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USPTO 16 TH ANNUAL INDEPENDENT INVENTORS CONFERENCE Richard J. Apley, Chief Patent Officer USPTO Director, Independent Inventor Programs, Retired How To Help Your Patent Representative Help You

16th Annual USPTO Independent Inventors Conference

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Former USPTO Director of Independnt Inventor Programs Richard "Dick" Apley's outline of key topics inventors should address with their patent representatives.

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Page 1: 16th Annual USPTO Independent Inventors Conference

USPTO 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE

Richard J. Apley, Chief Patent Officer USPTO Director, Independent Inventor Programs, Retired

How To Help Your Patent Representative

Help You

Page 2: 16th Annual USPTO Independent Inventors Conference

Patentability Search

Why do a patentability search of the prior art to determine the novelty of your invention?

37 CFR 1.56: Each individual associated with the filing and prosecution of a patent application has a duty to disclose information material to patentability

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

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SEARCH FOCUS

Novelty most patentable featuresPatent Collection evolution of a technologyState-of-the-Art overview of current technology in a specific areaInfringement un-expired patents with claims that may bar you

from making, using, selling or importing a productRight-to-Use or Freedom-to-Operate

determining whether a particular action can be done without infringing rights of others

Validity claims of a patent in questionAccelerated Examination

search strategy and other information required by the USPTO

Other Types of Searches

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

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As of March 16, 2013 the USPTO is a “first inventor to file” system. The former system of

“first to invent” and its “date of invention” questions are no longer in use by the USPTO..

First to File

Meeting Your RepresentativeWhat should I bring for the first visit?What is the patent process going to cost?How do I pick a knowledgeable/trustworthy representative?

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

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Inventor(s)• Sole

• Joint

Applicant(s)

Assignee(s)

Investor(s)

Who’s Who?

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

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1. Field of invention; intended use

2. Problems addressed and solved

3. Summary of the invention with structural details and methods of making/using

Disclosure

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

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4. Specification

35 U.S.C. 112(a): “The specification shall contain a written description

of the invention, and of 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.”

Disclosure, 2

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

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5. Claims

35 U.S.C. 112(b): “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.”

6. Drawings; must show every feature of the invention specified in the claims

Disclosure, 3

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

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As the below named inventor, I hereby declare that:

My residence and post office address are as stated below next to my name.

I believe I am the original, first and sole inventor (if only one name is listed below) or an original, first and joint inventor (if plural names are listed below) of the subject matter which is claimed and for which a patent is sought on the invention entitled:

MY MILLION DOLLAR INVENTION

the specification of which is attached hereto unless the following box is checked:

Inventor’s Oath or Declaration

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

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was filed on _____________ as United States Application Serial Number or PCT International Application Number _________________________ and was amended on _______________ (if applicable).

The above-identified application was made or authorized to be made by me.

I believe that I am the original inventor or an original joint inventor of a claimed invention in the application.

I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years or both.

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

Inventor’s Oath or Declaration, 2

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I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issued thereon.Legal Name of Sole or First Inventor: Signature: ___________________________ Date: _______________ Residence: Any City, State 12345Post Office Address: 789 Any Street, Any City, State 12345

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

Inventor’s Oath or Declaration, 3

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First action Second action may be a “FINAL” rejection Interviews Amendments Request for Continued Examination (RCE) Extensions of Time Appeals

Examination Process

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

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16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

Entity Category

Contact Information

Micro Entity vs. Small Entity vs. Large Entity or Undiscounted Entity

Change of Address Phone number Email Address Change of “entity” status Your representative must be kept current

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New matter? Revisions? Improvements? What’s a Continuation in part (CIP) application?

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

Developments

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There are four statutory categories of invention:

Process Machine Manufacture Composition of Matter

35 U.S.C. §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 therefor, subject to the conditions and requirements of this title

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

Patentable Inventions

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The Courts have interpreted the categories to exclude: Laws of Nature Natural Phenomena Abstract Ideas

These are commonly referred to as the “judicial exceptions.”

16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTORichard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

What’s Not Patentable

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Becker & Poliakoff has offices in New York, Washington, DC, throughout Florida, and

near the USPTO in Northern Virginia.

[email protected] (800) 4-PATENT

USPTO 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE

Richard J. Apley, Chief Patent OfficerUSPTO Director, Independent Inventor Programs, Retired