Following a Patent Application Through the USPTO System

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					Following a Patent Application
Through the USPTO System

           32 MET 392
            Session 03



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  Who Can File Patent Application?
     Individual/multiple inventors
     Legal rep of deceased inventor
     Legal rep of incapacitated inventor
     Corporate entity to which reluctant/
      missing inventor has contractual
      obligation
     Inventor represented by practitioner

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  Why File ASAP?
     Procedural advantages at USPTO
     First-to-file places burden of proof on
      party claiming to be first to invent
     Avoid statutory bar caused by
      inadvertent disclosure/offer to sell
     Other countries use first-to-file priority
      of inventorship

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  Employment Agreement
     Safeguard confidential information
     Disclose and assign to company any
      inventions while working for company
     Subject matter of covered invention
      may be limited to subject of job
     Cooperate with company in filing and
      prosecuting patent

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  Shop Rights
     Employer has rights to paid-up (free)
      license if inventor used company’s
      resources in making/developing
      invention.




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  Contents of Patent Application
  (35 USC)
     Specification including at least one
      claim
     Drawings
     Oath/Declaration
     Application fee



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  Contents of Patent Application
  (37 CFR)
     Title
     Abstract
     Information disclosure statement
     Power of Attorney
     Copy of assignment documents



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  Disclosure Requirement
     35 USC §112
     Clear and concise description of
      invention
     Enabling one with ordinary skill in the
      art to practice the invention . . .
     Without undue experimentation
     Disclose best mode known at filing date

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  Disclosure Requirement (cont)
     Most relevant prior art of which inventor
      is aware
     8-point test for adequacy of disclosure
      set forth by CAFC




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  Claims
     Application must include at least one
      claim “particularly pointing out and
      distinctly claiming the subject matter
      which the applicant regards as his
      invention”
     Undue prolixity of claims should be
      avoided

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  Structure of Claim
     Preamble (name of invention)
     Transition
     Itemized list of necessary attributes of
      invention
     Qualifying words/phrases/clauses
     Only one period


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  Transition
     Comprising = everything stated in the
      claim, and possibly additional features/
      restrictions
     Consisting of = exactly what is stated in
      claim [no more; no less]
     Consisting essentially of = chemical
      composition stated in claim, and
      possibly some other stuff

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  List of Attributes
     Specific attributes that the invention
      must possess in order to constitute the
      invention
     List may be in outline form using bullets
      or (a), (b), etc. Don’t use 1., 2., etc.
     May include means-plus-function clause
     May include “one . . . selected from the
      group consisting of . . .”

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  Qualifying Words/Phrases/Clauses
     Reduce the scope of subject matter
      stated in preamble and itemized
      features
     “Wherein” or “whereas” clauses are
      common




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  Dependent Claim
     Refers back to independent claim, and
      adds a further limitation to scope of
      claim
     Shorthand format to simplify
      understanding claims
     Necessary in the event that a court
      would throw out an independent claim
      during an infringement trial

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  Prosecution of Patent Application
     Filing (Express Mail to USPTO)
     Review for completeness
     Review of drawings
     Review for national defense issues
     Examination by Examiner
     Rejection by Examiner (typical on first
      reading)

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  Prosecution (cont)
     Amendment of application by
      practitioner
     Second examination by Examiner
     Allowance
     Payment of issue fee
     Printing and issue


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  Prosecution (cont)
     Other [generally bad] stuff that can happen
              Requirement for restriction of species
              Requirement for formal drawings
              Continuation-in-part application
              Continuing prosecution application
              Reexamination
              Reissue
              Appeal to Board of Patent Appeals


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  Contents of Issued Patent
     Front page
              Patent number
              Filing/issue dates
              Title
              Names of Inventors
              Assignment
              References cited
              Abstract

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  Contents of Issued Patent (cont)
     Drawings
              Schematic drawings to illustrate invention
               (and sometimes to distinguish from prior
               art)
              Engineering drawings are not required, not
               expected, and generally avoided




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  Contents of Issued Patent (cont)
     Specification
              Title
              Related applications and government
               sponsorship
              Background of the invention, including
               description of related art
              Objects of the invention
              Summary of the invention

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  Contents of Issued Patent (cont)
     Specification (cont)
              Description of the drawings
              Detailed description of the invention
              Best mode of the invention
              Examples of use of the invention
              Claims


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  File Wrapper Estoppel
     Intellectual “real estate” given up
      during patent prosecution is gone
      forever




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  Infringement
     Illegal use of patented subject matter,
      by someone other than patent owner
              Making
              Having made
              Using
              Selling



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  Infringement (cont)
     Literal infringement
     Infringement under rule of addition
     Infringement under doctrine of
      equivalents – is allegedly infringing
      equivalent within ordinary skill in the art
     Noninfringement under rule of
      subtraction

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  Remedies for Infringement
     Cease-and-desist order (injunction)
     Compensation for economic losses
              Profits from lost sales
              Lost accessory sales
              Lost royalties
              Losses from price erosion from market dilution
              Prejudgment interest
     Treble damages and attorneys’ fees

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  U.S. International Trade Commission
     Can enforce prohibitions against sale
      and use of infringing articles made
      overseas
     Indirectly makes overseas manufacture
      subject to domestic infringement laws
     Can go after importers
     Can seize infringing articles made
      overseas

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