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Patents, General Information. Patent gives patentee the right to exclude others from making, using, offering for sale or selling the invention throughout the US or importing the invention into the U.S. (35 USC § 154 (a)(1))

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Patents general information

Patents, General Information

  • Patent gives patentee the right to exclude others from making, using, offering for sale or selling the invention throughout the US or importing the invention into the U.S. (35 USC § 154 (a)(1))

  • Generally, the term of a patent is twenty (20) years . Begins on date patent issued and ends 20 yrs from earliest appropriate filing date.

Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


Patents general information1

Patents, General Information

  • Types of Patent Protection

    • In US

      • Provisional Utility Patent

      • Utility ( this is your example hand-out)

      • Plant

      • Design

    • Foreign Countries

      • Many countries have a patenting system with a varying degree of similarity to the US

Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


Patents general information2

Patents, General Information

  • Patent Cooperation Treaty (PCT)

    • A number (126) of countries have agreed by treaty to simplify the application process in the member states by ratifying the PCT

    • Administered by the World Intellectual Property Organization (WIPO) www.wipo.int

Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


Patents general information3

Patents, General Information

  • Non-PCT member countries

    • Notably, many countries in Central and South America are not members of the PCT

    • Have to file within prescribed deadlines in each countryfrom the beginning of the process

Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


Patents general information4

Patents, General Information

  • Threshold for patentability

    • Novel - not invented before or found described in any printed publication (also known as Prior Art)

    • Non-obvious - no patent will issue if it would be obvious for a “person of skill in the art” to combine features present in the claimed invention which are found in the prior art

Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


Patents general information5

Patents, General Information

  • Threshold for patentability, cont’d

    • Useful - the goal of the patent act is to advance scientific learning for betterment of society

  • Statutory and Regulatory basis

    • 35 USC § 101 et seq. (United States Code)

    • 37 CFR § 1.1 et seq. (Code of Federal Regulations)

    • Manual of Patent Examining Procedure (MPEP)

Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


Patents general information6

Patents, General Information

  • Highlights of different statutes and rules

    • Inventor has one year in the US after public use or sale to file his application or he is absolutely barred (but sale or public use at any time before filing may cost him his foreign rights)

    • Not all subject matter is susceptible to patenting

Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


Patents general information7

Patents, General Information

  • “anything under the sun made by man” is the broad statement of patentable subject matter from Diamond v Chakrabarty, 447 US 303 (1980)

  • But,

    • phenomena of nature? NO

    • ideas? NO

    • mathematical algorithms? No

Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


Patents general information8

Patents, General Information

  • processes or methods for making something? Yes

  • compositions of matter? Yes

  • business methods using computers? Yes

  • Must file the patent application in the name of the inventor(s)

  • Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Patents general information9

    Patents, General Information

    • Hot Topics in the Patent Area

      • Pending Legislation

      • Patent Reform Bill (H.R. 2795] introduced in House of Representatives on June 8, 2005

      • As drafted will change “first to invent” (current US way) to “first to file” (most other nations)

      • Other technical changes are also included

      • If passed in its present form, will be a huge change in US patent practice

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Sample patent us 6 004 596

    Sample Patent, US 6, 004,596

    • [11] patent number -- 6,004,596

      • later patents (after Jan. 2, 2001) have document-type codes (kind codes)

        • US 6, 654,321 B1, US6, 654,322 B2 - issued patents either not published as an application (B1) or published (B2)

        • US 2001/001111 A1 patent application publication

        • US RE12,345 reissue utility patent

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Sample patent us 6 004 5961

    Sample Patent, US 6, 004,596

    • US PP12,345 Plant patent

    • US D654,321 Design patent

  • [45] date of issuance Dec. 21, 1999

  • [19] country US patent

  • Inventor, first named Kretchman et al.

  • [75] complete list of inventors and home cities and states

  • Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Sample patent us 6 004 5962

    Sample Patent, US 6, 004,596

    • [56] references cited

      • important since relative to duty of candor and duty of disclosure

      • US is only country which requires the patentee to submit documents he knows of which might serve to keep him from obtaining a patent

    • [57] abstract of the invention

    • Page one also includes a generic figure

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Sample patent us 6 004 5963

    Sample Patent, US 6, 004,596

    • Figures form next pages

    • Numbered by sheets (i.e., 1 of 4)

    • Figures are required for mechanical inventions

    • Written Description is next

      • 2 column format

      • lines numbered in center

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Sample patent us 6 004 5964

    Sample Patent, US 6, 004,596

    • Find Column 4, line 15

    • The “claims” begin here

    • Claims must particularly point out and distinctly claim the subject matter the applicant regards as his invention

    • you get 20 claims for your initial fee, any extra claims cost extra

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Sample patent us 6 004 5965

    Sample Patent, US 6, 004,596

    • Claim drafters use odd language such as “said” for “the”

    • Different art areas have various words and phrases that sound odd to the layman

    • “urging device” for a spring

    • Website for free printing of patent in its entirety www.freepatentsonline.com

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Topics for paralegals

    Topics for Paralegals

    • Skills needed (by our personnel)

      • General computer literacy

      • MS Word - word processing program

      • Corel WordPerfect - word processing program

      • MS Excel - spreadsheet program

      • Internet search techniques, Windows Explorer

      • Time Matters - document retrieval system

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Topics for paralegals1

    Topics for Paralegals

    • IP Forms - data entry program specific to IP law

    • Acrobat Professional - form writing program

    • Lotus Notes - email program

    • Case Tracking System (CTS) - data entry program specific to IP law

    • West Law - case law search program

    • New Fast Case - case law search, free from LSBA

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Topics for paralegals2

    Topics for Paralegals

    • Typical Tasks

      • Review incoming correspondence, identify type, case no. and need for time-sensitive docket tracking entry

      • Enter correspondence into one of two docket tracking systems (CTS or Time Matters)

      • Double docketing is preferred by malpractice insurers

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Topics for paralegals3

    Topics for Paralegals

    • Draft correspondence to appropriate authority, clients, foreign associates

    • Assist attorneys in patent application process

      • Conduct prior art search using USPTO website and EPO website (requires special techniques)

      • Format case when drafted by attorney to provide correct spacing and paragraph numbering

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Topics for paralegals4

    Topics for Paralegals

    • Formalize drawings from draftsman

    • Prepare forms to be filed with the drafted case; number and kind vary depending on the authority being applied to (USPTO or PCT)

    • Prepare Information Disclosure Statements, listing prior art known to the applicant

    • Calculate the costs of the application based on the number of claims, pages and type of applicant

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Topics for paralegals5

    Topics for Paralegals

    • Patent Prosecution Process

      • After the application is filed, there is correspondence back-and-forth with the USPTO

      • Accurate docketing of deadlines is extremely important to avoid loss of rights

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Patents general information

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


    Conclusion

    Conclusion

    • Questions?

    • Comments?

    Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com


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