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Robert M. Hunter Registered Patent Agent Robert M. Hunter, Ph.D.

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by Robert M. Hunter, Registered Patent Agent

This document web explains a variety of technology management activities. They include controlling access to invention data, supervision of invention evaluation and disclosure activities, milestone tracking and reporting.

Access Control

Intellectual property is most valuable when its owner can control its use. Special care must to taken to control access to patentable intellectual property before a patent application is filed and during the prosecution of the application (i.e., before a patent issues on the application). In addition to legal advantages, commercial advantages can be gained by controlling access to information about new inventions. In general, reasonable measures should be taken to treat such information as a "trade secret" until its release to the public is appropriate. Two types of security should be considered in controlling access to such information: physical security and software security.

Physical Security. Physical security involves controlling access to the physical elements of a technology management system. While a complete discussion of physical security measures is beyond the scope of this document, the following measures are considered appropriate:
People. Employee and subcontractor inventors should agree to disclose information about their inventions to technology managers. Federal regulations require that the employees of nonprofit organizations and small business firms (at every contracting tier) sign written agreements to that effect (37 CFR 401.14(f)(2)). Everyone involved in disclosing, evaluating and managing such information should agree not to disclose it to any unauthorized person. Such information should be shared only on a "need to know" basis.
Offices. Offices and other spaces in which information on inventions is stored should be locked when not occupied by and under the control of people authorized to have access to the information.
Documents. Hard copies of documents containing information on inventions should be kept in filing cabinets or desk drawers that are locked when not under the control of people authorized to have access to the information. Obsolete copies of such documents should be shredded or otherwise destroyed.
Computers. Computers in which files containing information on inventions are stored should be turned off and locked or be placed or installed in a secure space when not in use by people authorized to have access to the information. Information stored in computers or accessible through networks should be protected with software security.

Software Security. Software security involves controlling access to files in computers or files accessible through networks that contain information on inventions. While a complete discussion of software security measures is beyond the scope of this document, the following measures are considered appropriate:
Administration. Computers and networks should be configured so that only the system administrator can add or remove technology manager users, install software packages, perform tape backups, monitor user and system process activity and configure and control computer and network access. Technology managers should control access to invention information (grant or deny access to any inventor at any time) on a technology group level and on an invention level.
Usernames and Passwords. Computer systems should require that each user input his/her username and password to view and edit the invention information to which he/she has been granted access privileges. Passwords should be changed by the user periodically (usually every three to six months). Rules to be followed in selecting passwords are as follows:

The following methods can be used to select a new password:

Encryption. Preferably, data stored in databases and data transmissions over networks should be encrypted. Physical security measures must be adequate to protect these files.


Milestone Tracking

Technology managers must be able to track many of the critical milestones that occur during the life cycle of a technology. Among those critical milestones are those related to reporting to research sponsors, those related to prosecution of U.S. patent applications and those related to prosecution of international (PCT) patent applications. User-defined milestones are also supported.

Milestones Related to Reports to Research Sponsors.  Federal regulations require that non-profit organizations and small businesses performing research or development under a contract or grant award from the U.S. Government (hereinafter termed "awardees") report "subject inventions" that are conceived or first actually reduced to practice during the performance of the award as well as novel varieties of plants with a date of determination during the period of award to their research sponsor(s). Invention Report
Notice of Planned Public Disclosure
Title Election
Initial Patent Application Filing Date
Other Patent Applications Filing Date
Notice of Decision Not to Proceed
Utilization Report

Milestones Related to Prosecution of U.S. Patent Applications.  After a U.S. patent application is filed with the U.S. Patent and Trademark Office (USPTO), a process of negotiation occurs during which a determination is made by the USPTO as to whether a patent should issue on the invention claimed in the application. This process of negotiation is called "prosecution." The parties that participate in the negotiation are the representatives of the inventor (his/her patent attorney or patent agent) and/or the inventor himself/herself and one or more USPTO employees called "Examiners" who represent the U.S. Government. (The first letter of the word "Examiner" is usually capitalized in correspondence with the USPTO as a sign of respect; the word is handled the same way in this document.)

The patent prosecution process is very structured in that written and verbal communications from the Examiner must be responded to in a certain form and within certain time frames. Tracking of milestones associated with this process is very important. It is best to be cautious in the setting of milestones even though it is true that some milestones can be extended "for sufficient cause and for a reasonable time" by filing petitions under 37 CFR 1.136(b). Only "automatically approved" extensions may be obtained by filing petitions under 37 CFR 1.136(a) and payment of associated fees.

Under USPTO rules, when a prosecution milestone would otherwise fall on a Saturday, Sunday or Federal holiday in the District of Columbia, the milestone is the next succeeding day which is not a Saturday, Sunday or Federal holiday. The Federal holidays are New Year's Day = January 1; Martin Luther King's birthday = the third Monday in January; Memorial day = the last Monday in May; Independence Day = July 4; Labor Day = the first Monday in September; Columbus Day = the second Monday in October; Veteran's Day = November 11; Thanksgiving Day = the fourth Thursday in November; Christmas Day = December 25; Inauguration Day = January 20, every 4 years. Whenever a Federal holiday falls on a Sunday, the following day (Monday) is also a Federal holiday. Whenever a Federal holiday falls on a Saturday, the preceding day (Friday) is considered a Federal holiday by the USPTO.

MPEP 710.05 - Period Ending on Saturday, Sunday, or a Federal Holiday
Last Day to File and Swear Back to Conception
Last Day to File and Swear Back to Start of Diligence
Last Day to File and Swear Back to Reduction to Practice
Last Day to Deposit Biological Materials
U.S. Filing Deadline
Filing of Missing Parts of U.S. Application
Information Disclosure Statement
Restriction Requirement
Response/Amendment Before Final
General Petition to the Commissioner
Compliance with Sequence Listing Rules
Response/Amendment After Final
Petition from Restriction/Election Requirement
Notice of Appeal to Board
Correction of Notice of Appeal
Appeal Brief
Correction of Appeal Brief
Reply Brief
Oral Hearing Request
Oral Hearing Date
Response to Allowed Claim Rejection by Board
Response to New Ground of Rejection by Board
Response to Reversal of Rejection of Dependent Claim by Board
Notice of Appeal or Complaint to Court
Issue Fee Payment
Reissue Application Broadening Claims
Maintenance Fee Payment at 3 1/2 Years
Maintenance Fee Payment at 7 1/2 Years
Maintenance Fee Payment at 11 1/2 Years
Revival of Unavoidably-Abandoned Application
Compliance with Claim Format Rules
Revival of Unintentionally-Abandoned Application
Correction of Drawing Informalities

Milestones Related to Prosecution of PCT Patent Applications.  Citizens of the countries that have signed the Patent Cooperation Treaty (PCT) can file international or PCT patent applications in their home language and in their home patent office and have their application acknowledged as a national application in one or more PCT countries, including their own. If at least one of the applicants is a resident or national of the U.S., applicants can file a PCT patent application in the U.S. Receiving Office which is the USPTO. The International Bureau of the World Intellectual Property Organization (WIPO) will also act as a Receiving Office for U.S. residents and nationals. The application must include a "Request" that contains a petition that the application be processed according to the PCT. Prior art searches for PCT patent applications are conducted by an International Searching Authority (ISA). At the option of the applicant, either the USPTO or the European Patent Office will act as the ISA for a PCT patent application filed in the U.S. Receiving Office. If desired, the applicant can file a "Demand" for an international preliminary examination with the International Preliminary Examination Authority (IPEA) which, for U.S. residents and nationals is the USPTO. Printed forms are available from the U.S. Receiving Office upon which the Request and Demand are preferably made. The USPTO employee that conducts the search and/or examination of the application is called the "Examiner" or the "Officer."

The patent application processing under the PCT is very structured in that written and verbal communications from the Examiner or Officer must be responded to in a certain form and within certain time frames. Responses are typically made in form of "letters" from the applicant.

MPEP 1801 - Basic Patent Cooperation Treaty (PCT) Principles
MPEP 1834 - Correspondence
PCT Filing Deadline
PCT Invitation to Remedy Omission
PCT Invitation to Pay Additional Search Fees
Amendment of PCT Claims under Article 19
PCT Priority Document Due
PCT Reference to Deposited Microorganism
PCT Invitation to Submit Sequence Listing
PCT Request to Rectify Obvious Error
PCT Publication Date
PCT Chapter II Demand Due
Correction of Defects in PCT Demand
Amendment of PCT Application under Article 34
PCT Invitation to Restrict or Pay
Protest of PCT Holding of Lack of Unity
Response to PCT Written Opinion
Withdrawal of PCT Priority Claim
Withdrawal of PCT Application
U.S. National Stage Filing Deadline through PCT

Other Milestones.  A couple of special-purpose milestones should also be tracked. They are the deadline for filing in jurisdictions requiring absolute novelty and user defined deadlines.

Deadline for Filing in Jurisdictions Requiring Absolute Novelty
User-Defined Milestone


Selecting and Working with a Patent Professional

Although, in the U.S., it is not necessary for an inventor or organization to be represented by a patent professional, a patent agent or a patent attorney registered to practice before a patent office, a patent professional can provide invaluable assistance to an inventor or organization seeking to evaluate and protect new technologies. Selecting an appropriate professional with which to work is an important step in maximizing the value of the services received. Links to lists of registered patent agents and patent attorneys posted by the USPTO and the EPO are available.

Such lists can be used to locate a patent professional by geographic area, e.g., by state in the U.S. However, with the all of the telecommunication options open to innovative organizations today, location is not the most important factor to consider in selecting a patent professional.

Perhaps the best way to select a patent professional is to ask someone in your field who has worked with patent professionals to recommend one to you. In that way you can be assured that the individual or firm has the requisite education and experience in the technical field of your inventions and that the people skills necessary for a successful collaboration are present.

If you do not have a colleague to turn to, another way to select a patent professional is to conduct a patent search in the field(s) in which you invent. Obtain copies of patents with well-written abstracts and claims (the portions of patents generally available at no cost) and note (on the first page of the patent) the name of the individual or firm who prosecuted the patent. Review the patents to assess the quality of the disclosures and especially the claims. Find the names of patent professionals who work at the firm and its address and telephone number from the published lists noted above and contact the firm or individual to obtain further information. Most patent professionals will prepare a patent application or perform any other normal service for a firm, fixed price based on the technical field and complexity of the invention. Effectively communicating the invention to a patent professional should lower the price he/she charges for preparing the application.

It is always appropriate for a search of the prior art to be conducted before a patent application is prepared. In some cases, it is appropriate to perform evaluations of patentability and/or inventorship before a patent application is filed. This service can also be preformed or coordinated by a patent professional. Performance of a preliminary evaluation of the invention should lower the price he/she charges for preparing the a formal evaluation.

It is critically important that an inventor understand that it is his/her responsibility to "teach" the background art and his/her contribution to the invention to the patent professional. An inventor will always know more about his/her technical field and, especially, more about his/her invention than a patent professional can ever hope (or want) to know. Patent professionals are not (typically) blessed with the talent of invention, but they bring to the table an amazing ability to learn about "how to make" and "how to use" new technologies. They also have an in-depth knowledge of patent laws and rules and know how to use them creatively to the benefit of their clients. A team of talented inventors working with a talented patent professional can be more than the sum of its parts.

The inventor(s) can expect to be asked to review the disclosure and claims of a patent application one or more times during its preparation. By law, in the U.S. each inventor must sign an oath or declaration that is filed with a regular U.S. application attesting that he/she has reviewed and understands the contents of the specification and claims.


Assisting in Patent Prosecution

While it is the role of the patent professional to lead the patent prosecution effort, the inventor(s) can perform a valuable role of assisting in that effort. Dealing with formal matters (e.g., the size of the paper used, formatting of responses, etc.) will be almost entirely the responsibility of the patent professional. The heart of patent prosecution, overcoming the Examiner's rejection of claims, however, is a "team sport."

During the prosecution of a patent application, which can occur over a 1-3 year period, the patent professional [as the representative of the applicant(s)] will receive Office actions to which he/she must respond. Often it is necessary to amend the application (and particularly the claims) to avoid rejections made by the Examiner. The inventor(s) can expect to be asked to review the Office actions and to participate in the process of developing responses. The inventor(s) will also be asked to review each response/amendment before it is filed.

Overcoming a rejection of an individual patent claim involves amending the claim or arguing and/or providing evidence that the claim was rejected in error. The two sections of the U.S. patent law (Title 35 of the United States Code, 35 U.S.C.) that are most commonly relied upon as to provide grounds for rejections are 35 U.S.C. 102 and 35 U.S.C. 103. Patentability criteria established by these sections are discussed in detail in the Evaluation document web.

The elements of rejections under each of the subsections of 35 U.S.C. 102 (some of which contain more than one patentability rule) are summarized in Table 1. Overcoming a rejection under a subsection of 35 U.S.C. 102 is accomplished by showing that one of the elements of the rejection (action or condition, by whom, location or before what date) is incorrect. For example, a rejection under the first rule in subsection (a) of 35 U.S.C 102 can be overcome by showing that the invention was not publicly known by another in the U.S. before the applicant(s)' date of invention. Thus, if the invention was publicly known in Europe but not in the U.S. or if knowledge of the invention became in the U.S. after the applicant(s)' date of invention, then the rejection can be overcome.

The elements of rejections under each of the subsections of 35 U.S.C. 103 are presented in Table 2. To overcome a rejection under 35 U.S.C. 103(a) a showing that one of the references relied upon by the Examiner was not in the prior art on the applicant(s)' date of invention or that differences between the claimed invention and prior art would not have been obvious to a person skilled in the art is required. An inventor can offer invaluable assistance to a patent professional in conceiving such arguments and supplying evidence upon which such arguments can be based.

Development of a good working relationship with one or more patent professionals who are experienced in obtaining patents in the technical fields in which an inventor works is an important part of an inventor's job. Obtaining good patent protection is a team effort that is most productive if each member of the team knows the strengths and limitations of the other team members and if the team members establish a true collaboration with a common goal of maximizing the value of the organization's intellectual property.



Was it Peter Drucker who said, "What gets measured, gets done?" Regardless who said it, it is true. Technology managers should measure progress in invention disclosure, evaluation and reporting activities.


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