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Ram R. Shukla, Ph.D.Supervisory Patent Examinerp y
Technology Center 1600United States Patent & Trademark Office
(571) [email protected]
University of South Florida TAMPA, FL
February 15, 2012
Basis for Protection of Patents and Basis for Protection of Patents and Copyrights in the U.S. ConstitutionCopyrights in the U.S. Constitution
-”Congress shall have the power…..to promote the US Constitution, Article 1, Section 8, Clause 8US Constitution, Article 1, Section 8, Clause 8
g p pprogress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
What is Intellectual PropertyWhat is Intellectual PropertyWhat is Intellectual PropertyWhat is Intellectual Property
4 types of intellectual property: 4 types of intellectual property:
(1)(1) C i htC i ht(1)(1) CopyrightCopyright
(2)(2) TrademarkTrademark
(3)(3) Trade SecretsTrade Secrets
(4)(4) PatentPatent(4)(4) PatentPatent
CopyrightCopyrightpy gpy g
DefinitionDefinition: : A form of protection provided to the authors of A form of protection provided to the authors of “original works of authorship”“original works of authorship”
ProtectsProtects: : Literary, dramatic, musical, artistic, and certain Literary, dramatic, musical, artistic, and certain other intellectual worksother intellectual works
DurationDuration: : In general, author’s life + 70 yearsIn general, author’s life + 70 years
For more information on copyright, For more information on copyright, visit the U.S. Copyright Office website at visit the U.S. Copyright Office website at http://www copyright govhttp://www copyright govhttp://www.copyright.govhttp://www.copyright.gov
TrademarkTrademark
DefinitionDefinition: : Any word name symbol or device or any Any word name symbol or device or any DefinitionDefinition: : Any word, name, symbol, or device, or any Any word, name, symbol, or device, or any combination, used, or intended to be used, in combination, used, or intended to be used, in commerce to identify and distinguish the commerce to identify and distinguish the goods or goods or
i i services services
ProtectsProtects: : All of the above & logo, banner, sound, smell, etc.All of the above & logo, banner, sound, smell, etc.g , , , ,g , , , ,
DurationDuration: : 1010--year terms with 10year terms with 10--year renewal termsyear renewal terms
®®
®®®®
Trademark Registration #Trademark Registration #: GE: GE: 3386370,: 3386370, Kellogg’sKellogg’s : 3445274, : 3445274, LGLG: 3250589, : 3250589, FedExFedEx: 3413407, : 3413407, StarbucksStarbucks: 3428128, : 3428128, IBMIBM: 3002164: 3002164
®®®®
Trade SecretsTrade Secrets
DefinitionDefinition: : Any information that provides economic value Any information that provides economic value that is not in the public domain and that has that is not in the public domain and that has been been
reasonably kept secretreasonably kept secrety py p
ProtectsProtects: : Formulas, patterns, compilations, programs, Formulas, patterns, compilations, programs, devices methods techniques or processesdevices methods techniques or processesdevices, methods, techniques or processesdevices, methods, techniques or processes
DurationDuration: : As long as they remain secret As long as they remain secret g yg y
Trademark Registration #Trademark Registration #: Coca Cola: Coca Cola: 3252896,: 3252896, KFCKFC: 2800403: 2800403
Wh t i t t?Wh t i t t?What is a patent?What is a patent? A patent is a property right granted by the
Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling g, g, g , gthe invention throughout the United States or importing the invention into the United p gStates” for a limited time in exchange for public disclosure of the invention when the ppatent is granted.
Wh t b t t d?Wh t b t t d?What can be patented?What can be patented?
Utility patents are provided for a new, nonobvious and useful:y
Process
Machine
Article of manufacture
Composition of matter
Improvement of any of the above
Invention must also be:Invention must also be:
Novel
N b i Nonobvious
Adequately described or enabled (for one of q y (ordinary skill in the art to make and use the invention) )
Claimed by the inventor in clear and definite terms terms
U S Patent No 8 067 430 B1U S Patent No 8 067 430 B1U.S. Patent No. 8,067,430 B1U.S. Patent No. 8,067,430 B1
U S Patent No 6 319 497 B1U S Patent No 6 319 497 B1U.S. Patent No. 6,319,497 B1U.S. Patent No. 6,319,497 B1
Patent Applications Filed at the USPTOPatent Applications Filed at the USPTOPatent Applications Filed at the USPTOPatent Applications Filed at the USPTO
Over 457,000 Utility patent applications filed in FY 2010.
Over 13 million Utility patent applications filed to date.
Over 219,614 Utility patents issued in FY 2010.
Ei ht illi t t i d Eight million patents issued.
Over Six thousand eight hundred Patent Examiners
USPTO Organization StructureUSPTO Organization Structuregg
Office of the Commissioner for PatentsOffice of the Commissioner for PatentsOffice of the Commissioner for PatentsOffice of the Commissioner for Patents
•• Office of the Deputy CommissionerOffice of the Deputy Commissioner•• Office of Patent Examination PolicyOffice of Patent Examination PolicyOffice of Patent Examination PolicyOffice of Patent Examination Policy•• Office of Patent Resources and PlanningOffice of Patent Resources and Planning•• Office of Patent Information ManagementOffice of Patent Information ManagementOffice of Patent Information ManagementOffice of Patent Information Management•• Office of Innovation DevelopmentOffice of Innovation Development
United States Patent and Trademark United States Patent and Trademark Office Technology CentersOffice Technology Centers
The Deputy Commissioner for Patents oversees all patent examining functions in the oversees all patent examining functions in the nine Patent Technology Centers. Patent Operations provides administrative oversight Operations provides administrative oversight to and coordinates the activities of Technology Centers 1600 1700 2100 2400 Technology Centers 1600, 1700, 2100, 2400, 2600, 2800, 2900, 3600, and 3700.
United States Patent and Trademark United States Patent and Trademark Office Technology CentersOffice Technology Centers
Technology Center 1600: Biotechnology and Organic Chemistry Technology Center 1600: Biotechnology and Organic Chemistry.
Technology Center 1700: Chemical and Materials Engineering.
Technology Center 2100: Computer Architecture Software and Information Security.gy y
Technology Center 2400: Computer Networks, Multiplex, Cable and Cryptography/Security.
Technology Center 2600: Communications Technology Center 2600: Communications.
Technology Center 2800: Semiconductors, Electrical and Optical Systems and Components.
Technology Center 2900: Designs.
Technology Center 3600: Transportation, Electronic Commerce, Construction, Agriculture, Licensing and Review.
Technology Center 3700: Mechanical Engineering, Manufacturing and Products.
United States Patent and Trademark Office United States Patent and Trademark Office TC 1600 Organizational ChartTC 1600 Organizational ChartTC 1600 Organizational ChartTC 1600 Organizational Chart
TC 1600TC 1600
Three Group DIRECTORSThree Group DIRECTORS
TQAS TQAS RQASRQASWork GroupsWork Groups
1620162016101610 16301630 16401640 16501650 166016601620162016101610 16301630 16401640 16501650 16601660
EIGHT Art UnitsEIGHT Art Units NINE Art UnitsNINE Art Units EIGHT Art UnitsEIGHT Art Units NINE Art UnitsNINE Art Units SEVEN Art UnitsSEVEN Art Units ONE Art UnitONE Art Unit
EACH ART UNIT HAS AN AVERAGE OF 12 TO 18 EXAMINERS AND IS HEADED BY A SUPERVISORY PATENT EXAMINEREACH ART UNIT HAS AN AVERAGE OF 12 TO 18 EXAMINERS AND IS HEADED BY A SUPERVISORY PATENT EXAMINER
TECHNOLOGY EXAMINED BY TC 1600TECHNOLOGY EXAMINED BY TC 1600
Work Group 1610Work Group 1610 Vitamin D, Herbicides, Pesticides, Cosmetics, Steroids, Drugs and BioVitamin D, Herbicides, Pesticides, Cosmetics, Steroids, Drugs and Bio--affecting affecting and Body Treating Compositionsand Body Treating Compositions
Work Group 1620Work Group 1620 Organic ChemistryOrganic Chemistry, , Heterocyclic Compounds and UsesHeterocyclic Compounds and Useso G oup 6 0o G oup 6 0 O ga c C e st yO ga c C e st y,, ete ocyc c Co pou ds a d Usesete ocyc c Co pou ds a d Uses
Work Group 1630Work Group 1630
Animals, Animal Cloning, Gene Therapy, Adult and Embryonic Stem Cells,Animals, Animal Cloning, Gene Therapy, Adult and Embryonic Stem Cells,Bioinformatics, NanoBioinformatics, Nano--particles for delivery of bioactive agents including nucleic acids DNA particles for delivery of bioactive agents including nucleic acids DNA Vaccine, Nucleic Acid Hybridization, Probes, SNPs, Genotyping, AntisenseVaccine, Nucleic Acid Hybridization, Probes, SNPs, Genotyping, Antisense--related Nucleic related Nucleic Acid Compositions and Methods Gene ExpressionAcid Compositions and Methods Gene Expression, , Nucleic Acid Amplification, Primers, Nucleic Acid Amplification, Primers, Genotyping Haplo typingGenotyping Haplo typing Combinatorial/ Computational ChemistryCombinatorial/ Computational Chemistry Transgenic PlantsTransgenic PlantsGenotyping, Haplo typingGenotyping, Haplo typing, , Combinatorial/ Computational ChemistryCombinatorial/ Computational Chemistry, , Transgenic PlantsTransgenic Plants
Work Group 1640Work Group 1640Specific Binding Assays and Apparatus,Specific Binding Assays and Apparatus, Antibody Engineering and Cancer, Antibody Engineering and Cancer, ImmunologyImmunology *Bacterial & Parasitic Immunology and Specific Binding Assays*Bacterial & Parasitic Immunology and Specific Binding Assays Cellular Cellular ImmunologyImmunology Receptors, Cytokines & Recombinant Hormones, Receptors, Cytokines & Recombinant Hormones, Viral Immunology, Viral Immunology, Neurobiology and NeuroimmunologyNeurobiology and Neuroimmunology
Work Group 1650Work Group 1650
Fermentation and MicrobiologyFermentation and Microbiology Recombinant EnzymesRecombinant Enzymes Recombinant ProteinsRecombinant Proteins Peptides, Peptides, proteins, methods of treatment, enzymes, enzyme assays, Protein crystallography proteins, methods of treatment, enzymes, enzyme assays, Protein crystallography cases related to any proteincases related to any protein BioBio--acting plant extracts, and cell assays acting plant extracts, and cell assays
1818
cases related to any proteincases related to any protein BioBio acting plant extracts, and cell assays acting plant extracts, and cell assays
Work Group 1660Work Group 1660 PlantsPlants
The Patent Application The Patent Application ProcessProcess
Patent Application Patent Application PPProcessProcess
PG Pubs
Office of Initial Patent
Examination (OIPE)
Examination
1. 2nd FormalitiesR i
Post Examination (Publications)
PatentPatent
or PG Pub
1. Collect Fees
2. Scanning-ConvertAll Paper to Image
3. Initialization-AssignSerial Numbers
Review
2. Patentability?
▪ Patentable SubjectMatter?
1. 3rd FormalitiesCheck
2. Collect Issue Fee
Application 400,000+/yr
4. Formalities ReviewSpecification?Claims?Oath/Declarations?Drawings? (Optional)
5 Assign Filing Date
Matter?
▪ Utility?
▪ Clearly Described?
▪ Enabled?
3. Convert Image to Text
4 A i P t t5. Assign Filing Date
6. Assign Class, Art Unit
▪ Claims Definite?
▪ Novel?
▪ Non-obvious?
4. Assign Patent Number
Abandonment Abandonment Abandonment
The The Patent Patent
The The Patent Patent Classification
Examination Processing
Examination Processing
Post-Examination Processing
Post-Examination Processing
ate tate tProcessProcess
ate tate tProcessProcess
Classification determines home for
examination
Initial Review
Notice of Allowance Sent
Applicant Response
Applicant Response
Issue Fee PaidPre-
Examination Processing
Pre-Examination Processing
First ActionAllowance
Rejection
Application undergoes Pre-Exam
Processing in OPAP Second Action
Applicant Response
Rejection (May be Final)
Allowance
Applicant Response
Advisory Action Patent Printed
and Issued
Allowance
Allowance
Abandonments
Applicant Appeal Brief
Examiner’s AnswerExaminer
and IssuedAllowance
ExaminerBoard of Patent Appeals
and Interferences
Examiner
Courts
P t t E i tiP t t E i tiPatent ExaminationPatent Examination PATENT EXAMINATION READ AND UNDERSTAND SPECIFICATION DETERMINE WHETHER SPEC IS ADEQUATE DETERMINE WHETHER SPEC IS ADEQUATE DETERMINE SCOPE OF THE CLAIM SEARCH EXISTING TECHNOLOGY FOR CLAIMED INVENTION DETERMINE PATENTABILITY WRITE/MAIL A LEGAL OFFICE ACTION ON THE PATENTABILITY RESPOND TO APPLICANTS RESPONSE RESPOND TO APPLICANTS RESPONSE ISSUE PATENT OR ABANDONMENT
An Examiner’s Tools of the An Examiner’s Tools of the An Examiner s Tools of the An Examiner s Tools of the TradeTrade
Examiners’ Electronic Examiners’ Electronic W ldW ldWorldWorld
PALM – Patent Application Locating and Monitoring EAST – Examiner Automated Search Tool WEST – Web-based Examiner Search Tool OACS – Office Action Correspondence Subsystem (eRed
folder) IFW – Image File Wrapper IFW Image File Wrapper eDAN – electronic Desktop Application Navigator MADRAS MADRAS
USPTO Training AcademyUSPTO Training AcademyN E i 4N E i 4 M th T i i PM th T i i PNew Examiner 4New Examiner 4--Month Training ProgramMonth Training Program
Course Curriculum OverviewCourse Curriculum Overview
Training Academy OverviewTraining Academy OverviewTraining Academy OverviewTraining Academy OverviewNew training program established January 23, 2006:
■ Integrate more new examiners into the examining corp than ever before■ Improve the quality of our products and services■ Improve the quality of our products and services■ Reduce the training burden faced by the management staff in the Technology Centers■ Graduate new hire examiners with the ability to work with reduced oversight
Program Structure:■ Comprehensive 4-month training program ■ 128 new examiners assigned to each Class■ Each Class consists of 8 labs with up to 16 students in each■ Labs are lead by a Supervisory Patent Examiner (SPE)/Trainer■ Examiner Training Assistants are integrated into the labs as new examiners begin
working on “live” cases between the 8th and 10th weeksworking on live cases between the 8 and 10 weeks
Course CurriculumCourse Curriculum OverviewOverview
Four Track Program
■ Patent Examination Practice and Procedure
■ Automation Skills ■ Automation Skills
■ Technical Skills Developmentp
■ Professional and Soft Skills Development
Overview of Website Overview of Website --InventorsInventors
•• Helpful links for inventorsHelpful links for inventors
Click onClick on
Helpful links for inventorsHelpful links for inventors-- General InformationGeneral Information
-- Introductory GuidesIntroductory Guides
FAQFAQ
“Inventors”“Inventors”-- FAQsFAQs
-- Upcoming EventsUpcoming Events
-- Registered Attorneys & Complaints AgainstRegistered Attorneys & Complaints Against
-- Inventors Assistance CenterInventors Assistance Center
-- and much more…and much more…
Overview of Website Overview of Website --PatentsPatents
Overview of Website Overview of Website -- CareersCareersOverview of Website Overview of Website CareersCareers
Inventor CommunityInventor Community
Individual inventor University Small Business/Small Medium Enterprise
(SME) Corporationp Non-profit
University OutreachUniversity Outreach
Campus visits IP presentationsp Individual Q&A Technology Transfer discussions
Electronic Media
Virtual visitsVideo teleconference format
IP Awareness to Protect Valuable Valuable Assets
P i t i f d id b i P i t i f d id b i
Valuable Valuable Assets
Purpose is to inform and guide business ownersPurpose is to inform and guide business owners The Assessment of intellectual property asset awareness tool The Assessment of intellectual property asset awareness tool
ididprovides:provides:–– A customized determination of what specific IP areas A customized determination of what specific IP areas
would be of value to the business owner to know more would be of value to the business owner to know more aboutaboutaboutabout
–– Handy information on Patents, Trademark, Copyright, Handy information on Patents, Trademark, Copyright, Trade Secrets and IP management best practices Trade Secrets and IP management best practices
D i d ifi ll f ll d di i d t iD i d ifi ll f ll d di i d t i Designed specifically for small and medium sized enterprisesDesigned specifically for small and medium sized enterprises Sensitive to their time constraints and needsSensitive to their time constraints and needs Helpful to new entrepreneurs as well as established firmsHelpful to new entrepreneurs as well as established firms
IP Awareness AssessmentIP Awareness Assessment
PrePre Assessment to determine potential IP assets of a Assessment to determine potential IP assets of a PrePre--Assessment to determine potential IP assets of a Assessment to determine potential IP assets of a business/inventor and take a customized assessment ; orbusiness/inventor and take a customized assessment ; or
Alternatively, take full assessment.Alternatively, take full assessment.First question in a category determines relevancy of the First question in a category determines relevancy of the q g y yq g y ycategory. category.
U ki t t t if i di t U ki t t t if i di t User skips to next category if response indicates User skips to next category if response indicates awareness of the information. awareness of the information.
IP Awareness AssessmentIP Awareness Assessment
Assessment of intellectual property asset awareness Ten Categories and sixty one questions to cover Ten Categories and sixty one questions to cover
various aspects of IP
Based on user input provides: Basic information in Patents Trademark Copyright Basic information in Patents, Trademark, Copyright,
Trade Secrets and IP management best practices
IP Awareness AssessmentIP Awareness Assessment
Assessing IP Awareness in 10 Categories:Assessing IP Awareness in 10 Categories:••IP StrategiesIP Strategies••TrademarksTrademarksTrademarksTrademarks••CopyrightsCopyrights••Design PatentsDesign Patents••Trade SecretsTrade SecretsTrade SecretsTrade Secrets••Utility PatentsUtility Patents••Using Technology of Others Using Technology of Others ••Licensing Technology of OthersLicensing Technology of OthersLicensing Technology of OthersLicensing Technology of Others••International IP RightsInternational IP Rights••IP Asset TrackingIP Asset Tracking
IP Awareness AssessmentIP Awareness Assessment
Each category designed to discover overall IP awareness
First question in category determines relevancy and if additional info needed
User skips to next category if response indicates Use s ps to e t catego y espo se d catesawareness of the information
Categories need to be completed in the order listed
Option to go back to the previous category
Customized training based on user input
IP Awareness Assessment
IP Awareness AssessmentIP Awareness Assessment
IP Awareness Assessment
IP Awareness AssessmentIP Awareness Assessment
IP Awareness Assessment-f t d tfuture updates
Incorporate user input from beta test Additional Questions ? Additional Questions ? Option to take assessment in multiple sessions Training modules to target specific IP topics Training modules to target specific IP topics Based on user input customized determination of
which specific IP areas require support Provide customized training in these areas
Thank you!Thank you!