THE PATENT APPLICATION PROCESS, A to Z Course No. 875B GOLDEN GATE UNIVERSITY SCHOOL OF LAW SUMMER Professor Rodeen-Dickert

Transcription

1 THE PATENT APPLICATION PROCESS, A to Z Course No. 875B GOLDEN GATE UNIVERSITY SCHOOL OF LAW SUMMER 2011 This is a summer session course on the patent application process from start to finish. If you have any questions, is available by telephone ((510) or (925) ), and/or (crodeen@westpatentlaw.com). Once the summer session begins, will be available for consultation (by appointment) before class. The Patent Application Process is a web-enhanced course, meaning a separate web-page has been set up for students to use during the summer session. Our course web-page is administered by Moodle, a division of Golden Gate University. The web site is found at Registered students will receive an from Moodle containing a password to access the course web-page, and instructions for using the page. Questions about the web-page should be directed to the Moodle help desk at Students should let know immediately if they are registered in the class but have not received a password from Moodle. contacts her students by . You MUST have listed with Moodle an address that you check daily. You will also submit most of your assignments using the class web page drop box system. Handouts, some assignment materials and presentation slides shown in class will also be posted on our class web site. OBJECTIVE: Students will learn how to prepare, file and prosecute a United States Patent Application. You will need the following material for this course: 1. Required: The Manual Patent Examining Procedure (MPEP). You can download a copy from the USPTO web site [ 2. Required: You will also need the following statutes: 35 USC and 37 CFR, which you can also download from the USPTO website. [ The statutes are included as part of the digital and print versions of the MPEP. 35 USC is MPEP, Appendix L Patent Laws; 37 CFR is MPEP Appendix R Patent Rules. 3. Make certain your computer will display patent images. Follow instructions on the USPTO web site. 4. You can also get free and easy copies of US patents as pdf files, from and 5. Students are encouraged to bring their portable computers to class. Page 1 of 10

2 Attendance and preparedness records for the class will be maintained. If a student misses more than 1 class without receiving a pre-approved excused absence from Professor Rodeen- Dickert (can be done via ), 2 points will be deducted from the student s final grade for each un-excused class that is missed. Assignments are due on the date specified. For example, the first assignment is due on the first day of class. The vocabulary words are terms of art in patent law, and you need to know the meaning of all of the assigned vocabulary terms in order to apply the rules associated with the terms. A list of vocabulary words is included at the end of this syllabus, and will also be posted on the class Moodle web site. Vocabulary terms may form the basis for some quiz and final exam questions. It is suggested that students create a list of these terms and their meanings for their own reference. Grading. Class grades will be based on a total of 100 points. The final exam will be worth 25 points. Assignments will be worth up to 45 points. There will be a short quiz at the start of each Monday class. The quizzes and homework in the Monday classes will count for up to 30 points (five quizzes worth up to 6 points each). The class quizzes will be closed book, closed computer. The final exam will be closed book, and will include multiple-choice questions similar to those given on the Patent Bar Exam. You will enter your final exam answers on a machine readable answer sheet. On average, you will have about 3 minutes to answer each question on the real patent bar exam. To accommodate students with disabilities, all students will all be given up to 6 minutes per question on the class quizzes, if the quiz questions are of the type that will be on the Patent Bar Exam. Students needing additional time for the final exam (beyond the 3 scheduled hours) should contact ADA Program Coordinator Melissa Matthews at , mmathews@ggu.edu, in room US patent law is undergoing significant changes due to actions by the USPTO, the courts, and pending patent reform bills in the US Senate and House of Representatives. As a result the course syllabus is flexible and will be updated as needed to reflect the changing views of the USPTO, court holdings, and the fate of the pending patent reform bills in the US Congress. The most current course syllabus will be the one posted on the class Moodle site. Any updated syllabus, at the top, will be include the highlighted date of the update, and a short summary of the changes. Students are responsible for checking the Moodle site before each class, to assure they are working from the most current syllabus. Page 2 of 10

3 Class 1 Wednesday, June 1, 2011 Assignment Due: Explore the USPTO website ( and read about general information concerning patents ( i.e., What is a Patent, Patent Laws, What Can Be Patented, The United States Patent and Trademark Office. Bring a printed or digital copy (if you bring your computer to class, which is encouraged) of the MPEP Table of Contents ( Be prepared to discuss the content of the website in class. In Class: Introduction to Cyber Campus and Virtual Tour of USPTO websites; demonstration of how to search for resources related to the patent application process Introduction to patents; discussion of overall patent process; the MPEP; client interviews Class 2 Friday, June 3, 2010 (Note: this is the makeup class for 5/31 holiday) Assignment Due: MPEP Assignment (posted on Moodle); turn into designated drop box on the class Moodle site. (Worth up to 5 points) Peruse the 2010 Supreme Court casebilskiv. Kappos561 U.S. (2010), Look over MPEP Ch. 900 Prior Art, Classification, and Search. Print a copy of Section 112, and bring it to class if you will not have your computer in class. Quiz 1: A closed book quiz based on information on the web site (re: what is a patent and the 3 types of US patents; who can apply for a patent; maintenance fees; what can be patented; and patent laws) and an overview of assigned new vocabulary words. (Worth up to 6 points) In Class: Patent searches; 35 USC Section 112; 35 USC Section 101 and In Re Bilski. Class 3 Monday, June 6, 2011 Assignment Due: Preparation for Initial Attorney-Client Questions that you will want to consider for the client invention interview have been posted on our class Cyber Campus site, on the doc sharing page, as Initial Client Interview re New Invention.doc. In Class: The invention process and working with inventors; contents of a U.S. Patent Page 3 of 10

4 Client Interviews Students will conduct a client interview in class, with each student acting as both an attorney, while Prof. RoDi will act as the inventor. As the inventor, she will present an invention to the class, who will ask questions to evaluate the patentability of the invention and collect information for writing an application. As an attorney, you will then take the inventor s information and conduct a search for the invention on the USPTO website (i.e., look for prior art affecting patentability) and report your findings in a letter to the client due Monday, June 13. Class 4 Wednesday, June 8, 2011 Assignment Due: Review 35 USC Section 112 material from last week. Review MPEP Chapter 600, and carefully read the Claims Handout posted on the doc sharing page of our class Moodle site. Quiz 2: (Worth up to 6 points) In Class: Claims and claim drafting. Class 5 Monday, June 13, 2011 Assignment Due: Client Report (posted on Moodle); turn into designated drop box on the class Moodle site. (Worth up to 5 points) Go to the USPTO web site, and review Application for a Patent. Peruse MPEP Ch. 600 Parts, Form, and Content of Application and Ch. 500 Receipt and Handling of Mail and Papers [turn the pages, skim the headings.] Also go to download all of the USPTO documents needed to file a regular US application, including an assignment. [Utility Patent Application Transmittal Form or Transmittal Letter [PTO/SB/05]; as Appropriate Fee, Credit Card Payment Form [PTO-2038], Fee Transmittal Form [PTO/SB/17]; [Application Data Sheet (see 37 CFR 1.76) - we will not complete one, but download explanation from - (31 pages) so you will understand what the ADS is all about], Oath or Declaration [both PTO/SB/01 and PTO/SB/01A], Appointment of Attorney [PTO/SB/81] Assignment (not required, but we will use one in class, download sample form, former PTO/SB/15, which is defective, but will provide a basis for discussion; also download PTO1595, patent recordation cover sheet.) (see MPEP Chapter 2100). Also download PTO/SB/16, Provisional Application Page 4 of 10

5 for patent Cover Sheet, which we will discuss, but not use. YOU WILL NEED PRINTED COPIES FOR CLASS AND TO COMPLETE THE ASSIGNMENT DUE NEXT WEEK. In Class: Filing U.S. Patent Applications; Electronic Filing System (EFS) More claim drafting exercises On our class site under a separate tab on the doc sharing page will be a utility patent application to file, with information on inventors and assignor. Remember the citations included in A Guide to Filing a NonProvisional (Utility) Patent Application. The address is: It will help you with the patent filing assignment due Monday, June 20. You will also need to know how to identify claims (independent, dependent, multiple dependent, how to calculate filing fees and claims fees, how to determine small entity, and so forth. Check the MPEP references especially for multiple dependent claims (see MPEP 700, ). Class 6, Wednesday, June 15, 2011 Assignment Due: Patent claim assignment (posted on Moodle); turn into designated drop box on the class Moodle site. (Worth up to 7 points) Review 35 USC Section 102 and 103. Print out a copy of 35 USC 102, even if you have digital copies on your computer and refer to the printout as you read. Bring your printouts to class. From the USPTO website, review Novelty and Non-Obviousness, Conditions for Obtaining a Patent [ Begin to explore MPEP, chapter 2100, which is a heavily tested chapter on the patent bar exam. (The MPEP can be overwhelming. Start with the section heads and go back to the vocabulary lists, or elsewhere, and look up words of art you do not understand. At this point, do not try to read and understand every word you read in the MPEP 2100, but begin to think about concepts e.g., What is prior art, and what constitutes prior art under US law 25 USC 102? When does art become prior for US patent purposes?) Concentrate on MPEP 2100 sections Quiz 3: (Worth up to 6 points) In Class: Anticipation and Statutory Bars; Priority; Paris Convention; 35 USC Section 10;. (35 USC Section 103 will be covered in Class 10); MPEP Page 5 of 10

6 Class 7 Monday, June 20, 2011 Assignment Due: Complete and prepare to file at the USPTO, using EFS, all documents (except the IDS) needed to file a regular U.S. patent application (posted on Moodle); turn into designated drop box on the class Moodle site. (Worth up to 7 points) Peruse MPEP Ch Duty of Disclosure In Class: IDS and Duty of Disclosure Class 8, Wednesday, June 22, 2011 Quiz 4: (Worth up to 6 points) Assignment Due: None In Class: A continuation of materials and subject assigned for Monday, June 15. Class 9, Monday, June 27, 2011 Assignment Due: Information Disclosure Statements - download from USPTO web site, form PTO/SB/08b. (Can you use this form? What else might you need to file?) Prepare an IDS (and whatever else you will need to file to comply with the duty of disclosure) using the information provided under the IDS Assignment tab of our class doc sharing page on our Cyber Campus class site. For this assignment, assume that your IDS will be filed after receipt of the first US office action for your application, but before the final office action, notice of allowance or Quayle action. Turn into designated drop box on the class Moodle site. (This assignment is meant in part to illustrate how you will be required to file documents at the UPSTO, in the real world, which you have never filed before, and for which there is no teacher available. You must read the relevant statute, rules and MPEP sections, and see what the USPTO web site has to help you. The IDS Assignment has its own tab on the doc sharing page.)(worth up to 6 points.) Peruse MPEP Ch. 700 Examination of Applications In Class: Post-filing prosecution; responding to Office Actions; amendments, objections and rejections Page 6 of 10

7 Class 10, Wednesday June 29, 2011 Assignment Due: Review 35 USC Section 103 and look over MPEP sections , noting especially 2141, Examination Guidelines for Determining Obviousness Under 35 USC 103. Read the April 2007 Supreme Court case of KSR v Teleflex, 550 US 398, 82 USPQ2d 1385 (2007). Quiz 5: (Worth up to 6 points) In Class: Obviousness and non-obviousness under 35 USC Section 103 Class 11, Wednesday, July 6, 2011 Assignment Due: Response to Office Action. On our class Moodle site, there is a document entitled Office Action that contains the information you are to use in filing the response. Turn into designated drop box on the class Moodle site. (In this assignment, you will be responding to a part of an office action, just to give you a sense of what is involved and the language and style used in a response. The Office Action Assignment has its own tab on the doc sharing page.) (Worth up to 8 points) Peruse MPEP Ch Appeal, Ch Allowance and Issue, Ch Maintenance Fees, and Ch Patent Terms and Extensions In Class: Prosecution after final rejection; Request for Continued Examination; Appeals and Allowance Class 12, Friday, July 8, 2011 (note: this is a make-up due to the July 4 th holiday) Assignment Due: Carefully read 37 CFR Also, 37 CFR and Read handout on Affidavit Practice posted on doc sharing portion of class Moodle site. In Class: Swearing Behind a Reference and Affidavit Practice Page 7 of 10

8 Class 13, Monday, July 11, 2011 Assignment Due: Post-final rejection filing (TBD) Turn into designated drop box on the class Moodle site.(worth up to 7 points) Peruse MPEP Ch Correction of Patents, Ch Citation of Prior Art and Ex Parte Reexamination of Patents, Ch Optional Inter PartesReexamination, and Ch Interference Proceedings Study Correction of Defective Patent handout posted on doc sharing portion of class Moodle site. In Class: Amendment practice after Festo; correcting defective patents; Re-examination; Reissue; Interference Class 14, Wednesday, July 13, 2011 In Class: Review and additional topics Additional Topics to be Covered as Time Permits Ethics will be covered throughout the course. Overseas Prosecution and PCT: Selected reading:slate and Takahashi, Writing US Patent Applications for Prosecution Abroad, Journal of the Patent and Trademark Office Society, Vol. 89, NO. 2, pp (Feb 2007), which is posted on the doc sharing page of the class Moodle site. Page 8 of 10

9 VOCABULARY ASSIGNMENTS: In order to work in any field, you must know and understand the language of the field. This is especially true in patent law. Unfortunately for the beginner in the field, definitions of many patent terms of art, as they are called in patent law, require an understanding of other, and as yet unknown to the novice, patent terms of art. It is important for students to create their own glossaries of patent terms. To create your own glossary, you can use the glossary on the USPTO web site (URL listed on the Webliography tab on our Moodle site), the PLI 2002 flash cards (with caution due to the 2002 date of those materials also note where these cards have been edited) and the supplemental vocabulary definitions as guides. The PLI Flash Cards and the supplement are posted on the doc sharing portion of the class Moodle site. Also learn to go to the MPEP, to see how the terms of art are used in the Manual. There is a wealth of information in the MPEP more than you need for this class, but it is important to know it is there, for free. Your glossary should include at least the terms of art listed below for classes 2, 4, 6, 8 and 10. Quiz questions may include terms of art that were assigned for previous classes. For example, in class 4, you may be tested on terms of art assigned for class 2. The quiz questions will not ask you to define the terms, they will require that you apply the terms in real world situations, as will the patent bar exam. Class 2 Vocabulary: Abandonment, access (to pending, issued and/or abandoned US patent applications), allowance, amendment, anticipation, appeal, appeal brief, application, best mode, certificate of mailing / Express Mail, claims. Class 4 Vocabulary: Continuation, continuation-in-part, correction of patents after issue, design patents, disclaimer, double patenting, Duty of Disclosure (IDS), electronic filing system (EFS USPTO), enablement, ethics, extensions of time, filing date, final rejections, foreign filing licenses. Class 6 Vocabulary: In this country, incomplete application, incorporation by reference, interference, interviews, invention under US law, inventorship and correction of inventorship), inventorshipvs authorship, inventorshipvs ownership, maintenance fees, new matter, oath/declaration, obviousness. Class 8 Vocabulary: PAIR, Paris Convention, patent (utility, plant and design), patent terms (ie, length of time patent is in force), patent term adjustment, patent term extension, Patent Cooperation Treaty (PCT), prima facie showing of obviousness old suggestion / motivation test overruled by US Supreme Court in KSR v Teleflex, decided April 2007, priority (domestic and foreign), protest, provisional patent application, record, reduction to practice, reissue, rejection/objection, reply brief. Page 9 of 10

10 Class 10 Vocabulary: Representation, restriction, revival, secondary considerations, serial number / filing receipt, small entity / large entity, request for continued examination (RCE), swearing back (or swearing behind) a reference, withdrawal. Page 10 of 10