Intellectual Property Basics
(continued)
ME 554 Lecture of
10/23/24
)
D.H.R. Sarma, Ph.D.
Mid-Term Exam
• For face to face students October 30th ,in the
classroom WANG 2579
• Time 3:30 PM-4:20 PM (50 minutes)
• On-line students: methodology will be e-mailed in a
day or two; they will have flexibility as required
• Face to face students with approved additional time
should contact TA Saahil Varma with CC to me; It
may require taking the exam online or moving to a
different location in this building after 50 minutes
Copyright 2015, 2016. Purdue Research Foundation.
International Patent Applications
• In order to obtain international patent coverage in most
foreign countries, a patent application must be filed before
an invention is publicly disclosed.
• There is no impact on the right to file a patent application
resulting from private use of an invention, commercial use
not revealing an invention to the public, or confidential
offers to sell the invented product or method.
Patent Treaties
• The Paris Convention provides that foreign utility patent
applications are entitled to an effective filing date of an
earlier U.S. application, if filed within one year of the
earlier application. Design applications have a six month
time period.
• The Paris Convention covers almost every country in the
world, and covers all major countries.
Patent Treaties
• The Patent Cooperation Treaty provides that a utility
patent application filed under its provisions can have a
single search and the search results are provided for all
countries participating when the application is to be
examined individual countries. (Note: however, individual
countries can and will use their own search in addition and use their
own patent law in examining a patent application)
• All major industrialized countries are members. (150
total countries as of 2016)
US Filing Timeline
Note: US publishes 18 months after the priority date
Example 1: Provisional (0 months) ..US Non-Prov (10 months),,. Published (18
months) (i.e. in this case, 8 months after Non-Prov PCT filing)
Example 2: Provisional (0 months) …US Non-Provisional (12 months) . Published (18
months) ((i.e. in this case, 6 months after Non-prov filing) 6
International Filing
Timeline
Note: PCT publishes 18 months after the priority date
Example 1: Provisional (0 months) ..PCT (10 months) ,,PCT Published (18 months)
(i.e. in this case, 10 months after PCT filing)
Example 2: Provisional (0 months) …PCT (12 months) ..PCT Published (18 months)
7
((i.e. in this case, 6 months after PCT filing)
Patent Abstract
• Used primarily as a searching aid
• Was initially not to be used for
interpreting patent, but sometimes is.
Disclosure fixed at time of filing
• Can not add new matter to specification after filing,
except by filing a continuation-in-part application.
• Claims in a continuation-in-part application are
considered filed on the later filing date if they only
read on the later application that contains the new
matter and not the earlier one.
• Can modify patent claims after filing if the modified
claims are supported by the specification.
Secrecy
• US and foreign utility and plant patent applications
are normally published within 18 months of their
effective filing date. If a U.S. applicant requests
secrecy when filing and states that no foreign
cases will be filed, an application remains secret
until patented.
• U.S. design patents are always secret until
patented.
• If national security is implicated, then an
application is placed on hold until security is no
longer an issue.
Continuations and Divisionals
• After filing an initial application, more
applications with identical specifications can be
filed. If they are filed while the initial application
is pending and refer to the initial application, they
will be treated as though filed on the initial
application filing date.
• These later applications are called continuation
applications and if they claim different inventions
than are being examined in the first application,
they can be called divisional applications.
• The Patent Office can require an initial
application to be separated into more
applications if two or more inventions are being
claimed.
U.S. Patent Terms
• In the U.S., utility and plant patents expire after
about 20 years, sometimes more, from its effective,
regular U.S. filing date, provided there has been
payment of maintenance fees due 3 ½, 7 ½, and
11 ½ years from grant. Earlier filed provisional
application filings do not affect the expiration date.
• In the U.S., older design patents expire 14 years from grant and require
no maintenance fees, but design patents filed after May 13, 2015 under
the Hague Agreement, expire 15 years from grant.
Foreign Patent Terms
• Most foreign patents expire 15 to 20 years from their
effective regular filing dates.
• Most foreign countries require annual payments of
maintenance fees to maintain their patents in force.
Maintenance fees increase over the term of the patents.
Duty To Disclose to USPTO
Information must be disclosed to USPTO if it is material to patentability,
i.e., the information is:
A. Not cumulative; and
B. Establishes (alone or with other information) a prima facie
case of unpatentability; or
C. Refutes or is inconsistent with Applicant’s position(s)
regarding patentability
Who has Duty of Candor (37
C.F.R. § 1.56) to the USPTO?
1. Inventors,
2. Applicants,
3. Patent Owners, and
4. Patent Agents, Patent Attorneys,
anyone else involved in preparation
or prosecution of patent application
with the USPTO
What can happen if Duty of Candor
(37 C.F.R. § 1.56) to the USPTO is
not met?
1. Unenforceability of patent at issue
2. Unenforceability of related patents
3. Sanctions/fees
4. Disciplinary action
No Enforceable U.S. Patent if
• The inventor knows of material prior art and in bad faith
fails to disclose it to the Patent Office.
