USPTO Basics for Entrepreneurs

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Silvester Brown
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1 USPTO Basics for Entrepreneurs Azam Khan Deputy Chief of Staff Brett Feeney Senior Advisor for Policy

2 Intellectual Property: The Global Currency of Innovation IP enables small and medium sized businesses to secure the investment capital they need to bring their goods and services to market. Small and new business create 2 out of 3 new American jobs. IP protects innovation and invention in the market and provides the incentive for companies and universities to fund Research and Development.

Small and new business create 2 out of 3 new American jobs.

3 Intellectual Property Overview Copyrights Trademarks Patents Trade Secrets Data Rights 10/14/

4 USPTO Strategic Priorities 1) Provide timely examination of patent applications: Reduce the average time to first office action on the merits for patent applications to 10 months, and average total pendency to 20 months. 2) Improve the quality of patent examination. 3) Improve/enhance patent appeal and post-grant processes. 4) Optimize trademark quality and maintain pendency. 5) Demonstrate global leadership in all aspects of IP policy development. 6) Improve information technology (IT) infrastructure and tools. 7) Implement a sustainable funding model for operations. 8) Improve relations with employees and stakeholders.

3) Improve/enhance patent appeal and post-grant processes. 4) Optimize trademark quality and maintain pendency.

5 Small Business Resources Patent Assistance Center Trademark Assistance Center Inventors Eye enewsletter On-line chats Bi-monthly Experts answer questions Transcripts on-line 105

6 Pro Bono Pilot Program Minnesota Both private and corporate attorney involvement Bundled and unbundled services 501 (c)(3) administrator LegalCORPS of Minneapolis Matches clients with volunteer attorneys Inventors investment of time and money USPTO Certification training, patent search, financial limit plus $1000 admin cost 106

Matches clients with volunteer attorneys Inventors investment of time and money

7 USPTO Ombudsman Program enhance the USPTO s ability to assist applicants with issues that arise during patent application prosecution when there is a breakdown in the normal prosecution process, the Ombudsman Program can assist in getting the process back on track USPTO is now creating a Small Business specific ombudsman program [email protected] 107

prosecution process, the Ombudsman Program can assist in getting the process back on track

8 IP Assessment Tool IP Awareness Assessment tool Self assessment for small businesses Educational materials customized to business needs CBT training from answers 108

9 IP Assessment Tool 109

10 IP Assessment Tool 110

11 IP Assessment Tool 111

12 USPTO NSF Pilot Program Provide comprehensive IP support to Phase I NSF Recipients through USPTO s Inventor and Small Business Center Pilot Program Launched in October 112

13 America Invents Act Status House of Representatives passed America Invents Act (AIA) on June 23, 2011 and passed the Senate on September 8, The Act was signed by the President on September 16, /14/

14 America Invents Act: Important Provisions Change to First Inventor to File USPTO Fee Setting Authority Establishment of Track 1 Accelerated Review 50% Discount for Small Business Establishment of Post Grant Review Mechanism at USPTO 10/14/

Track 1 Accelerated Review 50% Discount for Small Business

15 Group 1 Rulemakings and Other Actions (60-Day and Under Effective Dates) (a.k.a. G1 Rulemakings) Date of Enactment 10 Days After Date of Enactment 60 Days After Date of Enactment October 1, 2011 Reexamination transition for threshold Tax strategies are deemed within the prior art Best mode Prioritized examination 15% transition surcharge Electronic filing incentive Reserve fund Human organism prohibition Patent term extension for drugs Virtual and false marking Venue change from DDC to EDVA for suits brought under 35 U.S.C. 32, 145, 146, 154 (b)(4)(a), and 293 OED Statute of Limitations Fee Setting Authority (enacted after rulemaking) Establishment of micro-entity (enacted after rulemaking) 10/14/

16 Group 2 Rulemakings (12-Month Effective Date) (a.k.a. G2 Rulemakings) Inventor s oath/declaration Third party submission of prior art for patent application Supplemental examination Citation of prior art in a patent file Priority examination for important technologies Inter partes review Post-grant review Transitional post-grant review program for covered business method patents 10/14/

17 Group 3 Rulemakings and Other Actions (18-Month Effective Date) (a.k.a. G3 Rulemakings) First-Inventor-to-File Derivation proceedings Repeal of Statutory Invention Registration 10/14/

18 Studies: USPTO as Lead Agency Topic Objective Due Date from Enactment International Protection for Small Businesses Prior User Rights Report on how to help small businesses with international patent protection, including a revolving fund loan or grant program to defray costs Report on the operation of prior user rights in other industrialized countries 4 months 4 months Genetic Testing Misconduct Before the Office Satellite Offices Virtual Marking Report on providing second opinion genetic diagnostic testing Report on impact of new statute of limitations provisions barring disciplinary action in response to substantial evidence of misconduct before the Office Report on the rationale for selecting the location of satellite offices, progress in establishment, and achieving identified purposes Report on the effectiveness of the virtual marking as an alternative to physical marking articles 9 months Every 2 years 3 years 3 years Implementation of AIA Report on how AIA is being implemented by the USPTO and its effect on innovation, competitiveness, and small business access to capital 4 years 10/14/

Misconduct Before the Office Satellite Offices Virtual Marking Report on providing second opinion genetic diagnostic testing Report on impact of new statute of limitations provisions barring

19 Studies: USPTO as Consultant Topic Section of AIA Lead Agency Objective Due Date from Enactment Effects of First- Inventor-to-File on Small Business 3 Small Business Administration Report on effects of small businesses switching to a firstinventor-to-file system 1 year Patent Litigation 34 General Accountability Office Report on impact of patent infringement litigation by nonpracticing entities 1 year 10/14/

businesses switching to a firstinventor-to-file system 1 year Patent Litigation 34 General

20 Programs: USPTO to Establish Topic Objective Due Date from Enactment Pro Bono Diversity of Applicants Patent Ombudsman for Small Businesses Satellite Offices Directs USPTO to work with IP law associations to establish pro bono programs to assist financially underresourced independent inventors and small businesses Requires USPTO to establish methods for studying diversity of patent applicants Requires USPTO to establish and maintain a Patent Ombudsman Program to provide support and services to small business concerns and independent inventors Requires USPTO to establish 3 or more satellite offices in the U.S. Immediately 6 months 12 months 3 years 10/14/

establish methods for studying diversity of patent applicants Requires USPTO to establish and maintain a Patent Ombudsman Program to provide support and services to

21 Opportunities for Public Input Pre-enactment stakeholder meetings Two sessions held in August 2011 Notice-and-comment rulemaking Formal comments Public roundtables Informal comments AIA Microsite 10/14/

22 AIA Micro-Site One-stop shopping for public regarding AIA implementation Regularly updated 10/14/

23 Thank You

The USPTO: Patent Application and Examination Processes

The USPTO: Patent Application and Examination Processes Ram Shukla Supervisory Patent Examiner 571-272-0735 [email protected] Jeanne Clark Patent Examination Policy Advisor, MPEP 571-272-7714 [email protected]