Patent Protection Around the World & at the USPTO

Jennie NessAttorney-AdvisorOffice of Policy and External AffairsUnited States Patent and Trademark Office

USPTO Mission

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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?

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(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?

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(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?

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(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?

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(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?

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(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?

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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.”

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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.

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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

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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.

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Types of U.S. Patents

•Utility

•Design

•Plant

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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

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Plant Patent PP20,900

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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

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Design Patents

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• 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

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Utility Patent (8,287,921)

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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.”

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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

Patent Examination Process

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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

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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. _

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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

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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

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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

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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.”

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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)

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USPTO Stats and Web Site

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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

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USPTO Statistics FY 2012

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Patent Applications Filed FY 2012

38

Patents Issued FY 2012

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FY 2012 Patent Pendency

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USPTO Website - www.uspto.gov

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Searching Patents and Published Applications

Patents & Trademarks: Residents of Pakistan

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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?

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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

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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

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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.

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