# Presentation: 898807

## Charles R. Eloshway
Patent Attorney
Office of International Relations
U.S. Patent and Trademark Office

**Patent Attorney**
**Office of International Relations**
**U.S. Patent and Trademark Office**

**         **

**Conference on Intellectual Property in the Global Marketplace**

**Patents, Trade Secrets ****and Unfair Competition**

## Constitutional basis in Article I, Section 8.
“Congress shall have the power ... to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
First patent law was enacted in 1790
The present law is codified in Title 35 of the United States Code

**“****Congress shall have the power ... to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”**
**First patent law was enacted in 1790**
**The present law is codified in Title 35 of the United States Code**

**Basis for Protection**

## A form of personal property granted by the U.S. government giving the owner the right to exclude others from making, using, selling, offering for sale or importing the claimed invention for a period of 20 years from the application filing date

**What is a U.S. Patent?**

## What is a U.S. Patent?

**What is a U.S. Patent?**

***Quid pro quo*****—in exchange for 20 years of exclusive rights, the inventor must explain how to make and use the invention in sufficient detail**
**IMPORTANT!—A U.S. Patent provides protection only in the United States**
**IMPORTANT!—The patent owner enforces the patent, not the U.S. government**

## +

**the U.S. Economy**

**Stimulating Innovation and Economic Growth by Protecting Investment**

**+**

## Text equivalent for Slide 5

**Research & Development**
**PLUS**
**Industry & Business**
**RESULT in Patent Applications that are**
**submitted to USPTO**
**USPTO puts out Quality Patents**
**RESULT: Stimulating Innovation and Economic Growth by Protecting Investment**

## Types of U.S. Patents

**Utility patent**
**Protects articles of manufacture, compositions of matter, machines, or processes, or improvements**
**Term: 20 years from the application filing date**
**Plant patent**
**Protects most asexually reproduced plants**
**Term: 20 years from the application filing date**
**Design patent**
**Protects new, original and ornamental designs**
**Term: 14 years from the date of grant**

## Types of U.S. Patent Applications

**Provisional utility application**
**Not available for design patents**
**Non-provisional application**
**Most commonly filed application**
**Patent Cooperation Treaty (PCT) application**
**International filing mechanism**
**Hague Agreement on Industrial Designs Application**
**International mechanism for protecting industrial designs (the U.S. is in the process of ratifying and implementing this treaty)**

## A low-cost way to establish an earlier effective filing date for a later-filed non-provisional patent application with fewer formalities
Does not mature into a patent
Does not require: 
An oath/declaration
A claim
An information disclosure statement (prior art)

**Does not mature into a patent**
**Does not require: **
**An oath/declaration**
**A claim**
**An information disclosure statement (prior art)**

**Provisional Patent Application**

## May be filed in a language other than English
Must file a corresponding utility patent application within 12 months in order to receive the benefit of the filing date of the provisional application

**Must file a corresponding utility patent application within 12 months in order to receive the benefit of the filing date of the provisional application**

**Provisional Patent Application**

## Non-Provisional Utility Patent Application

**The “typical” type of application**
**Requirements:**
**Specification (description)**
**At least one claim**
**Drawings (when necessary)**
**Oath or declaration**
**Appropriate fee(s)**

## Non-Provisional Utility Patent Application

**Requirements:**
**May be filed in a language other than English, but an English translation, a statement that the translation is accurate and a processing fee will be required**
**Nucleotide and/or amino acid sequence listing (when necessary)**

##            Plant Patent

**A form of personal property granted by the U.S. government giving the owner the right to exclude others from asexually reproducing, selling or using the claimed plant for a period of 20 years from the application filing date.**

##         Design Patent

**A form of personal property granted by the U.S. government giving the owner the right to exclude others from making, using, offering for sale, importing or selling the claimed invention for a period of 14 years from the grant date**

## Other Types of Patents

**Some countries offer another type of patent that provides shorter terms of protection for disclosure of minor improvements of an article of manufacture**
**Utility models**
**Petty patents**
**The U.S. does not offer this type of patent protection**

## Protection Outside the U.S.

**An invention can be protected outside the U.S. by:**
**Filing individual patent applications in each country where protection is desired, based upon Paris Convention priority**
**Must file within 12-months of filing the U.S. application**
**Filing a PCT application**
**Currently 126 countries are members of the PCT.**
**Designation in each of these countries is automatic, unless expressly withdrawn**
**More specifics on PCT will be discussed later**
**	****	**

## 
Overview of USPTO Patents Operations

**Overview of USPTO Patents Operations**

## UPR Applications Filed

**FY04 – Preliminary Data**

**UPR Applications Filed**

## UPR Patents Issued

**FY04 – Preliminary Data**

## UPR Applications Filed: Foreign vs. U.S. – FY 04 (preliminary)

## Design Applications Filed

**FY04 – Preliminary Data**

**Design Applications Filed**

## FY 04 Patent Pendency

**Technology Center**

**Average 1****st**** Action Pendency **
**(months)**

**Average Total Pendency**
** ****(months) **

**  ****1600 - Biotechnology and Organic Chemistry**

**19.2**

**29.9**

**  ****1700 - Chemical and Materials Engineering**

**17.9**

**27.6**

**  ****2100 - Computer Architecture Software and   **

**  ****Information Security**

**33.3**

**41.1**

**  ****2600 - Communications**

**31.4**

**40.5**

**  ****2800 - Semiconductor, Electrical, Optical **

**  ****Systems & Components**

**14.0**

**23.9**

**  ****3600 - Transportation, Construction, Electronic **

**    ****Commerce, Agriculture, National Security and **

**  ****License & Review**

**15.6**

**24.1**

**  ****3700 - Mechanical Engineering, Manufacturing, **

**  ****and Products**

**15.2**

**24.1**

**Corps**

**20.2**

**27.6**

**FY 04 Patent Pendency**

## Patent Examining Corps Organization and Size

**Seven Technology Centers (TCs)**
**Biotechnology, Organic Chemistry (TC 1600)**
**Chemical and Materials Engineering (TC 1700)**
**Computer Architecture, Software, & Electronic Commerce (TC2100)**
**Communications (TC 2600)**
**Semiconductors, Electrical & Optical Systems & Components (TC 2800)**
**Transportation, Construction, Agriculture and National Security (TC 3600)**
**Mechanical Engineering, Manufacturing and Products, & Designs (TC 3700 and TC2900)**

## Patent Examining Corps Organization and Size

**Every technology center is divided into Art Units (AU)**
**An AU examines specific subject matter within a subject area**
**Every AU has one Supervisory Patent Examiner (SPE)**
**AUs vary in number of examiners**
**Currently around 4000 patent examiners**

## The Patent Process

**Pre-Examination**
**Processing **
***(Office of Initial***
***Patent Examination)***

**Examination Processing**

**Post-Examination**
**Processing**
***(Office of Patent Publication)***

**The Patent Process**

## Text Equivalent for Slide 25

**1 Pre-Examination Processing *****(Office of Initial Patent Examination)***
**1.1 Serial Number assigned**
**1.2 Fees Recorded**
**1.3 Tentative Classification, Screened for Security-Sensitive Contents**
**1.4 PICS (Patent Image Capture System) Electronic Scanning**
**1.5 Licensing & Review – Security-sensitive Cases Separately Processed**
**1.6 Administrative Examination, Data Entry, Filing Receipt Mailed >> *****GO TO***** 2.1**
**2 Examination Processing **
**2.1 Examining Group - Application Assigned to Examiner **
**2.2 Examiners First Action >> GO TO 2.9 OR >> GO TO 2.10**
**2.3 Applicant Response**
**2.4 Second Examiner Action - Final Rejection or Allowance >> GO TO 2.9 OR >> GO TO 2.10**
**2.5 Applicant Response**
**2.6 Subsequent Examiner Action >> GO TO 2.9 OR >> GO TO 2.10**
**2.7 Applicant Response**
**2.8 Board of Patent Appeals and Interferences**
**	****2.8.1 Examiner >> *****GO TO***** 2.9**
**	****2.8.2 Examiner >> *****GO TO***** 2.10**
**	****2.8.3 Courts << *****END USPTO PROCESS***
**2.9 Abandonments << *****END USPTO PROCESS***
**2.10 Quality Review >> *****GO TO***** 3.1**

## Text Equivalent for Slide 25 (continued)

**3 Post-Examination Processing *****(Office of Patent Publication)***
**3.1 Patent Publication Division – Receipt & Review of Allowed Case and Papers**
**3.2 Initial Data Capture – Initial Preparation and Electronic Capture for Printing and Issue**
**3.3 File Maintenance Facility – Match Post-Allowance Papers and Fees**
**3.4 Final Data Capture – Final Preparation and Electronic Capture for Printing and Issue**
**3.5 Patent Printed and Issues << *****END USPTO PROCESS***

## 
Patent Examination 

**Patent Examination**** **

## Examination—The Basics

**Generally, the examination process is a study by the patent examiner to determine whether the invention described and claimed in the application satisfies the U.S. legal requirements for the grant of a patent**
**Requirements are set forth in:**
**Title 35 of the United States Code**
**Title 37 of the Code of Federal Regulations**
**Guidance is provided in the Manual of Patent Examining Procedure (MPEP)**

## Basics of U.S. Patent Law

## Primary Patentability Considerations

**35 U.S.C. §101**: **Patentable subject matter and utility**
**35 U.S.C. §102: Novelty and Loss of Right**
**35 U.S.C. §103: Non-obviousness**
**35 U.S.C. §112, first paragraph: Sufficient disclosure**

## 35 U.S.C. § 101 – Patentable Subject Matter

**Whoever invents or discovers any new and *****useful***** process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.**
**Patentable subject matter is a “process, machine, manufacture or composition of matter” or any “improvement thereof”**
**Very broad**
**No explicit exclusions**

## 35 U.S.C. § 101 - Utility

**Invention must have a practical application--“Useful, concrete and tangible” result**
**Specific utility**
**Specific to the **_**claimed**_** invention**
**Credible utility**
**Is specific utility credible?**
**Substantial utility**
**Utility that has real-world value**

## 35 U.S.C. §102 – Novelty and Loss of Right

**A person shall be entitled to a patent unless:**
**(a) The invention was *****known or used by others in this***_** **_***country*****, or *****patented or described in a printed***_** **_***publication in this or a foreign country*****, before the invention thereof by the applicant for patent; or**
**(b) The invention was *****patented or described in a printed***_** **_***publication in this or a foreign country or in public use***_** **_***or on sale in this country*****, more than one year prior to the date of the application for patent in the United States; or**
***– ******continued –****** ***

## 35 U.S.C. §102 – Novelty and Loss of Right 

**A person shall be entitled to a patent unless:**
**(e) The invention was *****described in a patent granted on an***_** **_***application for patent by another filed in the United States before the invention thereof by the applicant for***_** **_***patent*****, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2) and (4) of section 371(c) of this title before the invention thereof by applicant for patent.**

## 35 U.S.C. §102 - Novelty

**Section 102(a) defines novelty**
**From “first to invent” perspective**
**Note that certain foreign activities are not included**
**Section 102(b) establishes a 12-month “grace period”**
**Beneficial to inventors**
**IMPORTANT!—no grace period in Europe**
**Section 102(e) prevents patents from issuing to different entities for the same invention**

## A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 
Patentability shall not be negatived by the manner in which the invention was made.

**Patentability shall not be negatived by the manner in which the invention was made.**

**35 U.S.C. §103 – Non-obviousness**

## Graham v. Deere

**Determine the scope and contents of the prior art.**
**Ascertain the differences between the prior art and the claims at issue.**
**Resolve the level of ordinary skill in the pertinent art.**
**Consider objective evidence present in the application indicating obviousness or non-obviousness.**

## 35 USC §112 – Sufficient Disclosure

**The specification shall contain a *****written description***** of the invention, and 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 [the invention] 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.**

## 35 USC §112 – Enablement

**“****The specification shall . . . *****enable*****” one skilled in the art to “*****make and use*****” the invention**
**Part of the *****quid pro quo*****—the inventor must describe the invention in sufficient detail so that those familiar with the technology can build upon the inventor’s contribution**

## 35 U.S.C. § 112 - Enablement

**“****Wands” factors**
**Breadth of claims**
**Nature of the invention**
**State of the prior art**
**Level of skill in the art**
**Level of predictability**
**Amount of direction/guidance**
**Presence/absence of working examples**
**Quantity of experimentation**

## 35 USC §112 - Written Description

**“****The specification shall contain a *****written description of the invention***** . . .”**
**Considerable debate among judges and practitioners as to how this requirement should be applied**
**“****literal” description?**
**entitlement to filing date?**
**Also part of the *****quid pro quo*****—inventor is only entitled to exclusive rights for what he/she invented**

## 35 U.S.C. § 112 – Best Mode

**“****The specification . . . shall set forth the *****best mode***** contemplated by the inventor”**
**Also part of the *****quid pro quo*****—the inventor cannot keep the best way to make and use the invention for himself/herself**
**Draws a line between a patent and a trade secret (more on trade secrets later)**

## Where to Go for Help?

## USPTO Web site

## USPTO Web site

## USPTO Web site

## PAIR

## Trade Secrets

## Trade Secret Law: Purpose

**Generally used to protect proprietary portions of technology**
**Formulae**
**Manufacturing processes**
**Business strategies**
**Business management information**
**Customer lists**
**Design concepts**

## In the U.S. –
Law varies from state to state
Every state recognizes some form of trade secret protection
Most state legislatures have passed a trade secret law, although some states rely solely on common law principles
Uniform Trade Secrets Act has helped create a more uniform body of law from state to state

**Law varies from state to state**
**Every state recognizes some form of trade secret protection**
**Most state legislatures have passed a trade secret law, although some states rely solely on common law principles**
**Uniform Trade Secrets Act has helped create a more uniform body of law from state to state**

**Trade Secret Law: Background**

## Trade Secret Law

**Two fundamental concepts:**
**Trade secret must be something that is used in business and which gives the owner a competitive advantage**
**The owner of a trade secret must take reasonable measures to maintain its secrecy**

## Loss of Trade Secret

**A single “unprotected” disclosure may result in loss of trade secret**
**Reverse engineering of a product to discover the trade secret**

## Patents vs. Trade Secret

**Patents**
**Disclose invention sufficient so others can make and use the invention**
**Duration—20 years from filing**
**Protection against independent discovery**

**Trade secrets**
**Confidentiality**
**Potentially indefinite**
**Protection lost if independent discovery or reverse engineered**

## Conclusions

**Patents provide the owner with the right to exclude others from exploiting the invention for a limited period of time**
**Patents are territorial**
**Patents are enforced by the owner**
**Know the patent law requirements where you want to obtain patent protection!**
**Patents and trade secrets are different forms of protection, with different requirements and different benefits—know the differences!**

## Charles.Eloshway@uspto.gov

THANK YOU

**Charles.Eloshway@uspto.gov**
**THANK YOU**

**Patents and Trade Secrets **