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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))

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Patents, General Information

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  1. 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

  2. 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

  3. 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

  4. 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

  5. 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

  6. 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

  7. 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

  8. 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

  9. 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

  10. 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

  11. 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

  12. 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

  13. 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

  14. 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

  15. 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

  16. 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

  17. 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

  18. 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

  19. 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

  20. 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

  21. 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

  22. 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

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

  24. Conclusion • Questions? • Comments? Brenda Harvey, Attorney Sieberth & Patty LLC www.patentcounsel.com

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