Patent Examination 2015 SBIR National Conference - PowerPoint Presentation

Slide1

Patent Examination 2015

SBIR National Conference

June 15, 2015Slide2

The Role of the Patent System

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Only non-provisional applications are examinedSlide3

Overview of IP: Patents Quid Pro Quo

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Discloses Invention

Time-Limited MonopolySlide4

What is a Patent?

A Property Right

Right to

exclude others

from making, using, selling, offering for sale or importing the claimed inventionLimited termTerritorial: protection only in territory that granted patent; NO world-wide patentGovernment grants the property right in exchange for the disclosure of the invention

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Overview of IP: The USPTO in 2014

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USPTO Headquarters in Alexandria, VASlide6

Overview of an Examiner’s Day and Week

Check Docket

Check Emails

Reference Reports

Patent Application Locating and Monitoring (PALM)Tracks and provides information to the examiner regarding patent application processing, examiner productivity, etc.,Electronic – Desktop Application Navigator (eDAN)Is an interface to PALM and other data available to the examiner

Examiner’s Dashboard

Office Action Correspondence Subsystem (OACS)

Creating outgoing patent correspondence and a tool for managing processing patent applications

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Attend Biweekly Art Unit MeetingsQuality Enhancement Meetings (QEM)

Schedule and prepare for Interviews

Consult with SPE and/or Primary regarding application

Amendment, New Case or after-final

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Overview of an Examiner’s Day and Week (cont’d)Slide8

Docket Management

First Actions

Amendments

After Finals

Special New CasesRCE

Track One Applications

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Working on an New Application

Read the Specification, claims and look at drawings

Claim tree and mapping

Check for informalities

SearchWrite up Office Action

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Why do Examiners search?

Learn technology

Keep abreast of state of the art

Ensure no prior art exists

Determine patentability

Evolution of Searching

Searching the shoes

Electronic SearchingSlide11

Search Options

Examiner’s Automated Search Tool (EAST)

Web Examiner Search Tool (WEST)

Allows examiner to view patents from their desktop using Internet Explorer

Scientific & Technical Information Center (STIC)Translations, Foreign Patent Resources, ITRPs,

IEEE

and ACM

Internet

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Search Options - EAST

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Cooperative Patent Classification

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The Cooperative Patent Classification (CPC) was initiated as a joint partnership between the USPTO and the EPO where the Offices have agreed to harmonize their existing classification systems (ECLA and USPC, respectively) and migrate towards a common classification scheme.

http://

www.uspto.gov/patents-application-process/patent-search/classification-standards-and-developmentSlide14

Technical Training

In-House Training

Quality Enhancement Meeting (QEM)

Office of Patent Training (OPT)

Computer Learning Center (CLC)Technology FairsUniversity Professors ScientistIndustry Experts

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Patent Examination Process Overview

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USPTO

Pre-Exam

Application is

filed

b

y Inventor

or Assignee

Notice of Allowance

USPTO Grants Patent

APPLICANT

EXAMINER

Amendment and/or argument

Abandonment

Rejection and/or objection

AppealSlide16

Patent Examination

Patent Examiner reviews contents of the application for compliance with all U.S. legal requirements

Initial burden is on the examiner: An applicant is entitled to a patent unless…

Requirements of U.S. Law are not met

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Subject Matter for Utility Patents

Utility patents are provided for a new, nonobvious and useful (35 U.S.C. 101):

Process

Machine

Article of manufacture Composition of matter Improvement of any of the above Slide18

Patentability Requirements

Invention must also be:

Novel (35 U.S.C. 102)

Nonobvious (35 U.S.C. 103)

Adequately described and enabled (35 U.S.C. 112(a))Claimed by the inventor in clear and definite terms

(35 U.S.C.

112(b))Slide19

Examination: Role of Patent Examiner

Issue Valid

Patents

Make

appropriate objectionsMake only reasonable rejectionsHelp applicant identify allowable

subject

matter

Act

as an advocate for the

PublicEnsure development of clear and complete file recordPatent prosecution before Office

should not be adversarial, instead it should be cooperative investigation between Examiner and Applicant, which ensures

Applicant receives a patent only for that which they are entitled to in accordance with Patent laws

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Patent Application Initiatives

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You can get to the program pages by selecting a tile.

There are numerous programs that may speed up the examination process

http://

www.uspto.gov/patent/initiatives/uspto-patent-application-initiatives-timelineSlide21

Track One – Prioritized Examination

Goal to

provide a final disposition within twelve months, on average, of prioritized status being granted. 

Fee – $

4000/$2000/$1000 as of 3/1/2015Claim Limits – 4 Independent, no more than 30 claims

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First Action Interview Pilot

Under this Program, an applicant is entitled to a first action interview, upon request, prior to the first Office action on the

merits.

Need to file a Petition.

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http://www.uspto.gov/patents/init_events/faipp_full.jspSlide23

Patent Prosecution Highway

What is

PPH?

Enables an applicant who has received a determination of allowable claims from one office to

obtain fast track processing

of corresponding claims in other offices.

A

system of

work sharing

that improves examination efficiency by

reducing duplication of effort

among patent offices.

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The Benefits

Rapid prosecution

Higher grant rates

Fast portfolio building

Significant

and meaningful cost savings for innovators, enabling more IP to be exploited!

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How Does PPH Work?

Applicant receives a positive examination result from a PPH participating office.

A national/regional office action indicating allowable claims

Patent Cooperation Treaty (PCT) Written Opinion or PCT International Preliminary Report on Patentability

Applicant files a PPH request in a corresponding application in another PPH participating office.

Once the PPH request is granted, the

examination of the application

in the second office is

expedited.

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After Final Consideration Pilot 2.0

AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection

.

http://www.uspto.gov/patents/init_events/afcp.jsp

6/9/2015

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Quick Path Information Disclosure Statement (QPIDS)

QPIDS eliminates the requirement for filing an RCE with an IDS filed after payment of the issue fee in order for the IDS to be considered by the examiner

.

Submitted Via EFS-Web as

e-petition.IDS fee $1806/9/2015

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Ombudsman Program

Enhances

the USPTO's ability to assist applicants or their representatives with issues that arise during patent application prosecution.

Contact an Ombudsman by:

http

://

www.uspto.gov/patents/ombudsman.jsp

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Thank You

www.uspto.gov

https://www.facebook.com/uspto.gov

@

http://www.youtube.com/user/USPTOvideo/Slide30