patent processing – examination issues patent, trademark, and copyright - law and policy 5-8...

Patent Processing – Examination Issues

Patent, Trademark, and Copyright - Law and Policy5-8 November 2007 Amman, JordanGlobal Intellectual Property AcademyOffice of International RelationsUnited States Patent and Trademark Office

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Patent Processing- Examination of Patent Applications

Brief Introduction to Important Patent Statutes

Patent ProcessClaim InterpretationOwnership

Brief Introduction to Important U.S. Statutes

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Patent Processing- Brief Introduction to Important Patent Statutes

35 USC 101 35 USC 102 35 USC 103 35 USC 112 35 USC 119 and 120 35 USC 271(a)

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Important Statutes:Eligibility Utility

35 U.S.C. 101: “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”

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Important Statutes:Eligibility

Broad U.S. View of Patent Eligibility

Congress intended scope to include “Anything Under the Sun Made by Man” – Diamond v. Chakrabarty (447 U.S. 303, 317)

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ExceptionsThe U.S. Supreme Court has identified three categories of subject matter that are not patentable: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas

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Business MethodsIn determining whether an invention is patent eligible, U.S. Courts look to whether the claimed invention “as a whole” has a practical application that produces a “useful, concrete and tangible result”

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Eligibility

BiotechnologyIn order to be eligible for patenting, an invention must not be “natural phenomena”

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Eligibility

BiotechnologyDiamond v. Chakrabarty (447 U.S. 303,

317)

The U.S. Supreme court determined that a claimed micro-organism qualifies as patentable subject matter because it was made by man and it was not naturally occurring

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Important Statutes: Utility

Requires that an invention be considered useful, i.e., possess a specific, substantial, and credible utility

Some credible utility must be associated with the claimed subject matter

• View of a person of ordinary skill in the art- e.g., prevention of aging

Specific utility• Specific for the claimed invention

Substantial utility• Real-world use

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Important Statutes: Utility

Requires that an invention be considered useful, i.e., possess a specific, substantial, and credible utility

Some credible utility must be associated with the claimed subject matter

• View of a person of ordinary skill in the art- e.g., prevention of aging

Specific utility• Specific for the claimed invention

Substantial utility• Real-world use

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Important Statutes: Written Description, 35 USC § 11235 U.S.C. 112 Specification (first paragraph)

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

Must show adequate description of the invention to prove possession of the invention at the time application was filed.Policy

encourage disclosure of complete and accurate information

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Important Statutes: Enablement, 35 USC § 112

Minimum amount that is required to teach those of skill in the art how to make and use the invention without undue experimentation

Undue experimentation: Wands factors • quantity of experimentation necessary• amount of guidance presented• nature of the invention• breadth of claims • level of predictability• state of the prior art• working examples• level of skill in the art

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Important Statutes: Best Mode, 35 USC § 112

Statutory requirement to disclose at the time the application is filed, the preferred method of practicing the invention

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Important Statutes: Clarity Requirement, 35 USC § 112, second para.

The language of the claimed invention must be clear and unambiguous.

Understandable languageRelative terms

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Important Statutes: Right to an Earlier Filing Date, 35 USC §§ 119 and 120

35 U.S.C. 119 Benefit of earlier filing date; right of priority.(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed…

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Important Statutes: Patent Right, 35 USC § 271(a)

35 U.S.C. 271 Infringement of patent.

(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

Patent Process

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Patent Process: Contents of a U.S. Patent Application

A complete application comprises:(1) A specification as prescribed by 35 U.S.C. 112, including a claim or claims (2) An oath or declaration (3) Drawings, when necessary; and(4) The prescribed filing fee, search fee, examination fee, and application size fee.

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Patent Process: Contents of a U.S. Patent Application

Applications also frequently contain:

One or more priority documents;Sequence listings; andinformation disclosure statements

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Tentative Classification, Screenedfor Sensitive Contents

PICSElectronic Scanning

Licensing & ReviewSecurity Sensitive Cases

Separately Processed

Abandonments Examiner

Application Assigned to Examiner

Examiners First Action

Second Examiner ActionFinal Rejection or Allowance

Subsequent Examiner Action

Board of Patent Appealsand Interferences

Applicant Response

Applicant Response

Applicant Response

Examiner

Courts

Quality Review

Initial Data CaptureInitial Electronic

Capture for Printing and Issue

Patent Printed and Issued

Pre-ExaminationProcessing

(Office of InitialPatent Examination)

Examination ProcessingPost-Examination

Processing(Office of Patent Publication)

LEGENDNormal Processing SequenceAlternate Processing Sequence

Serial No. Assigned

Fees Recorded

Final Data CaptureFinal Preparation and Electronic Capture for

Printing and Issue

Administrative Examination, Filing Receipt Mailed

Patent Publication Division

Receipt & review of allowed case & papers

File Maintenance Facility

Match Post-Allowance Papers and Fees

The Patent Process

18 Month Publication of Patent Application

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Patent Process:Who may file a Patent Application?

In the United States, an application for a patent is filed by the inventor(s); they are “the applicant(s).” The basis for this is found in:

Article 1, Section 8 of the U.S. Constitution:• To Promote the Progress of Science…by securing for

limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries

35 U.S.C. 101• Whoever invents… may obtain a patent.

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Patent Process

After passing national security screening and formalities review, the application is assigned to a patent examiner for examination on the merits

Applicant is not required to separately request examination on the merits

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Patent Process:Examiner’s First Action

Examiner studies application and searches prior art relating to subject matter claimed

Reasons for any adverse action, objection, or requirement are stated in the action

If claims properly define over the prior art and application is otherwise in order, first action may be allowance

Patent Process:Claim Interpretation

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Is the careful consideration of

each and every word

in a claim to determine what the claim covers

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Give each word in a claim its broadest reasonable

interpretation consistent with the specification

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Patent Process: Claim Interpretation

A claim must be interpreted in light of the specification without reading limitations into the claim.

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Patent Process: Claim Interpretation Structural and Functional Limitations

Claims may have

structural, and/or

functional limitations

The prior art may disclose both kinds of limitations

Expressly or explicitly

Inherently or implicitly

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Inherency/Implied TeachingsPrior art reference inherently describes a claim’s limitation if

the limitation “naturally flows” from the reference,

i.e., it is necessarily, inevitably, or without question in the prior art reference (not possibly or probably)

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Structural LimitationsSuppose a claim cited:Claim 1. A container … solid, non-porous

walls…

Prior art reference – Petri Dish: Prior art reference – Aquarium:

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Intended Use Limitations

Intended Use – statements of expected future use

Prior art applied in a rejection must be capable of performing the intended use

Examples of intended use

…a brush for brushing hair…

…a brush for brushing teeth…

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Patent Application to Mitchell et al

Claim 1. A stool comprising a seat portion having a generally planar surface and four legs connected to the seat portion.

Claim 2. The stool of claim 1 wherein the stool glows in the dark.

Claim 3. The stool of claim 1 wherein two of the legs include wheels connected thereto.

Claim 4. The stool of claim 1 wherein the seat portion is wooden and includes openings therein for making the stool lighter in weight.


Claim 6. A stool consisting of a seat portion having a generally planar surface, four legs connected to the seat portion, and wherein two of the legs have wheels connected thereto.

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Prior art: DoehlerA bar stool





“Stool” Mitchell et al

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Prior art: DoehlerA bar stool




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Prior art: SandyU.S. Design PatentDate of Patent: Sep.3, 1994






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Prior art: SandyU.S. Design PatentDate of Patent: Sep.3, 1994




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Prior art: DrabickU.S. Patent No. 5,509,601Date of Patent: Apr. 23, 1996






Ownership

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Ownership

Why an examination issue? Pertains to who has the right to file

amendments in the application

In the US, the inventors have the right to file and “prosecute” the application Unless they have assigned that right to

another. To show assignment, the US requires a copy

of the assignment be recorded in the USPTO assignment records

Questions?

Karin FerriterE-mail: [email protected]: +1 571 272 9300

patent processing – examination issues patent, trademark, and copyright - law and policy 5-8...

Documents

important statutes

eligibility utility

credible utility

trademark office slide

patent processing examination

tangible result slide

claimed subject matter

eligibility broad