Patent Clinic Wrap-Up. Joe Barich Adjunct Professor. Overview. Your Patent Application Where Do You Go From Here? How To File With The PTO. Your Patent Application. Thanks for participating in the Patent Clinic! All inventors have now received and approved their patent applications
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Patent ClinicWrap-Up Joe Barich Adjunct Professor
Overview • Your Patent Application • Where Do You Go From Here? • How To File With The PTO
Your Patent Application • Thanks for participating in the Patent Clinic! • All inventors have now received and approved their patent applications • A hearty Thank-You to our Law Students • Mike Azzi Katie Hartnett • Justin Cook Jim Lovsin • Kevin Cukierski Ann Palma • Devon Curtis Josh Sibble
Where Do You Go From Here? • Must work with OTM to get filing clearance • Del Kranz (217) 333-9389 email@example.com • Send your patent application to the draftsman to have the figures rendered in compliance with PTO rules • Once you have OTM clearance and formal drawings, file your application with the PTO
Warning! - BAR DATES! • Remember! - U.S. has One Year Grace Period from date of first disclosure/commercialization • Foreign = No Grace Period – disclose/commercialize before filing and you blew it • Foreign rights can be preserved by filing an application in the U.S. before disclosure and then later filing foreign app claiming priority to U.S. app • If you have a date issue, tell the OTM and draftsman • You may also wish to consider filing a Provisional Application – see PTO website for details www.uspto.gov • Get your own attorney
Nick Lenzen – Patent Draftsman • Nick is a well-known professional draftsman who works with many firms in the Chicago area • For the law students – When the partner says “Get this done”, then it’s time to call Nick • Nick has graciously agreed to donate $1,000 of his time for each patent application • The Patent Clinic, TEC, and Inventors thank Nick for donating his services! • Nick will take the drawings prepared by the law students and render the drawings in accordance with the PTO’s arcane formal rules
Working With Nick • Working with Nick is strictly voluntary • Please e-mail your patent application to Nick at firstname.lastname@example.org - (312) 493-2584 • Include your phone # and reply e-mail as well as any bar date information if applicable • Nick will draft your drawings and return them to you in about 30 days • Due date to get drawings to Nick is May 30th
Filing The App At The PTO - 1 • Once we have filing clearance and drawings, it’s time to file at the PTO! • First, make sure that your patent application includes absolutely everything that you want in it. • You are typically not able to add or change your description after you file (claims can change) • Next, finalize inventorship – Make your best efforts to determine who should be listed as an inventor • Fraudulent inventorship may render your patent unenforcable
Filing The App At The PTO - 2 • We can file with the PTO either electronically or on paper – we will discuss paper because: • It is harder to screw up • Does not require you to have a PTO account • Forms needed: • Declaration • Fee Transmittal • Utility Patent Application Transmittal
Filing The App At The PTO - 3 • Declaration • Signed by all inventors – your official oath • See example in materials • Online at www.uspto.gov/web/forms/sb0001.pdf • If more than one inventor, use supplement www.uspto.gov/web/forms/sb0002_fill.pdf
Filing The App At The PTO - 4 • Fee Transmittal – You must include a check! • Online at: www.uspto.gov/web/forms/sb0017.pdf • “Small entity” – what it means • Regular filing fee (small entity) is $545 • Regular filing fee gives you 3/20 claims - pay for additional claims • Application size fee if more than 100 pages • You must include at least one claim in yourpatent application to be accepted by the PTO
Filing The App At The PTO - 5 • Utility Patent Application Transmittal • Online at: www.uspto.gov/web/forms/sb0005_fill.pdf • Include Express Mail Label No • You may also include the following: • Assignment – if the inventors are assigning their interest to a corporation • Information Disclosure Statement (IDS) – must disclose information material to patentability to the PTO
Filing The App At The PTO - 6 • Express Mail • Enter Express Mail No. on App Transmittal • Post Office to Addressee • Enter Your Return Address • Send to: Commissioner For Patents P.O. Box 1450 Alexandria, VA 22313-1450
Filing The App At The PTO - 7 • What if I screw it up? • As long as you include the specification and at least one claim, you will get a filing date • You may receive a Notice of Missing Parts if there is a problem with the Declaration or Fee • If so, you can just re-file the problem document with a small surcharge • It is recommended that you get your own attorney
After Filing • Congratulations! You are now Patent Pending! • You should receive a Filing Receipt in about 2-3 months • Good luck in your entrepreneurial endeavors!
Questions About Your Patent App - 1 • Can you represent yourself as “Patent Pending”? • Not until you actually file with the PTO • Will you get a patent if you file with the PTO? • No guarantees, you must go through the process and will start out being rejected • Can the law students continue helping you? • No, per agreement with University – You will need your own lawyer • E-mail me if you would prefer to be able to keep working with them so I can lobby University
Questions About Your Patent App -2 • Does having a patent app mean that you don’t infringe others? • No, novelty/patentability determination is distinct from infringement determination • Neither PTO nor the Patent Clinic examine infringement
Final Thoughts • Be conscious of your Bar Dates, if any • Be sure to get OTM clearance before filing • Work with Nick – it’s a great perk • Remember to include your check and Express Mail Number • All feedback is welcome – email@example.com • Good Luck!