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Patent Protection Around the World & at the USPTO
Jennie NessAttorney-AdvisorOffice of Policy and External AffairsUnited States Patent and Trademark Office
USPTO Mission
04/19/23 2
Fostering innovation, competitiveness and economic growth, domestically and abroad to deliver high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy, and delivering intellectual property information and education worldwide, with a highly skilled, diverse workforce.
A Global Patent Regime?
04/19/23 3
(1) Paris Convention Treaty
-Requires that treatment of foreign patent applicants is identical to the treatment of nationals who file for patents in a country (national treatment)
-Permits foreign nationals to benefit from an priority document filed no more than 12 months before in their home country
* Graphic obtained from http://en.wikipedia.org/wiki/Paris_Convention_for_the_Protection_of_Industrial_Property accessed on September 5, 2013.
Pakistan has been a contracting member of the Paris Convention Treaty since 2004
A Global Patent Regime?
04/19/23 4
(2) Patent Cooperation Treaty (PCT):
-Has similarities with the Paris Convention Treaty (e.g. national treatment)
-PCT applicants get the benefit of a search and written opinion of their claimed invention before they have to decide to file in one or more designated countries
NOTE: There is NO international patentPakistan is not a
member of the PCT
Graphic obtained from http://en.wikipedia.org/wiki/Patent_Cooperation_Treaty accessed on September 6, 2013
A Global Patent Regime?
04/19/23 5
(3) Patent Cooperation Treaty (PCT) Continued:
-Permits filing of an international patent application (“PCT application”) based on a patent application document filed in an applicant’s home country that is filed no more than 12 months before the PCT application
-The PCT application is published 18 months after its filing
-The “international phase” (PCT phase) ends and a “national phase” begins 30 months from filing of the PCT application.
A Global Patent Regime?
04/19/23 6
(3) World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS):
-Adoption of TRIPS is required to enter the WTO
-Came into effect January 1, 1995
-Patent rights must be available to inventions in all technological areas with some permitted exceptions (Article 27.1)
* Graphic obtained from http://en.wikipedia.org/wiki/WTO accessed on September 5, 2013.
Pakistan is a WTO member
A Global Patent Regime?
04/19/23 7
(3) TRIPS Continued:
-Patent rights are exclusive (Art. 28)
-Scope of Patentability: "any invention" (some exceptions for plants and animals, medical treatment methods), public order and morality.
(4) TRIPS Continued:
-Patent rights for products include the right to exclude others from making, using, offering for sale, selling, and importing for these purposes (Art. 28)
-Process patent rights must give rights not only over use of the process but also over products obtained directly by the process (Art. 28)
-Patent term 20 years from the date of filing (Art. 33)
A Global Patent Regime?
04/19/23 9
Basis for Protection of Patents and Copyright in the U.S.
US Constitution, Article 1, Section 8, Clause 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.”
04/19/23 10
Basis for Patent Law in the United States
• The Statute: 35 U.S.C (Patent Codes)– Laws enacted by the US Congress
• The Rules: 37 C.F.R. (Patent Regulations)– Rules governing the operation of the USPTO. This
rules may be changed by the USPTO following the proper procedure
• Case Law: Ex parte and In re– The United States has a common law system. Court
cases shape the interpretation of laws.
04/19/23 11
Patent Resources
• Manual of Patent Examining Procedure (MPEP)– The MPEP is a detailed guide which
explains how a patent is examined in the United States.
• Laws (Title 35, United States Code)• Rules (Title 37, Code of Federal
Regulations)• Important Case Law
04/19/23 12
What is a U.S. Patent?
• It is “Property”: right to exclude others
• It is “Territorial”: provides protection only within the United States. No World Wide Patent!
• The patentee must enforce the patent once it is granted.
04/19/23 14
Plant Patent
• Provides a right to exclude others from asexually reproducing, selling or using the claimed plant
• Duration: 20 years from the filing date
• New, distinctive asexually reproducing plant (other than a tuber propagated plant or a plant found in an uncultivated state)
• Sexually reproducing plants are protected by Plant Variety Protection Certificates
04/19/23 16
Design Patent
• Provides a right to exclude others from making, using, offering for sale, importing or selling the claimed invention
• Duration: 14 years from the grant date
• For any new, original, and ornamental design for an article of manufacture
04/19/23 19
• Provides a right to exclude others from making, using, selling, offering for sale or importing the claimed invention
• Duration: 20 years from the filing date.
• For any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof.
Utility Patent
04/19/23 21
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.
Who may file a Patent Application?
• America Invents Act (AIA)
• “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.”
• “A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”
04/19/23 22
04/19/23 23
Non-Provisional Utility Patent Application
Requirements:
• Specification (description)
• Drawings (when necessary)
• Nucleotide and/or amino acid sequence listing (when necessary)
• At least one claim
• Oath or declaration
• Prescribed filing, search and examination fee
– 50% discount for small entities
04/19/23 25
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
04/19/23 26
Patent Examination Process
• Burden is on the examiner: An applicant is entitled to a patent unless…
… The laws of the U.S. prevent a patent from being issued. The patent laws are set forth in title 35 of the United States Code.
– This is abbreviated 35 U.S.C. _
04/19/23 27
Major Statutory Areas of Patentability Consideration
• 35 U.S.C. § 101: Utility and subject matter eligibility
• 35 U.S.C. § 112, first paragraph: Enablement, written description and best mode
• 35 U.S.C. § 112, second paragraph: Definiteness
• 35 U.S.C. § 102: Anticipation
• 35 U.S.C. § 103: Obviousness
04/19/23 28
35 USC § 101
• 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.
• But there are judicially created exceptions
04/19/23 29
35 USC § 112, First Paragraph:Written Description, Enablement and Best Mode
Requirements
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 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.
1
2
3
04/19/23 30
35 USC § 112, Second Paragraph:Definiteness Requirement
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Post AIA § 102
Section 102(a)(1):(a) NOVELTY; PRIOR ART - A person shall be entitled to a patent unless- (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;
Section 102(b)(1):“(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. --- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if --- (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtain the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”
04/19/23 31
04/19/23 32
Pre-Grant Publication
• 18 Month Publication• All Applications Filed on or after November
29, 2000 unless• No Foreign Filing• Petition to Prevent Publication
Post Grant:
• Maintenance fees due at:
– 3 ½ years $1150 →→→ $1600– 7 ½ years $2900 →→→ $3600– 11½ years $4810 →→→ $7400
• 50% discount for small entities
(Changes as of March 18 2013 due to AIA)
04/19/23 33
3519 апреля, 2023 35
Electronic filing
New EFS-Web system launched March 2006• allows PDF-based submissions• replaced XML-based system• AIA provides a $400 surcharge for paper filed applications
Patents & Trademarks: Residents of Pakistan
04/19/23 42
2008 2009 2010 2011 2012
21 7 20 29 NA
Patent Applications Filed at the USPTO by Residents of Pakistan
Patents Granted by the USPTO to Residents of Pakistan
2008 2009 2010 2011 2012
6 5 2 2 13
2008 2009 2010 2011 2012
27 19 17 17 12
Trademark Applications Filed at the USPTO by Residents of Pakistan
2008 2009 2010 2011 2012
19 11 15 20 11
Trademarks Registered by the USPTO to Residents of Pakistan
NA = data not available
What is a Trade Secret?
04/19/23 43
Three fundamental concepts:
1.Information is secret; not known to the public or to those involved in the industry
2.Has commercial value; used in business and gives the owner a competitive advantage
3.The owner of a trade secret must take reasonable measures to maintain its secrecy
Trade Secret vs. Patent
04/19/23 44
Trade Secret• Indefinite
• Not registered or disclosed
• Can be separately discovered
• Remedies only if the secret is illegally appropriated
Patent• Limited lifetime
• Patents are granted by a national intellectual property office
• Provides protection in exchange for disclosure and provides the rights to exclude others
• Remedies for infringement
Trade Secret Appropriation
04/19/23 45
Competitors may attempt to learn each other's trade secrets through:
• lawful methods of reverse engineering
• or through illegal industrial espionage
• Most legal regimes will prohibit industrial espionage methods (theft, breaking and entering, surveillance)
• Trade secret regimes provide a separate legal tool to prohibit misappropriation—not infringement.