Patent Prosecution – the process for getting a patent

1. Patent Prosecution – the process for getting a patent Ellen Gonzales April 17, 2012 (Your taxes are due today)

2. Patentable Subject Matter • Determined by Statute: • 1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof; • 2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and • 3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. • The term of utility and plant patents is generally 20 years from date of filing Design patents have a term for 14 years.

3. Submitting a disclosure • Is there something that I am doing that is both new and non-obvious in light of others’ work? • Can I describe it well enough that someone else can replicate it? • If no, will I be able to flesh it out in a year? • Other thoughts • Is it commercially relevant? • Does it contribute to the company’s assets? • Do I have a pathway to marketability?

4. Preparing the application • Communicate what is new and non-obvious • Communicate variations/changes/options • What would you do if you were your own competitor?

5. Parts of the application • Specification and drawings • Claims

6. Ellen’s mousetrap • 1. An apparatus for entrapping a mousecomprising: • a wire mesh cage; • a long tunnel extending from the cage • a sensor in the tunnel • a door at the end of the tunnel configured to shut when the sensor is triggered; • cheese in the cage; • a system for playing cheese-themed music; • speakers in the cage for playing the cheese-themed music. • 2. The apparatus of claim 1 further comprising moving laser lights directed into the cage. • 3. A system for selecting cheese-themed music comprising: • a computer program configured to identify the lyrics of a song and determine if any of the lyrics include a word selected from the list comprising: cheese, edam, havarti, bleu, swiss, or cheddar.

7. Note: • Review the claims carefully • Do they describe your invention? • Do they describe something that is new and non-obvious?

8. Declaration/Power of attorney • States that you are the inventor of the claimed invention. • Make sure you are. • Gives the attorney the power to represent you in front of the USPTO • Different from assignment documents

9. Restriction Requirement • The USPTO will only examine one invention per filing fee. • You can prosecute multiple inventions at the same time by filing additional fees. • You can file a “divisional” application including the restricted claims any time before final disposition of the case • issuance • abandonment

10. Ellen’s mousetrap • Invention 1 – apparatus for entrapping • Invention 2 – system for selecting cheese-themed music

11. Office actions • Formalities based rejections • Typographical errors (especially in claims) • Indefinite language • Lack of support in specification • Art-based • Novelty – a single publication or combination of publications describes each claim element. • Obviousness – it would be obvious to modify a publication or combination of publications to obtain the claimed elements

12. Ellen’s mousetrap • 1. An apparatus for entrapping an animal comprising: • A cage; • a tunnel extending from the cage • a sensor in the tunnel • a door at the end of the tunnel configured to shut when the sensor is triggered; • bait in the cage. • Rejected based on a publication showing a standard live trap.

13. Ellen’s mousetrap • 1. An apparatus for entrapping an animal comprising: • A cage; • a tunnel extending from the cage • a sensor in the tunnel • a door at the end of the tunnel configured to shut when the sensor is triggered; and • bait in the cage. • 2. The apparatus of claim 1 further comprising: • a system for playing music; • speakers in the cage for playing the music. • Claim 2 rejected as obvious in light of live trap and a system for playing music to animals in zoo enclosures.

14. Overcoming rejections • Argue original OR amended claims • Not all claimed elements are shown • Combination wouldn’t produce claimed invention • Swear behind reference (Not available after March 16, 2013) • Secondary Evidence • Evidence that other people have tried and failed or stated that your claimed invention wouldn’t work. • Commercial success • Evidence of copying

15. Ellen’s mousetrap • Combine claims 1 and 2 and argue music in cage is not obvious; • Add new claim combining claims 1 and 2 and stating that music is only triggered to play when sensor is activated; • Argue that evidence suggested that music scares rodents away from the source of the music; • Show evidence that I have sold 1,000,000+ mousetraps. • Show evidence that “Elaine’s mousetrap” in Skymall is identical to mine.

16. If Examiner is not convinced • Back and forth until final office action is issued. • After final: • RCE – new filing fee to keep arguing • Appeal – review process with panel of examiners (more expensive than RCE)

17. Continuation practice • Until final disposition you can always file a • Divisional – same description, previously restricted claims, original filing date applies • Continuation – same description, new claims, original filing date applies • Continuation-in-part – adds new description, new or old claims, original filing date for previously described matter, new filing date for new matter.

18. If Examiner is convinced • Notice of allowance • Issue fee payment (3 months after NOA) • Issuance (remember this is final disposition) • Maintenance fees 3.5, 7.5, 11.5 years after issuance