Patent Clinic Wrap-Up

1. Patent ClinicWrap-Up Joe Barich Adjunct Professor

2. Overview • Your Patent Application • Where Do You Go From Here? • How To File With The PTO

3. 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

4. Where Do You Go From Here? • Must work with OTM to get filing clearance • Del Kranz (217) 333-9389 delkranz@uiuc.edu • 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

5. 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

6. 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

7. Working With Nick • Working with Nick is strictly voluntary • Please e-mail your patent application to Nick at nlenzen@lenzenip.com - (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

8. 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

9. 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

10. 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

11. 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

12. 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

13. 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

14. 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

15. 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!

16. 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

17. 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

18. 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 – jbarich@mhmlaw.com • Good Luck!

19. Questions? Thanks!