# Presentation: 540059

## John Calvert
Supervisory Patent Examiner
John.calvert@uspto.gov

*Application Preparation*

- John Calvert
- Supervisory Patent Examiner
- John.calvert@uspto.gov

##  WHAT IS A PATENT ?

- A grant by the U.S. Government conferring to an inventor the right to exclude others from the:
- manufacture
- sale or offering for sale
- use
- or importation
-      of her/his invention.

- General Information

**Notes:**
Three Types of Patents

1. Utility - inventions that function in a unique manner to produce a utilitarian result.

2. Design - covers the unique ornamental or visible shape of a non-natural object.

3. Plant - covers asexually reproducible plants (flowers)

## WHAT CAN BE PATENTED ?

- MACHINE
- ARTICLE OF MANUFACTURE
- PROCESS
- COMPOSITION OF MATTER
- IMPROVEMENTS IN ANY OF THE ABOVE

- General Information

**Notes:**
MACHINES - devices or things used for accomplishing a task.

Articles of Manufacture - items that have been made by human hands or by machines.

PROCESS - ways of doing or making things that involve more than purely mental manipulations.

COMPOSITION of Matter - Chemical compositions

NEW USES - the inventive act here isn't the creation of a new thing or process per se, but the discovery of a new use for something that in itself is old.

## WHAT CANNOT BE PATENTED?

- INVENTIONS WHICH:
- Are NOT NEW (lack novelty)
- Were “made PUBLIC” more than one year prior to patent application filing date
- Are OBVIOUS variations of known technology
- Lack UTILITY (or usefulness)
- Are not adequately described or enabled
- Are mere abstract ideas,laws of nature or natural phenomena
- Are not clearly and concisely claimed

- General Information

**Notes:**
NOVELTY - Chair with four legs

OBVIOUSNESS - Chair with five legs

UTILITY  - INOPERABLE - Chair with no legs -levitated
Another example is a chemical for which a use hasn't yet been discovered. Perpetual motion machines.

DISCLOSURE - Describe clearly

## WHO MAY APPLY FOR A U.S. PATENT ?

- Application must normally be in the inventor’s name.
- Anyone...from anywhere may apply, with only one exception*

- General Information

## WHO MAY NOT APPLY ?

- Officers and employees of the U.S. Patent & Trademark Office

- General Information

## Types of Applications

- Provisional Application
- Non-Provisional Application

## Provisional Applications

- Provisional Application
-  	Is NOT Examined
- 	Does NOT mature to a PATENT
-  	Pendency lasts only 12 MONTHS
-  	Establishes earliest Date of Priority for your invention
-  	Simple filing requirements

## Provisional Applications

- Provisional Application - Cont’
- 	Filing Requirements:
-  Signed Cover Letter - available online
-  Detailed ENABLING description of Invention including any necessary Drawings.  Must be in compliance with 35 USC 112 1st Paragraph
- fee
-  	Biggest Benefit:
-  Adds up to ONE Year to Patent Term
-  Gives time to perfect the filing of the Non-Provisional  Application
-  Interim Patent Pending Rights

## Non-Provisional Applications

- More complex filing requirements
- Is examined by a Patent Examiner
- May mature to a Patent
- Last 20 years from date of filing
- Can claim benefit to filing date of Provisional Application (if Provisional Application was previously filed)

## Non-Provisional Application

- Application Requirements
-  Written Description (Specification)
-  Claim(s) - at least one
-  Drawing(s)  (usually required)
-  Executed Oath and Declaration
-  Fee
- Filing Date
-  Date Received in the USPTO
-  Express Mail Certificate
-  Certificate of Mailing will NOT establish filing Date

**Notes:**
Largest Recipient of Over Night Mail in World

## Other Parts - Recommended

- Transmittal Sheets
- Application Transmittal
- Fee Transmittal
- Express Mail label
- Prior Art - Information Disclosure Statement
- Nucleotide or Amino Acid sequences - when necessary
- Application Data Sheet - Print EFS

## Parts, Form and Content

- Title,
- Cross-Reference to Related Applications,
- Statement Regarding Federally Sponsored Research or Development,
- Background of the Invention,
- Brief Summary of the Invention,
- Brief Description of the Drawings,
- Detailed Description of the Invention,
- Claims,
- Abstract, &
- Drawings
- Sequence or Computer Program Listings

## Application Preparation

- Accurate Title
- Our Example: IMPROVED PAPER CLIP
- TITLE:  PAPER CLIP WITH LATERAL           SERATED INDENTATIONS FOR GRIPPING
- Proper headings in written disclosure presented as double spaced document
- Use generic terminology - avoid trade names

## Generic Terminology

**Liquid Paper****	**

- correction fluid

**Mylar****	**

- polyester film

**Velcro**

- hook and loop fastener

**Lycra**

- expanded polyurethane

**Xerox **

- electrophotographic copying machine

## Example of Disclosure Format

_**TITLE**_
- PAPER CLIP WITH LATERAL SERATED INDENTATIONS FOR GRIPPING
_**BACKGROUND OF THE INVENTION**_
**This invention relates to paper clips...**
_**SUMMARY OF THE INVENTION**_
**The invention is directed to a unique paper clip...**
_**BRIEF DESCRIPTION OF THE DRAWINGS**_
**FIG 1 is a perspective view of...**
_**DETAILED DESCRIPTION OF THE INVENTION**_
**Referring to the figures of drawings...**

## Abstract of the Disclosure

- Limit to concise explanation of invention
- 		do not use legal language (said, comprise, means, etc.)
- 		provide structure not merits of invention
- 		write as a quick look at the invention to draw interest
- 		should be limited to a single paragraph

-  Limit the Abstract to between 50 and 150 words

## Inventor Declaration

## Transmittal Letter

## Certificate of Mailing[Use for Post-Filing Correspondence]

- I hereby certify that this correspondence is being
- deposited with the United States Postal Service with
- sufficient postage as first class mail in an envelope
- addressed to:
- Assistant Commissioner for Patents
- Washington, D.C. 20231
- on _________. (Date)
- Typed or printed name of person signing this
- certificate:  ___________________________
- Signature:  ___________________________

## Certificate of Transmission[Cannot be used for application filing]

- I hereby certify that this correspondence is being facsimile
- transmitted to the United States Patent and Trademark
- Office, Fax No.(703) ____ - _______ on
- _________________ (Date).
- Typed or printed name of person signing this
- certificate:  ___________________________
- Signature:  ___________________________

## Information Disclosure Statement [IDS]

## Assignment of Application

## Filing your Application

- Use express mail [37 CFR 1.10]
- Include a self addressed post card identifying all papers mailed to PTO (i.e., 14 pages of Specification, 5 claims, 3 drawings, etc.)
- Identify the first page of all papers with applicant’s name and title of invention
- Make copies of all correspondence to and from the PTO
- Include all necessary Fees

## Forms of intellectual property protection

- COPYRIGHTS  - Library of Congress
- TRADEMARKS - U.S. Patent & Trademark Office
- PATENTS - U.S. Patent & Trademark Office
- TRADE SECRETS

- General Information

## Forms of intellectual property protection

- TRADEMARK - U.S. Patent & Trademark Office
- Word, phrase, symbol or design, which identifies and distinguishes the source of the  goods or services of one party from those of others.
- Term - 10-year term with 10-year renewal terms

- General Information

- Trade Secrets
- Not protected by U.S. laws
- No recourse for infringement
- Works only if product cannot be reverse engineered

## Forms of intellectual property protection

- COPYRIGHT  - Library of Congress
- Protects “original works of authorship” including literary, dramatic, musical, artistic and certain other intellectual works.
- Term - Author’s life + 70 years

- General Information

## Resources

- http://www.uspto.gov
- 1-800-PTO-9199