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1 2 3 4 Can mention PCT. Also can mention Hague Agreement for - PDF document

Jun 03, 2023 •307 likes •1.03k views

1 2 3 4 Can mention PCT. Also can mention Hague Agreement for design patents. Background on the Hague Agreement: The Hague Agreement in basic terms is an international registration system allowing industrial design owners to apply for

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  5. Can mention PCT. Also can mention Hague Agreement for design patents. Background on the Hague Agreement: The Hague Agreement in basic terms is an international registration system allowing industrial design owners to apply for protection in a number of states and/or intergovernmental organizations (such as the European Union) using a single international design application. American industrial design creators—who currently prepare and file separate applications for each jurisdiction—will now be able to file a single, English-language application with the World Intellectual Property Organization (WIPO) directly, or indirectly through the USPTO. (From a blog by Teresa Stanek Rea in March 2013 - http://www.uspto.gov/blog/director/entry/a_new_chapter_for_protection) From a USPTO Press Release (in Q2 2014): The PLTIA (Patent Law Treaties Implementation Act) and the proposed rules call for the following: standardizing formal requirements for international design applications; • establishing the USPTO as an office through which international design applications may be filed; • provide for substantive examination by the Office of international design applications that designate • the United States; provide provisional rights for published international design applications that designate the United • States; and set the patent term for design patents at 15 years from the date of patent grant. • http://www.uspto.gov/ip/global/Forum_To_Discuss_Proposed_Changes_to_Implement_the_Geneva_Act_o f_the_Hague_Agreement.jsp 5

  6. PTO script 6

  7. Hence “design” versus “utility” nomenclature the design patent term will be changing to 15 years from issue once the Hague takes effect In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a "design patent" protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics. Of primary importance in a design patent application is the drawing disclosure , which illustrates the design being claimed. Unlike a utility application, where the "claim" describes the invention in a lengthy written explanation, the claim in a design patent application protects the overall visual appearance of the design, “described” in the drawings. It is essential that the applicant present a set of drawings (or photographs) of the highest quality which conform to the rules and standards which are reproduced in this guide. Changes to these drawings after the application has been filed, may introduce

  8. new matter, which is not permitted by law (35 U.S.C. 132). 7

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  10. Although there is a grace period in the US, inventors are advised to file a patent application before public disclosures. 9

  11. 37 C.F.R. 1.51 General requisites of an application. (a) Applications for patents must be made to the Director of the United States Patent and Trademark Office. (b) A complete application filed under § 1.53(b) or § 1.53(d ) comprises: (1) A s pecification as prescribed by 35 U.S.C. 112 , including a claim or claims , see §§ 1.71 to 1.77 ; (2) An oath or declaration , see §§ 1.63 and 1.68 ; (3) Drawings , when necessary, see §§ 1.81 to 1.85 ; and (4) The prescribed filing fee, search fee, examination fee, and application size fee , see § 1.16 . 195 (98)/310/125. 10

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  16. Every claim needs a preamble and transition phrase 15

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  21. Note, other rejections to a patent applications. This only discussed 102 and 103 prior art rejection. 101 Utility 112 1 st – written description 112 2 nd ODP 20

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  24. Name of the game is the claims. What are you claiming as your invention? It makes a difference as to whether the prior art anticipates or makes obvious your claimed invention. 23

  25. Comparison between the claimed invention and the prior art (analogous art and non-analogous art) Examiner will determine similarities and differences in structure and function OF THE CLAIMS not a single embodiment 24

  26. Depending on the claims, it may be obvious or identical. 25

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  28. Not Identical - The prior art and the claimed invention are different Obvious – It is common sense that familiar items may have uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle. (Syllabus, pg 5 KSR). A patent for a combination which only unites old elemetns with no change in their respective functions withdraws what is already known in the field of its monopoly and diminishes the resources available to skillful men. (KSR e.g., predicable) POSITA – average person working with the subject matter (environment) 27

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  30. Does the prior art go together like pieces of a puzzle. 29

  31. on-sale bar – subject of a commericial offer for sale not primarily for experimental purposes and ready for patenting (Pfaff v Wells 525 US 55 (1998) public use (accessible to the public and commercially exploited and ready for patenting (Pfaff)) Invitrogen Corp. v Biocrest, 424 F.3d 1374 (Fed. Cir. 2005). Commercial and non-commercial environments. experimental use Public accessibility Confidentiality obligations 30

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  33. Non-analogous – solves a different problem, different field of endeavor. 32

  34. These considerations weigh against obviousness and in favor of patentability 33

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  39. Apply Online for a Patent using EFS-Web Obtain Status of a Patent Application Determine when application will be picked up for examination, see First Office Action Estimator Search US Patent Database Search Patent Classification Manual Download Forms and Fee Schedules Patent Help Resources Access Details of All Currently Pending Published Patent Applications (Public PAIR) IP Awareness Assessment Tool Information about Pro Se and Pro Bono programs Link to StopFakes.gov site By navigating the Main Menu Bar, the user can locate information easily … Screens are shots of the nesting of the main menu bar. - General Information - Introductory Guides - FAQs - Upcoming Events 38

  40. - Registered Attorneys & Complaints Against - Inventors Assistance Center - and much more… 38

  41. • Administered by the Office of Innovation Development • Link to Pro se and Pro bono assistance • State resources • Upcoming events • Inventors Assistance program 39

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  47. Software Patent Eligibility Matthew Sked Senior Legal Policy Advisor – Office of Patent Legal Administration Old Dominion University April 10, 2018

  48. Eligibility Guidance Is Now In the MPEP May 2016 Memo • The MPEP has been updated to July 2016 Memo 2014 IEG incorporate the 2014 Interim July 2015 Update Eligibility Guidance (IEG) and Nov. 2016 its updates Memo May 2016 Instructions • MPEP now replaces the IEG and updates (as of August 2017) Updated MPEP Chapter 2100 3

  49. MPEP Organization • Eligibility guidance is located in Chapter 2100 – 2103 discusses how the eligibility analysis fits into the overall patent examination process – 2104 discusses the requirements of 35 U.S.C. § 101 – 2105 discusses patentability of living subject matter – 2106 and its subparts discuss the subject matter eligibility analysis • Additional information is located in Chapter 700 – 706.03 and 706.03(a) discuss subject matter eligibility rejections and provide appropriate form paragraphs 4

  50. 35 U.S.C. § 101 § 101 - Inventions Patentable: 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 therefor, subject to the conditions and requirements of this title.

  51. 35 U.S.C. §101 Subject Matter Eligibility The four statutory categories of invention: • - Process, Machine, Manufacture, or Composition of Matter The courts have interpreted the statutory categories to exclude : • – “Laws of nature, natural phenomena, and abstract ideas” These three terms are typically used by the courts to cover the basic tools of scientific and technological work, such as scientific principles, naturally occurring phenomena, mental processes, and mathematical algorithms. - Called “Judicial Exceptions” At times, other terms are used to describe the judicial exceptions.

  52. Flowchart Sets forth the only analysis for • examination of subject matter eligibility under 35 U.S.C. 101 MPEP 2106 includes updated • flowchart that: – Adds labels for each step – Indicates three pathways to eligibility (including streamlined analysis) 7

  53. 35 USC §101: The Four Categories of Statutory Subject Matter Process Machine Manufacture Composition of Matter

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