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1. The Patent Process
Mark R. Powell
U. S. Patent & Trademark Office

2. Forms of Intellectual Property
• Patents
• Trademarks
• Copyrights
• Trade Secrets

3. Patents
• Historical Context
• Definition
• Federal Statutes 35 U.S.C.
• Court of Appeals for the Federal Circuit

4. Patenting vs. Trade Secrets
• The bargain: protection of the invention as
a reward for disclosing it to others
• How this advances technology in general

5. What Patents Can Protect
• Virtually any item, compound, or process
made by man
• Exceptions vary by laws of individual
countries

6. Timelines
• In general, one year limit from public
disclosure to filing
• Invention “for sale” starts the bar even if
discussions private
• Invention recordation at Science Centers
may begin critical one-year period

7. Types of Applications
• Utility
• Designs
• Plant
• Provisional Applications
• Continuing Applications

8. Patent Applications
• Title, abstract, declaratory documents
• Specification
– Background
– Summary of Invention
– Detailed description and drawings
• Claims

9. Specification
• What should be included
• What is not necessary
• Examples of inadequate disclosures
resulting in invalid patents

10. Claims
• Exact statements of precisely what the
invention encompasses
• Claims are what are substantively examined
and eventually allowed or finally rejected
• Broad vs. narrow
• Examples

11. Patent Examination
• Laws and regulation similar world-wide
• Whole application reviewed for
technicalities (regulations—form) and well
as substance (patentability)
• Search
• Action rendered by examiner

12. Conclusion of Examination
• Allowance
• Final rejection
• Appeal
• Filing of continuing applications
• Abandonment

13. Patent Allowed to Issue
• Means that you can prevent others from
practicing the invention covered by the
claims
• Does not necessarily mean that you can
practice it yourself
• Licensing or sale of patent rights

14. Inventorship
• Those who contribute ideas that are
embodied in the claims
• A sole inventor must have conceived the
ideas in all claims
• Those who contribute ideas, but whose
ideas don’t make into claims are not
inventors

15. Introduction to the Patent
Cooperation Treaty

16. The Patent Cooperation Treaty
• A United Nations Treaty
– signed in June of 1970 at the Washington
Diplomatic Conference
– became operational in June of 1978
– administered by the International Bureau (IB)
of the World Intellectual Property Organization
(WIPO) in Geneva, Switzerland

17. Purposes of the PCT
• To simplify the process of filing foreign
patent applications
• To give every regional or national patent
Office designated by the applicant the
benefit of
– a search by a major patent Office
– an optional examination by a major patent
Office

18. PCT Contracting State
• A country which is a signatory to the PCT
• Eighteen (18) Contracting States in 1978
• Currently one hundred and twenty-three (123)
Contracting States
• Patent protection is available in each PCT
Contracting State through either
– a national patent Office
– a regional patent Office
– or both

19. Regional Patents
States designated for regional protection
AP ARIPO Patent EA Eurasian Patent EP European Patent OA OAPI Patent
BW Botswana AM Armenia AT Austria v BF Burkina Faso
v BE Belgium v BJ Benin
GH Ghana AZ Azerbaijan
BG Republic of Bulgaria v CF Central African
GM Gambia CH Switzerland Republic
KE Kenya BY Belarus v CY Cyprus v CG Congo
LS Lesotho KG Kyrgyzstan CZ Czech Republic
v
DE Germany CI Cô te d’Ivoire
MW Malawi KZ Kazakhstan v CM Cameroon
MD Republic of DK Denmark
MZ Mozambique EE Estonia v GA Gabon
SD Sudan Moldova ES Spain v GN Guinea
SL Sierra Leone RU Russian FI Finland v GQ Equatorial
v SZ Swaziland Federation v FR France Guinea
TJ Tajikistan GB United Kingdom v GW Guinea-Bissau
TZ United
Republic TM Turkmenistan v GR Greece v ML Mali
HU Hungary v MR Mauritania
of Tanzania v IE Ireland v NE Niger
UG Uganda v IT Italy v SN Senegal
ZM Zambia LI Liechtenstein v TD Chad
LU Luxembourg
ZW Zimbabwe v
v TG Togo
MC Monaco
v NL Netherlands
PL Poland
v Regional patent only PT Portugal
RO Romania
SE Sweden
v SI Slovenia
SK Slovakia
TR Turkey

20. National Patents
States designated for national protection
AE United Arab Emirates HR Croatia NA Namibia
AG Antigua and Barbuda HU Hungary NI Nicaragua
AL Albania ID Indonesia NO Norway
AU Australia IL Israel NZ New Zealand
BA Bosnia and Herzegovina IN India OM Oman
BB Barbados IS Iceland PG Papua New Guinea
BR Brazil JP Japan PH Philippines
BW Botswana KP Democratic People’s RO Romania
BZ Belize Republic of Korea SC Seychelles
CA Canada KR Republic of Korea SG Singapore
CN China LC Saint Lucia SY Syrian Arab Republic
CO Colombia LK Sri Lanka TN Tunisia
CR Costa Rica LR Liberia TT Trinidad and Tobago
CU Cuba LT Lithuania UA Ukraine
DM Dominica LV Latvia US United States of America
DZ Algeria MA Morocco UZ Uzbekistan
EC Ecuador MG Madagascar VC Saint Vincent and the
EG Egypt MK The former Yugoslav Grenadines
GD Grenada Republic of Macedonia VN Viet Nam
GE Georgia MN Mongolia YU Serbia and Montenegro
MX Mexico ZA South Africa

21. Number of international applications
received
110,065
120,000
110,000
100,000
90,000
80,000
70,000
60,000
50,000
40,000
30,000
20,000
10,000
0
1978
1982
1984
1986
1988
1994
1996
1998
1980
1990
1992
2000
2002

22. Traditional patent systems
(months) 0 12 File
applications
File abroad
application
locally
Local patent application followed within 12 months by
multiple foreign applications claiming priority under
Paris Convention:
- multiple formality requirements
- multiple searches
- multiple publications
- multiple examinations and prosecutions of
applications
- translations and national fees required at 12 months

23. PCT System
Chapter I 20 30
International
(months) publication
0 12 18
OR
Enter
File first File International Search File national
application PCT Report & Written Demand phase
Opinion of the ISA
International
preliminary 30
examination
Local application followed within
12 months by the PCT, claiming priority Chapter II
under the Paris convention
- one set of formalities requirements
- international search
- international publication
- optional international preliminary examination
- translations and national fees required at 20 or 30 months, and
only if applicant wants to proceed with national phase entry

24. The two phases of the PCT
• International Phase
– Chapter I (mandatory)
• designated Offices
– Chapter II (optional)
• elected Offices
• National Phase (stage)

25. The international application
• A single application is
– filed in one language
– filed in one patent Office
• the receiving Office (RO)
• usually the applicant's home patent Office
– treated as a national application in each designated
State as of the international filing date
• Compliance with the form prescribed for the
international application must be accepted by all
designated States during national stage

26. Chapter I proceedings
• International application filed
• International search performed by the International
Searching Authority (ISA)
• International Search Report and Written Opinion of the
International Searching Authority prepared
• Optional amendment to the claims only
– filed with the International Bureau (IB) of WIPO under
Article 19 after Search Report mailed
• International application, International Search Report
and Article 19 amendment published by IB
– published pamphlet sent to designated States by IB
– Written Opinion of the International Searching Authority not
published with pamphlet

27. Chapter II proceedings
• Demand electing at least one eligible State is filed with
a competent International Preliminary Examining
Authority (IPEA)
– may include amendments to description, claims and drawings
under Article 34
• Written Opinion of the International Searching
Authority is considered the Written Opinion of the IPEA
• A second Written Opinion will be prepared only in very
rare circumstances
• International Preliminary Report On Patentability or
“IPRP” (form PCT/IPEA/409) is
– prepared by IPEA and sent to applicant and IB
– sent to elected States by IB

28. Steps for national stage entry
• Prepare translations of the international application into
languages required by the desired patent offices as
applicable
– translations should be “accurate”
– amendments, even those considered to be minor in nature,
should not be made to the translation
• applicant may file amendments to the application in each DO/EO
• Transmit translation and necessary fees to each desired
national or regional patent office previously designated/
elected

29. Purpose of national phase
• Once national phase entry requirements have
been met, each designated/elected Office
decides whether to grant a patent or reject the
claims

30. Advantages of the PCT
• To file in up to 123 countries with a single
international application
• To delay the expenses associated with
– translations
– foreign filing fees
– local associates
• To provide an early indication of pertinent prior
art
• To give extra time for assessment of commercial
viability in designated States

31. January 2004 changes
• Enhanced international search and preliminary
examination (EISPE) system
• Change to time limit for filing a demand for
international preliminary examination
• Automatic designation and election of
Contracting States
• Simplified fee system

32. PCT resources
• PCT and Regulations under the PCT, the PCT
Newsletter, the PCT Applicant's Guide, etc.,
available on the Internet at the following URL:
http://www.wipo.int/pct/en/index.html

33. Contact Information
mark.powell@uspto.gov
www.uspto.gov

34. Thank You!