Patent procedure, Patent Search: novelty, validity, freedom-to-operate and technology

Patent procedure

FILING

  1. Prepare the description of your invention ( with drawings)
  2. Discuss your material with Patent Hatchery ( we can sign NDA if needed, however our profession assumes confidentiality)
  3. Develop strategy, which includes

(a) filing/not filing U.S. provisional application;

(b) performing patent search and patentability analysis;

(c) filing U.S. nonprovisional application;

(d) filing PCT application;

(e) filing National stage for your PCT application;

(f) filing design patent application;

(g) filing Copyright application for your software in addition to patent application for the algorithm.

  1. Additional options:
  1. filing petition for PPH (Patent Prosecution Highway) program, which is a request to issue U.S. patent based on the positive decision on your National patent application in your country;
  2. Filing a petition on accelerated examination based on the age of one of inventors (>65 y.o.);
  3. Filing a petition on fast track examination with paying a fee
  1. Translation services
  2. Financial agreement

(a) choosing entity type to select the fee

(b) payment schedule

This completes the patent application procedure and the patent application is awaiting its examination.

The waiting depends on the type of application and on the technical field. Regular waiting time is about 3 years, while it is about 1 year for accelerated prosecution.

Waiting time for design applications is much shorter, and it is about 1 year.

EXAMINATION

  1. In many case we get RESTRICTION REQUIREMENT as a first Office Action. Response has to be submitted.
  2. The examiner examines your application? Which results in the allowance, partial allowance or rejection.
  1. in case of allowance, we review the case and propose two options
    1. simply issue the patent
    2. file a continuing application prior to the issue, and then issue the patent, see the advantages here:++++
  2. in case of partial allowance:
    1. agree with the examiner and amend the claims to get a limited patent allowed
    2. disagree with the examiner and provide an Office Action response in order to get full patent
  3. in case of rejection:
    1. disagree with the examiner and provide an Office Action response in order to get full or partial allowance
    2. agree with the examiner and file an improved version of the patent application to overcome the rejection;
    3. agree with the examiner and abandon the application.


The America Invents Act was enacted in law on September 16, 2011.
The effective dates when things will change can be found here:
http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf 

Patent Search: novelty, validity, freedom-to-operate and technology landscape
Patent Filing and Prosecution
Bringing Innovation to the Market
Patent Strategy

Patent classes specialties:
Opto-electronics
Wireless and optical communications
Nanotechnology
Engineering
Physics
Computer software
Business methods
Instruments

Educational services: half-day and full-day short courses.

Short course #1: “Nuts and bolts of patenting“

The course will enable you to: 
• identify your benefits if your idea is patented
• learn the basic steps in patent filing
• access the USPTO electronic filing system for patent filing and use this system to monitor the status of your own as well as competing patent applications
• limit your legal expenses by doing a large portion of the work yourself
• create better protection through understanding the examination procedure
• accelerate your patent’s prosecution
• optimize your effort in patenting by understanding what the process entails

Short course #2: “Patenting in Academia”

The course will enable you to: 
• identify the distinction from existing solutions that makes the ideas patentable.
• recognize your benefits in filing the patent application for the inventions in academic community
• learn the basic steps in patent filing
• access the USPTO electronic system for patent search and filing in our interactive on-line session
• on-line monitor the status of your patent applications
• understand licensing issues with Technology Transfer Office of the University
• optimize your effort in patenting by understanding what the process entails

Short course #3: “The art of patent search and analysis”

The course will enable you to: 
• identify the type of patent search to perform
• find the optimal strategy of the search
• use a variety of on-line resources to achieve the best search result
• select optimal tools for the patent search
• learn about various types of patent analysis
Books
«Intellectual Property in Academia: A Practical Guide for Scientists and Engineers» 
Francis &Taylor, USA, 2011 (Ed.)
«Optical Imaging and Metrology» 
Wiley, 2012 (Co-Ed.) Selected Publications
«Wordwide scientific collaboration and national intellectual property: how to put those things together?» 
N.Reingand and M.Stech, International Congress on Optics, Puebla, Mexico, Aug. 2011, Proceedings SPIE
«Beyond the eureka moment» 
Physics World, July 2011, pp.44-45
«Bringing University Invention to the Market» 
N. Reingand and W. Osten, Speckle2010:Optical Metrology, Brazil, September 2010, Proceedings SPIE, vol. 7387, p. 738712
«Intellectual property analysis of holographic material business» 
N. Reingand and D.Hunt, Photonics West conference, San Jose, 2006, Proceedings SPIE, vol. 6136
03/22/2012
PCT fee increase is scheduled for April 1, 2012.
PCT fee increase is scheduled for April 1, 2012. For those inventors, who have the dealine for PCT application submission(or national entry date) soon, it makes sense to submit all documents before April 1. 12/22/2011
Prioritized Examination for RCEs Now Available
Effective December 19, 2011, applicants may request Prioritized Examination for applications concurrent with, or subsequent to, the filing of a request for continued examination (RCE).
It is strongly recommended that applicants use the Office’s certification and request form PTO/SB/424 form located on the USPTO Forms page: http://www.uspto.gov/forms/index.jsp .
A request for Prioritized Examination must be filed electronically via EFS-Web, except in a plant application for which the request must be filed in paper. When attaching the certification and request form, please select the document description «TrackOne Request», available under the «Track I — Prioritized Examination» category. 11/28/2011
United States Patent Office issued Annual Report 10/27/2011
Status of Micro-entity and 75% reduction in USPTO fees 10/20/2011
New USPTO fees for patent filing and prosecution:
Effective Sept. 26, 2011
Provisional application filing $125
Non-provisional application filing $530 (small entity)
Each additional claim above 20 $30
Issue fee $1170 10/05/2011
Prioritized Examination
The USPTO has finalized (effective now) its prioritized examination rule in view of the new Patent Act. Under 37 CFR §1.102, here’s what you need for speed:
(1) request with application filing;
(2) $4,800 fee (plus other filing fees);
(3) no more than 4 independent claims and 30 total claims;
(4) complete, original, utility application;
(5) EFS filing; and
(6) no extensions of time during. Only 10,000 of these requests will be granted per year. The goal is 12-month prosecution to final disposition.

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