://www.uspto.gov/patents/init_events/patapp-initiatives-prior.jsp






http://www.uspto.gov/patents/init_events/patapp-initiatives-prior.jsp





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Track One – Prioritized Examination

• Fee – $4000/$2000/$1000

• Claim Limits – 4 Independent, no more than 30 claims

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Track One Office Time/Applicant Time – Track One Vs. Total Pendency (12-month Rolling Average through March 2014)

19.9

4.5

23.5

5.7

7.1

4.8

9.9

6.1

3.3

2.6

4.6

3.1

0.0

4.0

8.0

12.0

16.0

20.0

24.0

28.0

32.0

36.0

40.0

44.0

12-Mth Avg Thru Mar NotIncluding RCEs

Track One 12-Mth Avg Thru MarNot Including RCEs

12-Mth Avg Thru Mar IncludingRCEs

Track One 12-Mth Avg Thru MarIncluding RCEs

Mo

nth

s

Time Awaiting First Action Prosecution Time With Applicant Prosecution Time With Office

No RCEs RCEs Included

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First Action Interview Pilot

• Under this Program, an applicant is entitled to a first action interview, upon request, prior to the first Office action on the merits.

• Need to file a Petition.

6/25/2014 15 http://www.uspto.gov/patents/init_events/faipp_full.jsp


Global PPH and PPH 2.0

• Global PPH – IP5 Simplify forms and harmonize procedures for almost all countries. Applicant receiving a ruling from One Patent Office that at least one claim in an application filed is patentable may request that a Second Patent Office expedite examination.

• PPH 2.0 – procedures may vary from country to country includes PCT applications.

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http://www.jpo.go.jp/ppph-portal/globalpph.htm

http://www.uspto.gov/patents/init_events/pph/index.jsp

http://www.uspto.gov/patents/init_events/pph/pph_epo.jsp

http://www.uspto.gov/patents/init_events/faipp_full.jsp






http://www.uspto.gov/patents/init_events/pph/pph_epo.jsp

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Glossary Pilot Program

• Begins June 2, 2014 and will run for six months

• White House Executive Action 2: Tightening Functional Claiming – “The PTO will * * * over the next six months develop strategies to improve claim clarity,

such as by use of glossaries in patent specifications to assist examiners in the software field.”

• Federal Register 79, 17137 (March 27, 2014)

• http://www.uspto.gov/patents/init_events/glossary_initiative.jsp 6/25/2014 17


Tools During Examination

Petition to Make Special

Ombudsman Program

General Interview Practice

IDS – Certification

or Fee 6/25/2014 18 http://www.uspto.gov/patents/init_events/patapp-initiatives-during.jsp

http://www.uspto.gov/patents/init_events/glossary_initiative.jsp

http://www.uspto.gov/patents/init_events/glossary_initiative.jsp

http://www.uspto.gov/patents/init_events/patapp-initiatives-during.jsp





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Ombudsman Program

• Enhances the USPTO's ability to assist applicants or their representatives with issues that arise during patent application prosecution.

Contact an Ombudsman by:

http://www.uspto.gov/patents/ombudsman.jsp

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6/25/2014 20 http://www.uspto.gov/patents/law/ipractice/index.jsp




http://www.uspto.gov/patents/law/ipractice/index.jsp

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• The USPTO encourages examiners to take a proactive approach to examination by reaching out and engaging our stakeholders in an effort to resolve issues and shorten prosecution.

• WebEx – Video conferencing tool that allows examiners and stakeholders to share information and collaborate in real time.

• Public Interview Room - Private room on the USPTO campus to hold video conferences via WebEx with remote examiners. • Established in Alexandria and Detroit. • Examiners will reserve the room.

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Tools After Close of Prosecution

After Final Consideration Pilot

2.0

Pre-Appeal Program

Ombudsman Program


Quick Path Information Disclosure

Statement (QPIDS)

6/25/2014 22 http://www.uspto.gov/patents/init_events/patapp-initiatives-after.jsp

http://www.uspto.gov/patents/init_events/patapp-initiatives-after.jsp





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After Final Consideration Pilot 2.0

• AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection.

• http://www.uspto.gov/patents/init_events/afcp.jsp

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Quick Path Information Disclosure Statement (QPIDS)

• QPIDS eliminates the requirement for filing an RCE with an IDS filed after payment of the issue fee in order for the IDS to be considered by the examiner.

• Submitted Via EFS-Web as e-petition.

• IDS fee $180

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http://www.uspto.gov/patents/init_events/afcp.jsp

http://www.uspto.gov/patents/init_events/afcp.jsp

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Tools After Notice of Appeal

After Final Consideration Pilot

2.0

Pre-Appeal Program

Ombudsman Program


Quick Path Information Disclosure

Statement (QPIDS)

6/25/2014 25 http://www.uspto.gov/patents/init_events/patapp-initiatives-after.jsp


Pre-Appeal Program

• An avenue to request that a panel of examiners formally review the legal and factual basis of the rejections in their application prior to the filing of an appeal brief.

• Requires Notice of Appeal Fee

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Patent Litigation Online Toolkit

Been Sued or Gotten a Demand Letter? • Answers To Common Questions About Abusive Patent Litigation

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STOPfakes.gov

• STOPfakes.gov was launched to serve as a one-stop shop for U.S. government tools and resources on intellectual property rights (IPR). The federal agencies behind STOPfakes.gov have developed a number of resources to educate and assist businesses, particularly small and medium-sized enterprises (SMEs), as well as consumers, government officials, and the general public.

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IP Attaché Program

• USPTO IP Attachés help improve intellectual property systems internationally.

• Assisted businesses in the protection and enforcement of their IP rights by...

– Seeking improvements in policies, laws, and regulations

– Educating host government officials on IP matters

– Building grassroots support for U.S. policy positions by conducting public awareness programs on IP

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IP Attaché Program

• IP ATTACHÉ ASSIGNMENTS – Bangkok, Thailand (covering Southeast Asia)

– Beijing, China (covering China)

– Kuwait City, Kuwait (covering the Middle East and North Africa)

– Geneva, Switzerland (covering the WTO and WIPO)

– Guangzhou, China (covering China)

– Mexico City, Mexico (covering Mexico, Central America, and the Caribbean)

– Moscow, Russia (covering Russia and the Commonwealth of Independent States)

– New Delhi, India (covering South Asia)

– Rio de Janeiro, Brazil (covering South America)

– Shanghai, China (covering China)

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USPTO Public Engagement

• Software Partnership

• Biotechnology/Chemical/Pharmaceutical Customer Partnership

• TC3700 Medical Devices and TC1600 BioTech Customer Partnership

• Additive Manufacturing Partnership

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Satellite Office Program

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Expanded Outreach in NYC

• U.S. Department of Commerce partners with Cornell University to provide commercialization support to the innovation community in New York City as a part of the Cornell Tech Campus.

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Office of Innovation Development

• New office created in 2011 is an expansion of the Independent Inventor Program and University Outreach Program

• Now more focus on small businesses, technology transfer, and entrepreneurship

• Inventors Eye Newsletter

http://www.uspto.gov/inventors/index.jsp

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16th Annual Inventor Conference

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USPTO Outreach Initiatives

• Inventors Assistance Center (IAC)

• Office of Education and Outreach

• Global Intellectual Property Academy (GIPA)

• Trademark Outreach

• For more information on Patents and Trademarks…1-800-PTO-9199

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Patents for Humanity

• It’s not about charity – innovative models show that commercial markets and human progress can go hand in hand.

• You could receive – Accelerated USPTO processing of

any technology in your portfolio*

– Recognition by government, media, and industry

– New contacts and opportunities to advance your work.

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http://www.uspto.gov/patentsforhumanity


A full transcript of this presentation can be found under the “Notes” Tab.

Thank You

[email protected]

www.uspto.gov

https://www.facebook.com/uspto.gov

@uspto

http://www.youtube.com/user/USPTOvideo/

http://www.uspto.gov/patentsforhumanity

http://www.uspto.gov/

https://www.facebook.com/uspto.gov

http://www.youtube.com/user/USPTOvideo/

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