What’s an IP Strategy?Patents – An Overview

September 21, 2016

Elizabeth L. DoughertyDirector of Inventor Education, Outreach, & Recognition, The Office of Innovation Development

Presentation Outline

Setting the Stage: • IP Introduction – IP is Business Strategy• Patents Basics• Resources for Inventors, Innovators, and

Entrepreneurs

Setting the Stage

What’s inside the black box?

USPTO Alexandria Headquarters

5

Satellite Office Program

INTRODUCTION

IP Strategy IS a Business Strategy

IP:• Is attractive to investors and buyers• Deters infringement lawsuits• Can increase leveraging power

– Mergers and acquisitions• Is a property right than can add value to a

company’s assets• Is Global2/12/2016 5

Developing an IP Strategy

• Assess your company’s IP assets and prioritize• Know your competition & what they’re up to• What’s the pace of innovation &

opportunities for growth?• Determine the best way to protect your IP

– Patents (Utility, Design, Plant),– Trademarks (Trademark, Service Marks, geographic certification, etc.)– Copyrights– Trade Secrets

• Develop a plan, set goals and implement• Get help!

Overview of IP: Types

TrademarksProtects marks in commerce that indicate the source or origin of goods or servicesSource: Federal, State, and Common Law

CopyrightsProtects original (art) works fixed in a tangible mediumSource: U.S. Const., Art. I, Sec. 8

Trade SecretsProtects commercially valuable informationSource: State and Common law

PatentsProtects inventionsSource: U.S. Const., Art. I, Sec. 8

Intellectual Property

PATENTS

What is a Patent?A grant by the U.S. Government conferring to an inventor the right to exclude others from the:

•manufacture•sale or offering for sale•use•or importation of her/his invention in/into the U.S.

For a limited period of timeU.S. system is a quid pro quo system

Patents are territorial.

UtilityNew and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

DesignAny new, original and ornamental design; protects the way an object appears

PlantWhoever invents or discovers and asexually produces any distinct and new variety of plant

Types of Patents

Provisional - one year period, no claims required, written disclosure must meet same requirements as non-provisional, not allowed for design.

Non-Provisional - claims required, written disclosure must meet requirements of 35 USC 112 1st paragraph. Examined for patentability, can result in a patent.

Provisional and Non-Provisional Patent Applications

United States is a First Inventor to File System!• Looking for international protection?

– You’ll want to file before public disclosure

• Only want US protection?– You can file within one year after public

disclosure

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When should you file a patentapplication?

Get patent protection fast!• File a Provisional application

– Lock in filing date & preserve foreign filing rights– Adds to patent term

• Enter Track One– Accelerates examination process (avg. < 1year)

• Get Help!– Work on an IP strategy– Seek Pro Bono Assistance or the assistance of a

registered practitioner– Talk to the examiner!

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Help for Applicants

RESOURCES AND OPTIONS

STOPfakes.govOne-stop shop for U.S. government tools and resources (from multiple agencies) on intellectual property rights (IPR)Provides information and assistance on IPRprotection including:

IPR protection in the U.S.IPR protection abroadHow to report counterfeit and falsely labeled goods

Resources – USPTO on the web

www.uspto.gov

Features of the websiteApply online for a patent using EFS-WebObtain status of a patent applicationDetermine 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 databaseSearch patent classificationDownload forms and fee schedulesInformation about Pro Se and Pro Bono programsInventors Assistance Center (AIC), IP Awareness Assessment Tool, Patents Ombudsman Program, scam prevention

Inventor & Entrepreneurs Resources

Wide variety of resources to help Independent Inventors and EntrepreneursPro Se, Pro Bono, Education & Information, Current Events, State Resources, and morehttp://www.uspto.gov/learning-and-resources/inventors-entrepreneurs-resources

Provide access to resources such as PubEAST and PubWEST, examiner-based search systemsDirect you to information and explain the application process and fee scheduleDemonstrate how to use search tools to conduct a patent or trademark searchShow you a directory of local patent attorneys who are licensed to practice before the USPTOOffer classes on intellectual property (varies by location)Offer assistance on how to do historical research patents and trademarksShow you how to track current research by company or nonprofitHelp you find assignee information and much more

Pro Bono ProgramIn general there are 3 basic requirements:Income below a certain thresholdKnowledge of the patent systemPossession 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 ApplicantsWalk-in assistance for the general public at USPTOheadquarters in Alexandria, VATargeted support to connect applicants with relevant resources and informationOnline 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 / $70Search fee: $600 / $300 / $150Examination fee: $720 / $360 / $180Issue fee: $960 / $480 / $240Non-electronic filing fee: $400 / $200 / $200

Design (Large Entity / Small Entity / Micro Entity)Basic filing fee: $180 / $90 / $45Search fee: $120 / $60 / $30Examination fee: $460 / $230 / $115Issue 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 entity2. Has not been named as an inventor on more than 4

previously filed patent applications3. 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.

Certification of Micro Entity StatusForm PTO/SB/15Ahttp://www.uspto.gov/sites/default/files/forms/sb0015a.pdf

IP Awareness Assessment ToolThe IP Assessment includes the 5 general categories that are included in all assessments.

IP Strategies & Best PracticesInternational IP RightsIP Asset Tracking LicensingTechnology to OthersUsing Technology of OthersThere are 5 additional categories that all can take or, which may be customized through a Pre-assessment.CopyrightsDesign PatentsTrademarksTrade SecretsUtility Patents

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

Resources- Utility Patent Application Guide:

www.uspto.gov/patents/resources/types/utility.jsp

- Patent Process: www.uspto.gov/patents/process/index.js

- USPTO Patent Search Guide: www.uspto.gov/patents/process/search/index.jsp

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

- Inventor resources: www.uspto.gov/inventors/patents.jsp

- Micro Entity Limit: www.uspto.gov/patents/law/micro_entity.jsp

- Pro Bono Program and video on patent process:www.uspto.gov/inventors/proseprobono

- Law School Clinic Program:www.uspto.gov/ip/boards/oed/practitioner/agents/law_school_pilot.jsp

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

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Thank YouElizabeth.dougherty@uspto.govinnovationdevelopment@uspto.gov

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