PATENTS

A CLOSER VIEW

PREPARED BY-
HARISH . E. SHANBHAG
THIRD YEAR
PRODUCTION ENGINEERING
ROLL NO- EF03546
V.J.T.I.

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PATENTS : A CLOSER VIEW
CONTENTS
1. AN INTRODUCTION TO PATENTS : FREQUENTLY ASKED

QUESTIONS……………………………………………… 2

2. PATENTING SEARCHES………………………………………….. 4

3. PATENTING : COST VERSUS BENEFIT………………………… 5

4. PATENTING AFTER THE INITIAL STEP………………………. 6

5. REGISTERED DESIGN……………………………………………… 7

6. COPYRIGHTS………………………………………………………… 9

7. TRADEMARKS………………………………………………………...9

8. WHAT IS PATENT PENDING?.......................................................... 10

9. TYPES OF PATENTS…………………………………………………12

NONPROVISIONAL (UTILITY) PATENT………………… 14

A GUIDE TO FILLING UTILITY PATENT

PLANT PATENT…………………………………………………. 31

10. INTELLECTUAL PROPERTY……………………………………. 42

11. GLOSSARY…………………………………………………………. 51

BIBLIOGRAPHY

WEBSITES

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1. AN INTRODUCTION TO PATENTS
FREQUENTLY ASKED QUESTIONS
What is patentable?
Patent protection is a legal right obtained by registration; in other words there is an
application process. PATENTS are only granted for inventions which:

• are novel, in other words no one has made the invention public before and there is
no knowledge in the public domain.
• are not obvious. They must include an inventive step which would not have been
obvious to someone working in the field of the invention.
• have an industrial application. This means they are generally in the technical and
scientific field.
• are not in one of the excluded categories (which include mere discoveries,
algorithms and mathematical models, life forms and surgical methods)

Ways of doing business or of presenting information are also excluded.

Software also is generally not patentable.

What rights do patents provide?

Patents are granted to provide the inventor with a monopoly right to use the invention, or
to license others and can be kept in force for up to twenty years in most countries. The
holder of patent rights can take action against any individual or organisation which makes
use of the invention. Usually infringement comes to light when a product is made or sold
which incorporates a patented feature or uses a patented process. On the other hand,
patenting involves disclosure. Patents were conceived as a bargain between the inventor
and the State, involving public disclosure in return for monopoly rights. Inventions for
which a Patent Application is filed will eventually (about 18 months after the initial
filing) be published.

Who owns the rights - the inventor or the company?

The person who can claim rights in IP is normally the inventor. However, if the inventor
is an employee, then those rights will normally pass to his/her employer, as a result of a
contract of employment. This machine was apparently all designed within the company,
presumably by employees, who are paid to design and innovate. So in this case it is up to
the company to apply for patent protection. However, the law says that inventors have a

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right not to be excluded from receiving any benefit, particularly where a company makes
a lot of money from their invention.

Where do I apply for patent protection?

Making an application to the United Kingdom Patent Office), whose web site gives you
lots of information about how to do it, establishes a Priority Date. You need not apply to
any other offices for a year. If you do these later applications will refer back to the
Priority Date as the day from which you can claim rights.

What has to be in a patent application?

A patent application consists of:

• the name and address of the applicant and the inventor

• a description of the invention and how it is better than what went before
• what problem it addresses
• what are its key features and how it works
• a set of claims (which do not have to be filed straightaway)
• a drawing or drawings.

What does it cost?

To make the initial application costs nothing in official fees. You could do it all yourself,
but it is wise to use a patent agent. At current rates and depending on how complex your
invention is, they may charge around £2,000 for the first filing. An official search is
carried out in the first 12 months, which costs around £300. But, once you get to the first
anniversary, decisions have to be made about other countries. Cost can then begin to
escalate, and if you renew the rights in a number of countries, over the life of a single
patent, the costs may be of the order of £100 -£200K or more.

What happens after the initial filing?

You will immediately receive an official receipt. In the first twelve months, you will have
to request (and pay about £300 for) a search, which is carried out by the Patent Office to
see whether your idea, invention or design is novel and non-obvious, file an Abstract and
file a set of claims. The search results will provide an indication of whether you might
eventually receive the grant of a patent, which normally takes about four years. The
search results are for information only. You do not have to respond. But you may decide
to modify or restrict your claims as a result. If you do not withdraw the application it will
be published in eighteen months. You have to make decisions before 12 months on
filings in other parts of the world.

Is there such a thing as a world patent?

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No. The European Union has recently reached agreement in principle on A European
Community Patent, but details are still being worked out. There is a world Patent Co-
operation Treaty (PCT), of which many countries are members, but currently it only
provides a means of access to international cover. There is still the need to file in the
Patent offices of individual countries; and many countries do not belong to the PCT.

2. PATENTING SEARCHES
Single and multiple searches

The Grinding machine design could include many separate inventions. Including a range
of innovations in a single patent application could cause a problem; what the Patent
Office would call "multiple invention". You need to look at each of the "novel" features
as a separate issue. After all, if you really have something novel, it could be applied in
machines other than grinding machines. If you apply for protection just for the grinding
machine application, you could be locking yourself out of lucrative licences for use of
your invention in other applications.

When there are several pieces of possibly novel technology, each should be the subject of
checks and searches for conflict with prior art and for originality and each should be filed
separately if agreement is reached that it passes the checks and is worth registering.

Searches

Inventions have to be proven to be original, novel and be non-obvious. Before making an

investment in an application, it is wise to do some searching to check out the novelty of
the claimed invention. Just because your engineers they say the features are innovative, it
does not mean that they are. Before deciding to file a Patent application, do some
searching.

Fortunately, thanks to the Internet, any company can now do its own searches of the
Patent Databases.

There are two key questions you are seeking to answer when doing searches:

1. Does the design, device or technology that we are intending to put on the market
infringe the rights of any other company or individual?
2. Is the technology novel? Has anyone thought of this before?

Non-Infringement Searches
Spend a little time on making sure that you would not be infringing

someone else's rights if you bring a product to market which uses their invention. In
practice, people working on new technology should be checking as they go along and

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never present management with a situation where technology you mat want to use clashes
with existing rights. If you do find something at this stage though, you need to consider
licensing the technology from the patent holder. It would be a PR disaster, as well as
being very costly to bring out a product or system which can be challenged for infringing
another patent which is still in force. Very embarrassing to have spent a lot of money on
development and marketing only to get sued when the product is out in the market!

Novelty Searches
Do not spend large amounts of money on originality searches before filing. However
much you spend, you can never be 100% sure that your device or idea is original. The
Patent office are experts and when you request the official Search - automatic once you
have filed, and very good value at around £300, they will tell you.

Start your Search with the British Library - (a very useful site for searching for IP
information) and follow links to patent information, or consult the Patent Office guide to
searching for Intellectual Property:

The BL site gives you a good up to date idea of the free searches that you can do. The
most frequently used free services are the esp@cenet - European and World-wide
database and the US Patent and Trademark office (USPTO) site.

Need some help with searching techniques? The British Library, which still keeps a paper
copy of all UK Patents, offers free patent searching clinics (details)

3. PATENTING: COST VERSUS BENIFIT

Having done your searches, you are now at the stage where at the stage where you are
fairly sure an innovation could be patented, but do you want to patent? Patent protection
is potentially a big investment and its benefits should be offset against the likely costs.

First you need to understand what benefit patent protection might give you, which is
basically the right to stop anyone making or selling (infringing) a product which uses
your idea or design for up to 20 years, in the territory where you have registered
protection. You will also have to be prepared to take legal action against infringers, but
the fact of patent protection often acts as a deterrent. The cost of patent-related legal
action is an insurable risk.

So how much might patenting cost? To start with, not very much. The official filing fee is
now zero, so in theory, you could file for very little direct cost... However, the language
of patents is quite special, so it is best in practice to use an agent. Using a patent agent.
You can get an initial UK filing in place for around £1000.

How do I find a patent agent?

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For a directory of UK patent agents, contact The Chartered Institute of Patent Agents
(CIPA) at You should also be able to find one quite easily through recommendation, or
even Yellow Pages!

Hint: If you are in the provinces, using one based outside London will usually save you
something.

If you have no idea whom to choose, why not ask another company whose views you can
trust, or give a small number of agents an example of something you want advice on and
see how you like the responses. As with choosing any professional adviser, it is a
question of personal chemistry rather than price, which by and large should be similar.

Back to cost versus benefit!

• Factors you might take into account:

• How easy/ time consuming would it be to reverse engineer or copy your
innovation?
• What is the expected life of the innovation before it is superseded by another
innovation?
• The selling price of the item protected
• The total value of sales which will be protected
• How easy competitors might find it to circumvent
• What is the potential for licensing the technology (and thereby raising revenue)

Confidentiality
This is a must: Keep it quiet! Apart from the obvious need to keep things quiet (you
wouldn't want your competitor to copy you before you've finished the development)
remember that one of the criteria for patenting is novelty. Any publication will invalidate
your claims for novelty; even idle chatter could easily damage you case.

You will need confidentiality agreements regularly if you are to discuss new ideas with
potential users or partners before patenting. There are plenty of examples of standard
agreements around. If you want to look at one, visit Mewburn Ellis's site.

One of the real alternative options to patenting is of course simply to keep the detailed
scientific or technical information confidential within the company and between all the
parties involved in manufacture. This is appropriate where the period needed by
competition to catch up is about the same or little less than the product life cycle. It also
depends on how easy to copy the technology is once the product concerned is out on the
market.

4. PATENTING AFTER THE INITIAL

STEP

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Filing in the UK is like putting down a marker. It also eventually triggers a professional
search, carried out by the Patent Office for a very reasonable fee - about £300-400. This
search will give you a very good idea whether you really have a chance of getting a
patent granted. You can decide up to twelve months later about other countries and refer
back to the priority date of your UK application. You can apply for a range of European
Countries through the European Patent Convention (EPC) (details of EPC) This does
apply to some 25 countries and gets round the need for national filings.

For International Protection you can apply via the International Patent Co-operation
Treaty (PCT) (More details) This is the nearest thing to a world patent, which does not
exist, because many countries are not in the PCT. Eventually, even with a PCT
application, individual countries have to be tackled one by one. Once these national
applications click in, many involving translations the costs start rising dramatically. Let's
give an estimate to help: one single patent in most of the key markets in Europe, USA
and Far East could knock you back a total of around £25k-£50k in the first three years of
its life.

An important fact about patenting is that, even though it may be three to four years before
a Patent is granted in any country, the rights to use the technology concerned can be
bought and sold or licensed, so the IP becomes like any other piece of a company's
property.

Defending your patent

Often the possession of patent rights is enough to deter companies from copying. If you
find someone is infringing your rights, then you should be able to obtain an injunction
through your lawyers to stop them and you will also have a claim for damages.

Licensing of Rights
Once you have a registered a patent application you already have some IP that can be
licensed. The value of your IP will increase as you go through the process of search and
examination, and extension to overseas countries. You do not have to wait until you have
a granted patent which takes three or four years before starting to profit from your
investment. For a good introduction to technology licensing see Mewburn Ellis's guide.

Licenses are granted on an exclusive, sole or non-exclusive basis, and the rights licensed
can be restricted, for example to a specific field of application, or to a geographical area.
You might want to agree to sub-licences being granted by an exclusive licensee. The
reward for licensing will usually be in the form of a royalty based on net sales of a
product or range of products

5. REGISTERED DESIGN

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The combination of heating and mixing sounds as if it could be novel and patentable. The
control of a food processor by a remote device, which is also programmable could also be
the subject of a patent application, so all the advice given in the grinding machine
scenario applies. But in this case, the external shape is a distinguishing feature of the
innovation. You could apply for a Registered Design.

The company also wants to name the product with a Brand Name: "Remopro". This is an
example of a potential Trade Mark intellectual property (notes on trademarks)

What is design right?

Design Right protects the distinctive external shape or ornamentation applied to a

product. Originally, in the UK, a criterion for getting this Right was that the product
design being registered should have "eye appeal", (the classic example given is -
lampshades, but not fuse-boxes), but with the advent of a recent European Directive,
individual character is becoming more important.

How would I apply for a registered design?

Designs which are new and original can be registered at the Design Registry which is part
of the Patent Office. Go to their site: www.patent.gov.uk You will get protection initially
for five years (renewable up to 25 years) if, after examination your design is thought to
qualify. Initial fees will be around £500.

What rights does a registered design provide?

Registering a design provides you with the legal right to stop anyone copying it - it does
not have to be a direct copy, just sufficiently similar to create confusion. Manufacturers
of 'complex' items, such as motor vehicles may register the design of parts as well as the
overall shape, but where spare parts may be needed which fit exactly together with other
parts from time to time and those parts are not visible, the monopoly right cannot be
exercised.

Do I need to register in order to have some rights?

NO. Unregistered design right is also available. This is an automatic right, very similar to
copyright, which any new design acquires when it is first produced. In the UK this right
lasts for 15 years from the end of the year in

which it is first recorded. It gives the company the right to stop another organisation from
copying, or selling direct copies of its design. However, this right is reduced after ten
years. After that time you are obliged to grant a licence to any one who wants one on
"reasonable terms", which may be negotiated with help from the Patent Office.

Unregistered design right also protects semiconductor topography (the pattern on a

microchip).

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A new right (06/03/02) is Unregistered Community Design, which operates in a very
similar way to the UK unregistered right across the whole of the EU. However, it only
provides three years of protection (from first disclosure).

6. COPYRIGHTS
What exactly is copyright and how does it work?

Copyright is not a registered but an automatic right conferred on any creative work
whether it is, for example, a book, a play, or any words on paper (or on a computer), a
drawing or painting, a written down or recorded piece of music.

Software such as that described here, which enables business operations to proceed more
smoothly, is protected by copyright.

Copyright is automatic and lasts for 70 years after the death of the author.

The same rights are extended to Databases, where the owner has a right to enjoy the
benefits of having collected and organised data in a very particular way, and to be
protected from unauthorised copying

Infringement occurs by direct copying of all or a significant part of the work. There is
nothing to stop a person reading and understanding the ideas or concepts behind your
software and applying them, even using similar code, provided they do not simply copy
your material

There are situations where software can be protected by Patents. They are rare. These are
where the software has a "technical effect", for example engineering software which
controls the operation of "pick and place" machine for populating circuit boards.

7. TRADEMARKS
What is a trademark?

Names of companies, names of products, symbols, pictures, logos or a combination of all

or any can be registered as TRADEMARKS. Always provided that they are distinctive
and do not deceive the public. (shape is normally excluded but the distinctive shape of the
bottle is regarded as part of the 'Coca-Cola' Trademark) Such names, logos etc. serve as a
marketing tool to inform and reassure the user or buyer of goods and services about what
they are, where they come from and, by inference, their quality. So they are extremely
valuable and deserve protection from anyone else using them.

How do I apply to register a trademark?

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You can apply to register such names and devices. There is a UK trademarks Registry,
which deals with protection in the UK and a European CTM system, covering countries
in the EU. You can find out more from the Patent Office. For other countries you will
have to deal with their national Trademark offices.

How much will it cost?

You will have to find around £500+VAT for an initial registration in the UK and a further
£200 or so before grant of the mark, which takes about 9-12 months.

What rights will I get?

You will select the class of goods for your mark. This will enable you to stop anyone
using it in your markets. So, for example Mars plc has a registered Trademark for the
name Bounty, so it can stop a company marketing a chocolate product with the name
"Bounty", but cannot stop a company selling a Unit Trust with the name "Bounty". Your
right has to be enforced through the Courts.

Can I search any registers to see what has already been protected? Yes.
Start with the British Library site which has a lot of information on searching and a list of
free databases available. One of these, Trademark Solutions, is particularly useful
providing access to 14 free US and world TM databases.

8. WHAT IS PATENT PENDING?

Many inventors and manufacturers apply for official patents through the United States
Patents and Trade Office (USPTO), but the approval process can take at least 18 months.
In order to establish ownership of a product idea, inventors and manufacturers often place
the words "Patent Pending" (abbreviated Pat. Pend.) directly on the products until the
official patent is issued. "Patent Pending" lets other inventors and marketers know that
the USPTO application process has already begun and it's only a matter of time before a
20 year patent is granted, at least in the case of products.

There are certain conditions under which the "Patent Pending" designation can be used.
The most important condition is to actually have a patent pending in the USPTO or
foreign equivalent. Unscrupulous manufacturers cannot legally place the words Patent
Pending on a product without a patent. Once the actual application has started, only the
inventor or manufacturer can use Patent Pending for intellectual property protection.
Once a patent is issued, the official patent number should replace any other stopgap
designations.

The use of "Patent Pending", surprisingly enough, does not fully protect the inventor or
manufacturer from competitors. Until the USPTO patent application is completely
approved, any other manufacturer can legally use the basic concepts behind any product

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or technology. What the Patent Pending designation does is let all other competitors
know that, in a relatively short amount of time, the product (along with the design and
manufacturing ideas) will be the exclusive property of the patent holder. Other companies
can continue to produce similar products right up until the official patent is issued and the
markings on the patented product are changed.

Using the term "Patent Pending" knowing an application has not been made is considered
a federal crime and can mean major financial fines and/or prison time. It can be tempting
as an independent inventor with little investment capital to create a false "Patent Pending"
designation, but this could lead to a serious charge of trademark or patent infringement.
Many larger corporations with research and development departments routinely apply for
patent protection on ideas which may never see the light of day. It is up to would-be
entrepreneurs and inventors to investigate the USPTO's archives of patented or patent
pending products before investing time and money in a similar concept.

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TYPES OF PATENTS
The U.S. Patent and Trademark Office (PTO) issues several
different types of patent documents offering different kinds
of protection and covering different types of subject matter.

A recently issued PTO patent document is one of six types,

generally described below. See U.S. Code Title 35 - Patents, for
a full description of patents and patent laws.

Utility Patent- Issued for the invention of a new and

useful process, machine, manufacture, or composition of
matter, or a new and useful improvement thereof, it
generally permits its owner to exclude others from
making, using, or selling the invention for a period of
up to twenty years from the date of patent application
filing ++, subject to the payment of maintenance fees.
Approximately 90% of the patent documents issued by the
PTO in recent years have been utility patents, also
referred to as "patents for invention."

Design Patent- Issued for a new, original, and

ornamental design for an article of manufacture, it
permits its owner to exclude others from making, using,
or selling the design for a period of fourteen years
from the date of patent grant. Design patents are not
subject to the payment of maintenance fees.

Plant Patent- Issued for a new and distinct, invented

or discovered asexually reproduced plant including
cultivated sports, mutants, hybrids, and newly found
seedlings, other than a tuber propagated plant or a
plant found in an uncultivated state, it permits its
owner to exclude others from making, using, or selling
the plant for a period of up to twenty years from the
date of patent application filing ++. Plant patents
are not subject to the payment of maintenance fees.

Reissue Patent- Issued to correct an error in an

already issued utility, design, or plant patent, it
does not affect the period of protection offered by the
original patent.

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Defensive Publication (DEF)- Issued instead of a
regular utility, design, or plant patent, it offers
limited protection, defensive in nature, to prevent
others from patenting an invention, design, or plant.
The Defensive Publication was replaced by the Statutory
Invention Registration in 1985-86.

Statutory Invention Registration (SIR)- This document

replaced the Defensive Publication in 1985-86 and
offers similar protection.

++ Although, the length of utility and plant patent protection

(patent term) was previously seventeen years from the date of
patent grant, utility and plant patents filed after June 8, 1995
now have a patent term of up to twenty years from the date of
filing of the earliest related patent application. Utility and
plant patents which were applied for prior to June 8, 1995, and
which were or will be in force after June 8, 1995, now have a
patent term of seventeen years from the date of patent grant or
twenty years from the date of filing of the earliest related
patent application, whichever is longer. Utility patents are
subject to the payment of periodic maintenance fees to keep the
patent in force. Patent terms can be extended under some specific
circumstances. See the U.S. Code Title 35 - Patents for a full
description of patent laws.
------------------
Questions regarding this web page should be directed to:
(address as of 6/2000)
U.S. Patent and Trademark Office
Information Products Division
Technology Assessment and Forecast Branch
PK3-Suite 441
Washington, DC 20231

tel (703) 306-2600

FAX (703) 306-2737

______________________________________________________________________________________
_
SOURCE: U.S. PATENT AND TRADEMARK OFFICE
Technology Assessment and Forecast data base (1 June 2000)
U.S. Patent and Trademark Office
Information Products Division
Technology Assessment and Forecast Branch
PK3-Suite 441
Washington, DC 20231

tel (703) 306-2600

FAX (703) 306-2737

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NON PROVISIONAL UTILITY PATENT
Introduction

The United States Patent and Trademark Office (USPTO or Office) is the government
agency responsible for examining patent applications and issuing patents. A patent is a
type of property right. It gives the patent holder the right, for a limited time, to exclude
others from making, using, offering to sell, selling, or importing into the United States the
subject matter that is within the scope of protection granted by the patent. The USPTO
determines whether a patent should be granted in a particular case. However, it is up to
the patent holder to enforce his or her own rights if the USPTO does grant a patent.

The purpose of this guide is to provide you with basic information about filing a utility
patent application. A patent application is a complex legal document, best prepared by
one trained to prepare such documents. Thus, after reviewing this guide, you may wish to
consult with a registered patent attorney or agent. Additional information is available:

• by calling the USPTO's General Information Services Division at 800-PTO-9199

or 703-308-4357,
• from the USPTO's Web site at www.uspto.gov, and
• at your nearest Patent and Trademark Depository Library (PTDL). You will find
information on PTDLs at the end of this guide.

There are various types of patents -- utility, design, and plant. There are also two types of
utility and plant patent applications -- provisional and nonprovisional. Each year the
USPTO receives approximately 350,000 patent applications. Most of these are for
nonprovisional utility patents.

This guide contains information to assist you in filing your nonprovisional utility patent
application. It discusses the required parts of the utility patent application and identifies
some of the forms you may use (which are available on the USPTO's Web site
www.uspto.gov). This information is generally derived from patent laws and regulations,
found at Title 35 of the United States Code (U.S.C.), and Title 37 of the Code of Federal
Regulations (CFR). These materials, as well as the Manual of Patent Examining
Procedure, are available at the USPTO's Web site (http://www.uspto.gov/), PTDLs, and
at most law libraries.

If you have questions about:

• other types of patent applications,

• locating a patent attorney or agent,
• obtaining the most up-to-date Fee Schedule, or
• obtaining copies of other USPTO publications,

please contact General Information Services Division, the USPTO’s Web site, or a
PTDL.

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Application Requirements

A nonprovisional utility patent application must be in the English language or be

accompanied by a translation in the English language, a statement that the translation is
accurate and a fee set forth in 37 CFR §1.17(i).

All papers which are to become part of the permanent records of the USPTO must be
typewritten or produced by a mechanical (or computer) printer. The text must be in
permanent black ink or its equivalent; on a single side of the paper; in portrait orientation;
on white paper that is all of the same size, flexible, strong, smooth, nonshiny, durable,
and without holes. The paper size must be either:

• 21.6 cm. by 27.9 cm. (81/2 by 11 inches), or

• 21.0 cm. by 29.7 cm. (DIN size A4).

There must be a left margin of at least 2.5 cm. (1 inch) and top, right, and bottom margins
of at least 2.0 cm. (3/4 inch). Drawing page requirements are discussed separately below.

A nonprovisional utility patent application must include a specification, including a claim

or claims; drawings, when necessary; an oath or declaration; and the prescribed filing,
search, and examination fees. A complete nonprovisional utility patent application should
contain the elements listed below, arranged in the order shown.

• Utility Patent Application Transmittal Form or Transmittal Letter

• Fee Transmittal Form and Appropriate Fees
• Application Data Sheet (see 37 CFR § 1.76)
• Specification (with at least one claim)
• Drawings (when necessary)
• Executed Oath or Declaration
• Nucleotide and/or Amino Acid Sequence Listing (when necessary)

These elements are further described as follows:

Utility Patent Application Transmittal Form or Transmittal Letter

A Utility Patent Application Transmittal Form (Form PTO/SB/05) or a transmittal letter

should be filed with every patent application to instruct the USPTO as to what actual
types of papers are being filed (e.g., specification, claims, drawings, declaration,
information disclosure statement). It identifies the name of the applicant, the type of
application, the title of the invention, the contents of the application, and any
accompanying enclosures. (Form PTO/SB/21 is to be used for all correspondence after
initial filing.)

Fee Transmittal Form and Appropriate Fees

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The Fee Transmittal Form (Form PTO/SB/17) may be used to calculate the prescribed
filing fees and indicate the method of payment, by check or by credit card. The fees are
dependent upon the number of sheets of paper in the specification and drawings, the
number and type of claims presented, and whether or not a written assertion of small
entity status is provided.

The filing, search, and examination fees for a patent application should be submitted with
the application and must be made payable to the "Director of the United States Patent and
Trademark Office" if paid by check. If an application is filed without the fees, the
applicant will be notified and required to submit the fees within the time period set in the
notice. If the basic filing fee was not paid at the time of filing the application, a surcharge
is also required for late acceptance of the basic filing fee. Fees are subject to change and
the applicant should consult the current Fee Schedule before filing.

Please note that two sets of fees exist, one for small entities and one for other than small
entities. If you qualify as a small entity for patent fee purposes, no special form is
required to claim your entitlement to reduced fees (you may check a special box on the
transmittal form), but you should only pay small entity rates after ensuring that you
qualify for the small entity discount. For example, if the inventors have not assigned any
rights in the invention set forth in the application and are not under any obligation to do
so (as may be required in an employment contract), small entity status is appropriate.

Application Data Sheet

The application data sheet is a sheet or sheets, that may be voluntarily submitted in either
provisional or nonprovisional applications, which contains bibliographic data, arranged in
a format specified by the USPTO. Specific bibliographic data includes applicant
information, correspondence information, application information, representative
information, domestic priority information, foreign priority information and assignment
information. (See 37 CFR § 1.76.) The sheets must be produced according to a format
provided by the USPTO and which is downloadable to applicant’s computer.

Supplemental application data sheets may be subsequently supplied prior to payment of

issue fee to either correct or update information in a previously submitted application
data sheet, or an oath or declaration under title 37 CFR § 1.63 or 1.67. However,
inventorship changes are governed by 37 CFR § 1.48, correspondence changes are
governed by 37 CFR § 1.33(a), and citizenship changes are governed by 37 CFR § 1.63
or 1.67. Supplemental application data sheets must be titled "Supplemental Application
Data Sheet, "include all of the section headings listed in 37 CFR 1.76(b), include all
appropriate data for each section heading and must identify the information that is being
changed, preferably with underlining for insertions, and strike-through or brackets for
text removed.

17
Specification

The specification is a written description of the invention and of the manner and process
of making and using the same. The specification must be in such full, clear, concise, and
exact terms as to enable any person skilled in the art or science to which the invention
pertains to make and use the same.

Computer program listings may be submitted as part of the specification as set forth in 37
CFR 1.96(b) and (c). Other than in a reissue application or reexamination proceeding, the
pages of the specification (but not the transmittal letter sheets or other forms), including
claims and abstract, must be numbered consecutively, starting with 1, the numbers being
centrally located above or preferably below, the text. The lines of the specification must
be 1.5 or double spaced (lines of text not comprising the specification need not be 1.5 or
double spaced). It is desirable to include an indentation at the beginning of each new
paragraph, and for paragraphs to be numbered ("[0001]", "[0002]", "[0003]" etc.).

It is preferable to use all of the section headings described below to represent the parts of
the specification. Section headings should be in upper case without underlining or bold
type. If the section contains no text, the phrase "Not Applicable" should follow the
section heading.

Title of the Invention

The title of the invention (or an introductory portion stating the name, citizenship,
residence of each applicant, and the title of the invention) should appear as the heading
on the first page of the specification. Although a title may have up to 500 characters, the
title must be as short and specific as possible.

Cross-Reference to Related Applications

Any nonprovisional utility patent application claiming the benefit of one or more prior
filed copending nonprovisional applications (or international applications designating the
United States of America) under 35 USC §§ 120, 121 or 365(c) must contain in the first
sentence(s) of the specification following the title, a reference to each such prior
application, identifying it by the application number or international application number
and international filing date, and indicating the relationship of the applications, or include
the reference to the earlier application in an application data sheet under 37 CFR § 1.76.
See 37 CFR 1.78. Cross-references to other related patent applications may be made
when appropriate.

Statement Regarding Federally Sponsored Research or Development

The application should contain a statement as to rights to inventions made under federally
sponsored research and development (if any).

18
Reference to Sequence Listing, a Table, or a Computer Program
Listing Compact Disc Appendix

Any material submitted separately on a compact disc must be referenced in the

specification. The only disclosure material accepted on compact disc are computer
program listings, gene sequence listings and tables of information. All such information
submitted on compact disc must be in compliance with 37 CFR § 1.52(e), and the
specification must contain a reference to the compact disc and its contents. The contents
of compact disc files must be in standard ASCII character and file formats. The total
number of compact discs including duplicates and the files on each compact disc must be
specified.

If a computer program listing is to be submitted and is over 300 lines long (each line of
up to 72 characters), the computer program listing must be submitted on a compact disc
in compliance with 37 CFR § 1.96, and the specification must contain a reference to the
computer program listing appendix. A computer program listing of 300 or less lines may
be, but is not required to be, submitted on compact disc. The computer program listing on
compact disc will not be printed with any patent or patent application publication.

If a gene sequence listing is to be submitted, the sequence may be submitted on a

compact disc in compliance with 37 CFR §§ 1.821-1.825, in lieu of submission on paper,
and the specification must contain a reference to the gene sequence listing on compact
disc.

If a table of data is to be submitted, and such table would occupy more than 50 pages if
submitted on paper, the table can be submitted on a compact disc in compliance with 37
CFR § 1.58, and the specification must contain a reference to the table on compact disc.
The data in the table must properly align visually with the associated rows and columns.

Background of the Invention

This section should include a statement of the field of endeavor to which the invention
pertains. This section may also include a paraphrasing of the applicable U.S. patent
Classification Definitions or the subject matter of the claimed invention.

This section should also contain a description of information known to you, including
references to specific documents, which are related to your invention. It should contain, if
applicable, references to specific problems involved in the prior art (or state of
technology) which your invention is drawn toward.

Brief Summary of the Invention

This section should present the substance or general idea of the claimed invention in
summarized form. The summary may point out the advantages of the invention and how
it solves previously existing problems, preferably those problems identified in the

19
BACKGROUND OF THE INVENTION. A statement of the object of the invention may
also be included.

Brief Description of the Several Views of the Drawing

Where there are drawings, you must include a listing of all figures by number (e.g.,
Figure 1A) and with corresponding statements explaining what each figure depicts.

Detailed Description of the Invention

In this section, the invention must be explained along with the process of making and
using the invention in full, clear, concise, and exact terms. This section should distinguish
the invention from other inventions and from what is old and describe completely the
process, machine, manufacture, composition of matter, or improvement invented. In the
case of an improvement, the description should be confined to the specific improvement
and to the parts that necessarily cooperate with it or which are necessary to completely
understand the invention.

It is required that the description be sufficient so that any person of ordinary skill in the
pertinent art, science, or area could make and use the invention without extensive
experimentation. The best mode contemplated by you of carrying out your invention
must be set forth in the description. Each element in the drawings should be mentioned in
the description. This section has often, in the past, been titled "Description of the
Preferred Embodiment."

Claim or Claims

The claim or claims must particularly point out and distinctly claim the subject matter
which you regard as the invention. The claims define the scope of the protection of the
patent. Whether a patent will be granted is determined, in large measure, by the choice of
wording of the claims.

A nonprovisional application for a utility patent must contain at least one claim. The
claim or claims section must begin on a separate physical sheet or electronic page. If
there are several claims, they shall be numbered consecutively in Arabic numerals.

One or more claims may be presented in dependent form, referring back to and further
limiting another claim or claims in the same application. All dependent claims should be
grouped together with the claim or claims to which they refer to the extent practicable.
Any dependent claim that refers to more than one other claim ("a multiple dependent
claim") shall refer to such other claims in the alternative only. Each claim should be a
single sentence, and where a claim sets forth a number of elements or steps, each element
or step of the claim should be separated by a line indentation.

The fee required to be submitted with a nonprovisional utility patent application is, in
part, determined by the number of claims, independent claims, and dependent claims.

20
Abstract of the Disclosure

The purpose of the abstract is to enable the USPTO and the public to determine quickly
the nature of the technical disclosures of your invention. The abstract points out what is
new in the art to which your invention pertains. It should be in narrative form and
generally limited to a single paragraph, and it must begin on a separate page. An abstract
should not be longer than 150 words.

Drawings (when necessary)

A patent application is required to contain drawings if drawings are necessary for the
understanding of the subject matter sought to be patented. The drawings must show every
feature of the invention as specified in the claims. Omission of drawings may cause an
application to be considered incomplete. Please see the detailed discussion of drawing
requirements.

Oath Or Declaration

Forms PTO/SB/01, PTO/SB/01A, PTO/SB/02, and PTO/SB/02LR are made available by

the Office for applicant’s use. Each inventor must make an oath or declaration that he/she
believes himself/herself to be the original and first inventor of the subject matter of the
application, and he/she must make various other statements required by law and various
statements required by the USPTO rules. If an application data sheet is filed, the USPTO
rules require fewer statements in the oath or declaration. See title 37, Code of Federal
Regulations, Sections 1.63 and 1.76. The oath must be sworn to by the inventor before a
notary public or other officer authorized to administer oaths. A declaration may be used
in lieu of an oath. Oaths or declarations are required for applications involving designs,
plants, and utility inventions and for reissue applications. A declaration does not require
any witness or person to administer or verify its signing. Thus, use of a declaration is
preferable. When filing a continuation or divisional application a copy of an earlier-filed
oath or declaration from the parent application may be acceptable. The oath or
declaration must be signed by the inventor in person, or by the person entitled by law to
make application on the inventor’s behalf. A full first and last name with middle initial or
name, if any, and the citizenship of each inventor are required. The mailing address of
each inventor and foreign priority information (if any) are also required if an application
data sheet is not used.

Any oath or declaration must be in a language the inventor understands. If the oath or
declaration used is in a language other than English, and is not in a form provided by the
United States Patent and Trademark Office or provided in accordance with PCT Rule
4.17 (iv), an English translation together with a statement that the translation is accurate
is required.

If the person making the oath or declaration is not the inventor, the oath or declaration
shall state the relationship of that person to the inventor, upon information and belief, the
facts which the inventor would have been required to state, and the circumstances which

21
render the inventor unable to sign, namely death, insanity or legal incapacity or
unavailability/refusal to sign. (See 37 CFR §§ 1.42, 1.43, and 1.47.) If the inventor has
refused or cannot be reached to sign the declaration, then a petition under 37 CFR § 1.47
is required, and if there are inventors who have signed the oath or declaration, then the
remaining inventors must sign the oath or declaration on behalf of the non-signing
inventor. If the sole or all of the inventors has not signed the oath or declaration, then the
oath or declaration must be signed by the party showing proprietary interest in the
application, as shown in the petition under 37 CFR § 1.47(b). If the inventor has died or
is legally incapacitated, then the legal representative of the deceased or incapacitated
inventor must sign the oath or declaration on behalf of the inventor.

Sequence Listing (when necessary)

This section, for the disclosure of a nucleotide and/or amino acid sequence, should
contain a listing of the sequence complying with 37 CFR § 1.821 through 37 CFR §
1.825 and may be in paper or electronic form.

Obtaining Receipt for Documents Mailed to USPTO

A receipt for documents mailed to the USPTO can be obtained by attaching a stamped,
self-addressed postcard to the first page of the documents. The postcard should contain a
detailed list that identifies each type of document and the number of pages of each
document. Upon receipt at the USPTO, the detailed list on the postcard will be compared
to the actual contents of the delivery. Any discrepancies between the detailed list and the
actual contents will be noted on the postcard. The postcard will be initialed and date
stamped by the person at the USPTO who received the delivery. The postcard will be
returned by mail to the addressee whose name appears on the postcard.

The returned postcard serves as evidence of receipt in the USPTO of all items listed on
the postcard, unless otherwise noted by the USPTO on the postcard. That is, if the
postcard receipt has been annotated to indicate that a particular paper was not received,
the postcard receipt will not serve as evidence of receipt of that paper in the USPTO.
Likewise, the postcard receipt will not serve as evidence of receipt of papers which are
not adequately itemized.

When preparing the detailed list of documents identified on the postcard, it is important
to include the following identifying information:

• the application number (if known)

• the confirmation number (if known)
• the filing date of the application (if known)
• the title of the invention
• the name of the inventor or inventors.

22
The postcard should also include a detailed list of every document type and the number
of pages of each document that are included in the delivery. If the postcard is submitted
with a patent application, the detailed listing should include the following items:

• the title and number of pages of each USPTO form

• the number of pages of specification (excluding claims)
• the number of claims and the number of claim pages
• the number of figures of drawing and the number of sheets of drawings
• whether an oath or declaration statement is included and the number of pages
• the type and number of other documents that are included and the number of
pages of each document
• the amount of payment and the method of payment (i.e., check, credit card,
money order, or deposit account).

It is important that the postcard itemizes each component of the application. For example,
a general statement such as "complete application" or "patent application" or "drawings"
will not show that each of the required components of an application was included if one
of the items is later found to be missing by the USPTO.

When the self-addressed postcard is submitted with a utility patent application, the
USPTO will stamp the postcard being returned to the addressee with both the receipt date
and the application number before placing it in the outgoing mail.

Upon receipt of the returned postcard, the addressee should promptly review the postcard
to ensure that all documents and all pages were received by the USPTO.

Pursuant to 35 USC 21 and 37 CFR § 1.10, any correspondence received by the USPTO
(including an application filing) that was delivered by the “Express Mail Post Office to
Addressee” service of the United States Postal Service (USPS) will be considered filed in
the Office on the date of deposit with the USPS. The date of deposit with the USPS is
shown by the “date-in” on the “Express Mail” mailing label or other official USPS
notation. If the USPS deposit date cannot be determined, however, the correspondence
will be accorded the Office receipt date as the filing date. Before depositing an
application with the USPS in accordance with the Express Mail procedure set forth at 37
CFR § 1.10, it is important to place the number of the “Express Mail” mailing label on
the application papers. Further, only one application should be mailed in a single
“Express Mail” package.

Drawing Requirements

Information on drawing requirements is based substantially on 37 CFR § 1.84. There are

two acceptable categories for presenting drawings in utility patent applications: black ink
(black and white) and color.

23
Black and white drawings are normally required. India ink, or its equivalent that secures
black solid lines, must be used for drawings. Drawings made by computer printer should
be originals, not photocopies.

On rare occasions, color drawings may be necessary as the only practical medium by
which the subject matter sought to be patented in a utility patent application is disclosed.
The USPTO will accept color drawings in utility patent applications and statutory
invention registrations only after granting a petition explaining why the color drawings
are necessary. Any such petition must include the following:

• the appropriate fee set forth in 37 CFR §1.17(h)

• three sets of color drawings; and
• the following language as the first paragraph in that portion of the specification
relating to the BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE
DRAWING. If the language is not in the specification, an amendment to insert the
language must accompany the petition.

"The patent or application file contains at least one drawing executed in color. Copies of
this patent or patent application publication with color drawing(s) will be provided by the
Office upon request and payment of the necessary fee."

Photographs are not ordinarily permitted in utility patent applications. The USPTO will
accept black and white photographs in utility patent applications only in applications in
which the invention is not capable of being illustrated in an ink drawing or where the
invention is shown more clearly in a photograph. For example, photographs or
photomicrographs of electrophoresis gels, blots (e.g., immunological, western, southern,
and northern), autoradiographs, cell cultures (stained and unstained), histological tissue
cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer
chromatography plates, crystalline structures, and ornamental effects continue to be
acceptable. Only one set of black and white photographs is required. Furthermore, no
additional processing fee is required.

Photographs have the same sheet size requirements as other drawings. The photographs
must be of sufficient quality so that all details in the drawing are reproducible in the
printed patent or any patent application publication.

Color photographs will be accepted in utility patent applications if the conditions for
accepting color drawings and black and white photographs have been satisfied.

Identification of Drawings

Identifying indicia, if provided, should include the title of the invention, the inventor's
name, the application number (if known), and docket number (if any). This information
should be placed on the top margin of each sheet of drawings. The name and telephone
number of a person to call if the USPTO is unable to match the drawings to the proper
application may also be provided.

24
Graphic Forms in Drawings

Chemical or mathematical formulas, tables, computer program listings, and waveforms

may be submitted as drawings and are subject to the same requirements as drawings.
Each chemical or mathematical formula must be labeled as a separate figure, using
brackets when necessary, to show that information is properly integrated. Each group of
waveforms must be presented as a single figure, using a common vertical axis with time
extending along the horizontal axis. Each individual waveform discussed in the
specification must be identified with a separate letter designation adjacent to the vertical
axis. These may be placed in a landscape orientation if they cannot be presented
satisfactorily in a portrait orientation. Typewritten characters used in such formulas and
tables must meet the requirements set forth in 37 CFR 1.58(c). A space at least 0.64 cm.
(1/4 inch) high should be provided between complex formulas or tables and the text.

Paper

Drawings submitted to the USPTO must be made on paper which is flexible, strong,
white, smooth, nonshiny, and durable. All sheets must be free from cracks, creases, and
folds. Only one side of the sheet shall be used for the drawing. Each sheet must be
reasonably free from erasures and must be free from alterations, overwritings, and
interlineations.

All drawings sheets, including sheets containing photographs, in an application must be

the same size. One of the shorter sides of the sheet is regarded as its top. The size of the
sheets on which drawings are made must be:

• 21.6 cm. by 27.9 cm. (81/2 by 11 inches), or

• 21.0 cm. by 29.7 cm. (DIN size A4).

The sheets must not contain frames around the sight (the usable surface), but should have
scan target points (cross hairs) printed on two catercorner margin corners. The following
margins are required:

• On 21.6 cm. by 27.9 cm. (81/2 by 11 inch) drawing sheets, each sheet must
include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5
cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom
margin of at least 1.0 cm. (3/8 inch) from the edges, thereby leaving a sight no
greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches).
• On 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, each sheet must include a
top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1
inch), a right side margin of at least 1.5 cm (5/8 inch), and a bottom margin of at
least 1.0 cm. (3/8 inch) from the edges, thereby leaving a sight no greater than
17.0 cm. by 26.2 cm.

25
Views

The drawing must contain as many views as necessary to show the invention. The views
may be plan, elevation, section, or perspective views. Detailed views of portions of
elements, on a larger scale if necessary, may also be used. All views of the drawing must
be grouped together and arranged on the sheet(s) without wasting space, preferably in an
upright position, clearly separated from one another, and must not be included in the
sheets containing the specifications, claims, or abstract. Views must not be connected by
projection lines and must not contain center lines. Waveforms of electrical signals may be
connected by dashed lines to show the relative timing of the waveforms.

Exploded Views

Exploded views, with the separated parts embraced by a bracket, to show the relationship
or order of assembly of various parts are permissible. When an exploded view is shown
in a figure which is on the same sheet as another figure, the exploded view should be
placed in brackets.

Partial Views

When necessary, a view of a large machine or device in its entirety may be broken into
partial views on a single sheet, or extended over several sheets if there is no loss in
facility of understanding the view. Partial views drawn on separate sheets must always be
capable of being linked edge to edge so that no partial view contains parts of another
partial view. A smaller scale view should be included showing the whole formed by the
partial views and indicating the positions of the parts shown. When a portion of a view is
enlarged for magnification purposes, the view and the enlarged view must each be
labeled as separate views.

Where views on two or more sheets form, in effect, a single complete view, the views on
the several sheets must be so arranged that the complete figure can be assembled without
concealing any part of any of the views appearing on the various sheets.

A very long view may be divided into several parts placed one above the other on a
single sheet. However, the relationship between the different parts must be clear and
unambiguous.

Sectional Views

The plane upon which a sectional view is taken should be indicated on the view from
which the section is cut by a broken line. The ends of the broken line should be
designated by Arabic or Roman numerals corresponding to the view number of the
sectional view, and should have arrows to indicate the direction of sight. Hatching must
be used to indicate section portions of an object, and must be made by regularly spaced
oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished
without difficulty. Hatching should not impede the clear reading of the reference

26
characters and lead lines. If it is not possible to place reference characters outside the
hatched area, the hatching may be broken off wherever reference characters are inserted.
Hatching must be at a substantial angle to the surrounding axes or principal lines,
preferably 45°.

A cross section must be set out and drawn to show all of the materials as they are shown
in the view from which the cross section was taken. The parts in cross section must show
proper material(s) by hatching with regularly spaced parallel oblique strokes; the space
between strokes being chosen on the basis of the total area to be hatched. The various
parts of a cross section of the same item should be hatched in the same manner and
should accurately and graphically indicate the nature of the material(s) illustrated in cross
section.

The hatching of juxtaposed different elements must be angled in a different way. In the
case of large areas, hatching may be confined to an edging drawn around the entire inside
of the outline of the area to be hatched. Different types of hatching should have different
conventional meanings as regards the nature of a material seen in cross section.

Alternate Position

A moved position may be shown by a broken line superimposed upon a suitable view if
this can be done without crowding; otherwise, a separate view must be used for this
purpose.

Modified Forms

Modified forms of construction must be shown in separate views.

Arrangement of Views

One view must not be placed upon another or within the outline of another. All views on
the same sheet should stand in the same direction and, if possible, stand so that they can
be read with the sheet held in an upright position. If views wider than the width of the
sheet are necessary for the clearest illustration of the invention, the sheet may be turned
on its side so that the top of the sheet is on the right-hand side, with the appropriate top
margin used as the heading space. Words must appear in a horizontal, left-to-right
fashion when the page is either upright or turned so that the top becomes the right side,
except for graphs utilizing standard scientific convention to denote the axis of abscissas
(of X) and the axis of ordinates (of Y).

Front Page View

One of the views should be suitable for inclusion on the front page of the patent
application publication and patent as the illustration of the invention.

27
Scale

The scale to which a drawing is made must be large enough to show the mechanism
without crowding when the drawing is reduced in size to two-thirds in reproduction.
Indications such as "actual size" or "scale 1/2" are not permitted on the drawings since
these lose their meaning with reproduction in a different format.

Character of Lines, Numbers, and Letters

All drawings must be made by a process which will give them satisfactory reproduction
characteristics. Every line, number, and letter must be durable, clean, black (except for
color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The
weight of all lines and letters must be heavy enough to permit adequate reproduction.
This requirement applies to all lines however fine, to shading, and to lines representing
cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in
the same drawing where different thicknesses have a different meaning.

Shading

The use of shading in views is encouraged if it aids in understanding the invention and if
it does not reduce legibility. Shading is used to indicate the surface or shape of spherical,
cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such
shading is preferred in the case of parts shown in perspective, but not for cross sections.
See discussion of sectional views above. Spaced lines for shading are preferred. These
lines must be thin, as few in number as practicable, and they must contrast with the rest
of the drawings. As a substitute for shading, heavy lines on the shade side of objects can
be used except where they superimpose on each other or obscure reference characters.
Light should come from the upper left corner at an angle of 45°. Surface delineations
should preferably be shown by proper shading. Solid black shading areas are not
permitted, except when used to represent bar graphs or color.

Symbols

Graphical drawing symbols may be used for conventional elements when appropriate.
The elements for which such symbols and labeled representations are used must be
adequately identified in the specification. Known devices should be illustrated by
symbols which have a universally recognized conventional meaning and are generally
accepted in the art. Other symbols which are not universally recognized may be used,
subject to approval by the USPTO, if they are not likely to be confused with existing
conventional symbols, and if they are readily identifiable.

Legends

Suitable descriptive legends may be used, or may be required by the examiner, where
necessary for understanding of the drawing, subject to approval by the USPTO. They
should contain as few words as possible.

28
Numbers, Letters, and Reference Characters

The English alphabet must be used for letters, except where another alphabet is
customarily used, such as the Greek alphabet to indicate angles, wavelengths, and
mathematical formulas.

Reference characters (numerals are preferred), sheet numbers, and view numbers must be
plain and legible, and must not be used in association with brackets or inverted commas,
or enclosed within outlines (encircled). They must be oriented in the same direction as
the view so as to avoid having to rotate the sheet. Reference characters should be
arranged to follow the profile of the object depicted.

Numbers, letters, and reference characters must measure at least 0.32 cm. (1/8 inch) in
height. They should not be placed in the drawing so as to interfere with its
comprehension. Therefore, they should not cross or mingle with the lines. They should
not be placed upon hatched or shaded surfaces. When necessary, such as indicating a
surface or cross section, a reference character may be underlined and a blank space may
be left in the hatching or shading where the character occurs so that it appears distinct.

The same part of an invention appearing in more than one view of the drawing must
always be designated by the same reference character, and the same reference character
must never be used to designate different parts.

Reference characters not mentioned in the description shall not appear in the drawings.
Reference characters mentioned in the description must appear in the drawings.

Lead Lines and Arrows

Lead lines are those lines between the reference characters and the details to which they
refer. Such lines may be straight or curved and should be as short as possible. They must
originate in the immediate proximity of the reference character and extend to the feature
indicated. Lead lines must not cross each other. Lead lines are required for each reference
character except for those which indicate the surface or cross section on which they are
placed. Such a reference character must be underlined to make it clear that a lead line has
not been left out by mistake. Lead lines must be executed in the same way as lines in the
drawing.

Arrows may be used at the ends of lines, provided that their meaning is clear, as follows:

• on a lead line, a freestanding arrow to indicate the entire section toward which it
points;
• on a lead line, an arrow touching a line to indicate the surface shown by the line
looking along the direction of the arrow; or
• to show the direction of movement.

29
Copyright or Mask Work Notice

A copyright or mask work notice may appear in the drawing, but must be placed within
the sight of the drawing immediately below the figure representing the copyright or mask
work material and be limited to letters having a print size of 0.32 cm. to 0.64 cm. (1/8 to
1/4 inches) high. The content of the notice must be limited to only those elements
provided for by law. For example, "©1983 John Doe" (17 U.S.C. 401) and "*M* John
Doe" (17 U.S.C. 909) would be properly limited and, under current statutes, legally
sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or
mask work notice will be permitted only if the authorization language set forth in 37 CFR
§1.71(e) is included at the beginning (preferably as the first paragraph) of the
specification.

Numbering of Sheets of Drawings and Views

The sheets of drawings should be numbered in consecutive Arabic numerals, starting

with 1, within the sight (the usable surface). These numbers, if present, must be placed in
the middle of the top of the sheet, but not in the margin. The numbers can be placed on
the right-hand side if the drawing extends too close to the middle of the top edge of the
usable surface. The drawing sheet numbering must be clear and larger than the numbers
used as reference characters to avoid confusion. The number of each sheet should be
shown by two Arabic numerals placed on either side of an oblique line, with the first
being the sheet number and the second being the total number of sheets of drawings, with
no other marking.

The different views must be numbered in consecutive Arabic numerals, starting with 1,
independent of the numbering of the sheets and, if possible, in the order in which they
appear on the drawing sheet(s). Partial views intended to form one complete view, on one
or several sheets, must be identified by the same number followed by a capital letter.
View numbers must be preceded by the abbreviation "FIG". Where only a single view is
used in an application to illustrate the claimed invention, it must not be numbered and the
abbreviation "FIG". must not appear.

Numbers and letters identifying the views must be simple and clear and must not be used
in association with brackets, circles, or inverted commas. The view numbers must be
larger than the numbers used for reference characters.

Security Markings

Authorized security markings may be placed on the drawings provided they are outside
the sight, preferably centered in the top margin.

Corrections

Any corrections on drawings submitted to the USPTO must be durable and permanent.

30
Holes

No holes should be made by the applicant in the drawing sheets. Rather than use of a
staple, a non-hole producing binder clip should be used.

Patent and Trademark Depository Library (PTDL) Program

The Patent and Trademark Depository Library Program is comprised of a network of

Patent and Trademark Depository Libraries (PTDLs) located in the 50 states, the District
of Columbia, and Puerto Rico which provide access to many of the same products and
services offered at the USPTO search facilities in Alexandria, VA. The scope of PTDL
collections, hours of operation, services, and fees (where applicable) vary depending on
PTDL location. Users are advised to call ahead to determine products and services
available at a particular PTDL. PTDLs also offer automated access to patent and
trademark information. All PTDLs offer free access to the Cassis CD-ROM series search
tools to assist patrons in the use of patent and trademark collections. Please refer to the
USPTO’s Web site for a complete list of PTDLs.

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PLANT PATENT
What is a plant patent?

A plant patent is granted by the Government to an inventor (or the inventor's heirs or
assigns) who has invented or discovered and asexually reproduced a distinct and new
variety of plant, other than a tuber propagated plant or a plant found in an uncultivated
state. The grant, which lasts for 20 years from the date of filing the application, protects
the inventor's right to exclude others from asexually reproducing, selling, or using the
plant so reproduced. This protection is limited to a plant in its ordinary meaning:

• A living plant organism which expresses a set of characteristics determined by its

single, genetic makeup or genotype, which can be duplicated through asexual
reproduction, but which can not otherwise be "made" or "manufactured."
• Sports, mutants, hybrids, and transformed plants are comprehended; sports or
mutants may be spontaneous or induced. Hybrids may be natural, from a planned
breeding program, or somatic in source. While natural plant mutants might have
naturally occurred, they must have been discovered in a cultivated area.
• Algae and macro fungi are regarded as plants, but bacteria are not.

The information presented in this publication is tailored to apply to and is limited to

patents on asexually reproduced plants. While the United States Patent and Trademark
Office (USPTO) does accept utility applications having claims to plants, seed, genes, etc.,
such practice is beyond the scope of this publication. General information regarding
utility practice can be obtained by calling PTO Information Services Division at 1-800-
786-9199, or from a registered patent attorney. Intellectual property protection for true
breeding seed reproduced plant varieties is offered through the Plant Variety Protection
Office, Beltsville, Md., which should be contacted for information regarding intellectual
property protection for such crops.

Provisions and Limitations

Patents to plants which are stable and reproduced by asexual reproduction, and not a
potato or other edible tuber reproduced plant, are provided for by Title 35 United States
Code, Section 161 which states:

Whoever invents or discovers and asexually reproduces any distinct and new variety of
plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than
a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent
therefor, subject to the conditions and requirements of title. (Amended September 3,
1954, 68 Stat. 1190).

The provisions of this title relating to patents for inventions shall apply to patents for
plants, except as otherwise provided.

32
As noted in the last paragraph of the statute, the plant patent must also satisfy the general
requirements of patentability. The subject matter of the application would be a plant
which developed or discovered by applicant, and which has been found stable by asexual
reproduction. To be patentable, it would also be required:

• That the plant was invented or discovered and, if discovered, that the discovery
was made in a cultivated area.
• That the plant is not a plant which is excluded by statute, where the part of the
plant used for asexual reproduction is not a tuber food part, as with potato or
Jerusalem artichoke.
• That the person or persons filing the application are those who actually invented
the claimed plant; i.e., discovered or developed and identified or isolated the
plant, and asexually reproduced the plant.
• That the plant has not been sold or released in the United States of America more
than one year prior to the date of the application.
• That the plant has not been enabled to the public, i.e., by description in a printed
publication in this country more than one year before the application for patent
with an offer to sale; or by release or sale of the plant more than one year prior to
application for patent.
• That the plant be shown to differ from known, related plants by at least one
distinguishing characteristic, which is more than a difference caused by growing
conditions or fertility levels, etc.
• The invention would not have been obvious to one skilled in the art at the time of
invention by applicant.

Where doubt exists as to the patentability of a specific plant, a qualified legal authority
should be consulted prior to applying to assure that the plant satisfies statutory
requirements and is not exempted from plant patent protection.

Inventorship

Because there are two steps which constitute invention in plant applications, there may be
more than one inventor. An inventor is any person who contributed to either step of
invention. For example, if one person discovers a new and distinct plant and asexually
reproduces the plant, such person would be a sole inventor. If one person discovered or
selected a new and distinct plant, and a second person asexually reproduced the plant and
ascertained that the clone(s) of the plant were identical to the original plant in every
distinguishing characteristic, the second person would properly be considered a co-
inventor. If either step is performed by a staff, every member of the staff who performed
or contributed to the performance of either step could properly be considered a co-
inventor. Thus, a plant patent may have a plurality of inventors. However, an inventor
can direct that the step of asexual reproduction be performed by a custom propagation
service or tissue culture enterprise and those performing the service would not be
considered co-inventors.

Asexual Reproduction

33
Asexual reproduction is the propagation of a plant to multiply the plant without the use of
genetic seeds to assure an exact genetic copy of the plant being reproduced. Any known
method of asexual reproduction which renders a true genetic copy of the plant may be
employed. Acceptable modes of asexual reproduction would include but may not be
limited to:

Rooting Cuttings Grafting and Budding

Apomictic Seeds Bulbs
Division Slips
Layering Rhizomes
Runners Corms
Tissue Culture Nucellar Embryos

The purpose of asexual reproduction is to establish the stability of the plant. This second
step of the invention must be performed with sufficient time prior to application for
patent rights to allow the thorough evaluation of propagules or clones of the claimed
plant for stability thus assuring that such specimens retain the identical distinguishing
characteristics of the original plant.

Rights Conveyed by a Plant Patent

Grant of a patent for a plant precludes others from asexually reproducing or selling or
using the patented plant. A plant patent is regarded as limited to one plant, or genome. A
sport or mutant of a patented plant would not be considered to be of the same genotype,
would not be covered by the plant patent to the parent plant, and would, itself, be
separately patentable, subject to meeting the requirements of patentability. A plant patent
expires 20 years from the filing date of the patent application. As with utility
applications, when the plant patent expires, the subject matter of the patent becomes
public domain.

The Application

While the formal requirements of an application for plant patent will be outlined below,
anyone seeking a patent should contact the USPTO just before filing of an application, to
ensure that new requirements have not been made, and that the fees filed with the
application are sufficient, as such are subject to change. Filing an application without
sufficient fees may result in loss of filing date and/or having to pay an additional fee (a
surcharge) to reactivate the application. Filing an application which is not complete may
result in the application not being accepted by the PTO, and thus may result in the loss of
intellectual property rights by the applicants. Applications which are not formal when
filed may also result in loss of rights. Current filing, search, and examination fees for 35
U.S.C. 161 Plant Patent Applications may be found at:
http://www.uspto.gov/web/offices/ac/qs/ope/fees.htm. (Fees are subject to change.)

34
Legal Representation

Those seeking a plant patent should be aware that they may prosecute their applications
through the services of a registered patent attorney/agent. While the PTO will not help in
the selection of an attorney/agent, one seeking a plant patent should select an
attorney/agent who is registered to practice before the PTO.

The USPTO maintains a directory of registered patent attorneys and agents at

http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html.

Content and Arrangement

With some exceptions, a patent application for a plant is subject to the same requirements
as a utility application. Title 37 of the Code of Federal Regulations, Section 1.163(a))
requires that the specification must contain as full and complete a botanical description as
reasonably possible of the plant and the characteristics which distinguish that plant over
known, related plants. The components of a plant application are similar to those of a
utility application and are covered by the following guidelines which illustrate the
preferred layout and content for patent applications. These guidelines are suggested for
use by one filing a plant patent application:

Arrangement of the Specification

The following arrangement is preferred in framing the specification and, except for the
title of the invention, each of the lettered items should be preceded by the headings
indicated below as tailored for application for a plant filed under 35 U.S.C. 161:

(a) Title of the Invention. The title of the invention may include an introductory portion
stating the name, citizenship, and residence of the applicant.

(b) CrossReference to Related Applications (if any, unless included in an application

data sheet). Related applications include:

• A utility application from which the claimed plant is the subject of a divisional
application.
• A continuation (co-pending, newly filed application) to the same plant filed when
a parent application has not been allowed to a sibling cultivar.
• An application not co-pending with an original application which was not
allowed.
• Copending applications to siblings or similar plants developed by the same
breeding program, etc.

(c)Statement regarding Federally-sponsored research and development (if any).

(d)Latin name of the genus and species of the plant claimed.

35
(e)Variety denomination.

(f) Background of the invention.

1. Field of the Invention. The field of the invention is intended to identify the botanical
and market class of the invention, and to reflect how the plant will be used. This section
should indicate the botanical name of the plant by genus and species, and should state the
market class of the plant.

2. Description of relevant prior art including information disclosed under 37 CFR

1.97 and 1.99. Here, the parents of the claimed plant, or the known plants to which the
claimed plant is related are discussed. Frequently the parent plant or plants are identified
in this section and are described as to their most important or distinguishing
characteristics. The claimed plant may be compared to the parent plant or plants in this
section. If the parent plants are not known,the probable parent plants may be indicated. It
is appropriate in this section to indicate how the plant was attained and to detail the
necessary averments to how and where the plant has been asexually reproduced. This
section must also include a positive statement that the clones or propagules of the claimed
plant are identical to the original plant in all distinguishing characteristics so as to
establish that the claimed plant is stable.

(g) Summary of the Invention. In the Summary section, the major characteristics of the
plant are set forth, and they may be presented as a list of novel characteristics, or by a
narrative description of the trait or traits of the plant which set the plant apart from all
other plants of the botanical class and the market class of plant.

(h) Brief Description of the Drawing. Under this heading a separate brief description
should be presented to describe the contents of each view or figure of the drawing. The
drawing in a plant patent must show the plant with the most distinguishing characteristics
of the plant in sufficient scale to be identifiable when reduced by as much as 50%.
Drawings should be photographic, and must be in color where coloration is a
distinguishing characteristic. Where characteristics of foliage, bark, flowers and/or fruit
are distinguishing, such plant parts should be clearly depicted in one or more figures of
drawing. Figures of the drawing need not be numbered unless specifically required by the
examiner. Drawings must be mounted to satisfy the same requirements as drawings in a
utility application.

(i) Detailed Botanical Description of the Plant. This section should be a complete
botanical description of the claimed plant. Specification of the genus, species and
market class may begin this section, and the parents of the claimed plant may be specified
in the initial part of this section. The growth habit of the plant should be described as to
the shape of the plant at maturity, and branching habit. The characteristics of the plant in
winter dormancy should be completely described, if appropriate. A complete botanical
description of bark, buds, blossoms, leaves, and fruit should be a part of the disclosure.
Plant characteristics which are not capable of definitive, written description or which
cannot be clearly shown must be given substantive attention in this portion of the

36
application. These would include, but not are not be limited to, fragrance, taste, disease
resistances, productivity, precocity, and vigor. Even if the characteristics are well
depicted, the botanical characteristics must be substantively described. The descriptions
in this section should be botanical in nature and should be in terms of the art of the plant.
The detail of this section should be sufficient to prevent others from attempting to patent
the same plant at a later date by simply describing the plant in more detail and with the
allegation that the original patent did not state the characteristics being further described.
(j) Claim. A plant patent is limited to one claim. The claim shall be in formal terms to the
plant as shown and described, as the claim is statutorily drawn to the plant as a whole.
The claim may also make reference to one or more of the unusual characteristics of the
plant, but may not claim parts or products of the plant. The claim must be in single
sentence form.

(k) Abstract of the Disclosure. The abstract is a brief description of the plant and of the
most notable or novel and important characteristics of the claimed plant. Preferably, the
description of the plant will be a condensed review or presentation of the most
distinguishing characteristics of the plant.

Preparation of the Application

While background information for specific classes of plants may be readily available, one
seeking to file a plant patent application should be thoroughly familiar with the
characteristics of the plant, and must assure that the plant is stable. Invention for purposes
of a plant patent is a two step process:

• The first step is the discovery step which involves the identification of a novel
plant. This step could be performed in any cultivated area. It could involve the
identification or recognition of an offtype plant in a monoculture of a known
variety or the identification of a desirable mutant which was either spontaneous or
induced. Or, it could result from the identification or recognition of an
outstanding individual within the progeny of a cross made in a planned breeding
program.
• The second step, which consists of asexual reproduction, tests the stability of the
claimed plant to assure that the plant's unique characteristics are not due to
disease, infection, or exposure to agents which cause a change in the plant's
appearance which is transitory and not due to a change in the genotype of the
plant.

It is important that each of the above steps is satisfied before an application is filed. The
inventor of a plant must have discovered or identified the novel plant, and must have
asexually reproduced the plant and observed the clones so produced for a sufficient
amount of time to have concluded that the clones are identical to the parent plant in all
characteristics. It would be inappropriate to file an application before the second step of
invention had been completed. Filing of an application before the second step of
invention has been completed will result in rejection of the claim as being premature and
nonstatutory.

37
Oath or Declaration

The applicant (or applicants) for a plant patent must be the person (or persons) who has
(or have) invented or discovered and asexually reproduced the new and distinct variety of
plant for which the patent is sought. In addition to the averments required for a utility
application's oath or declaration, those applying for a plant patent must also state that
applicant(s) has or have asexually reproduced the plant. If the plant is a newly found
plant, the oath or declaration must also state that the plant was found in a cultivated area.

The Drawing

Plant drawings are normally photographic, but may be presented in other mediums, such
as in permanent water color renderings, which faithfully present the appearance of the
plant. Such drawings are not mechanical drawings and should be artistic and competent
in their execution. Figure numbers and reference characters need not be used unless
specifically required by the examiner. The drawing must disclose all of the distinctive
characteristics of the plant which are capable of visual representation.
Drawings may be in color. Where color is a distinguishing characteristic of the new plant,
the drawing must be in color. The colors depicted must correspond with their respective
color designations set forth in the specifications defined in a recognized color dictionary
which is specifically identified in the specification. Two copies of color drawings must be
submitted. Color drawings may be made either in permanent water color or oil.
Photographs or permanently mounted color photographs are acceptable. The paper used
in mounting plant drawings, in any case, must correspond in sizes, weight and quality to
the paper required for other drawings, i.e., in a utility application. The margin
requirements of drawings are also the same as with other patent drawings.

Drawings requirements will be strictly adhered to because the claim incorporates the
drawing by reference.

Final Preparation and Assembly

Before an application is filed, the (clones of the) plant must have been carefully observed
during the testing process. Because the botanical description of the plant must be
reasonably complete, it would not suffice to describe just the fruit, or flower, or bark, or
leaves of any specific plant, even if these plant parts were the valuable substance of the
plant in commerce or the only parts seem to be distinctive or different. It would be
inappropriate to describe just the bark, roots and juvenile growth of a rootstock, even if
only these parts would normally would be seen by or important to the consumer who was
to purchase the plant.
In preparation of a plant patent disclosure, all parts of the plant should be carefully
observed through at least one growth cycle and such observations should be recorded in
detail. Because many plants (like pine trees of the same species, asparagus plants,
bluegrass plants, etc.) may look very similar, it may take the collective differences in a
number of traits to distinguish a new cultivar. Failure to record characteristics and
differences at their time of availability in the growing season could result in applicant not

38
being able to adequately botanically describe the claimed plant when the specification is
drafted. Incomplete records of a claimed plant may render it impossible to overcome
defects identified in an examiner's rejection or at the very least prolong prosecution of the
application.
Among the factors which must be ascertained for a reasonably complete botanical
description for the claimed plant are:

• Genus and species

• Habit of growth
• Cultivar name
• Vigor
• Productivity
• Precocity (if applicable)
• Botanical characteristics of plant structures (i.e. buds, bark, foliage, flowers, fruit,
etc.)
• Fertility (Fecundity)
• Other characteristics which distinguish the plant such as resistance(s) to disease,
drought, cold, dampness, etc., fragrance, coloration, regularity and time of
bearing, quantity or quality of extracts, rooting ability, timing or duration of
flowering season, etc.

The amount of detail required in a plant patent application is determined on a casebycase

basis, and is determined by the similarity of the prior art plants to the plant being claimed.
The examiner will evaluate the completeness of the application. The examiner's judgment
may be tempered by the level of activity in a specific market class. The botanical
description of a plant in a market class with a high level of commercial activity may
require greater detail, substance and specificity than that for a plant in a market class of
little activity.

The Examination

Upon filing, the application is reviewed for formalities in the USPTO Initial Processing
Branch where it is assigned a serial number, assembled into a file jacket, and reviewed by
application examiners for formal requirements. If found in compliance, the application is
then forwarded to the examining group, where it is classified and assigned to a patent
examiner. The application is then filed in chronological order, by serial number, to await
examination on the merits.
When the application is taken up by the examiner, it is again examined for formalities.
Points of concern in this portion of the examination include:

• Title. The title must include the market name of the plant. The name of the plant
is searched to assure that it has not previously been used to describe a plant of the
same botanical or market class, or is confusingly similar to an existing plant
sharing the same botanical or market class.

39
 • Oath or declaration. The oath or declaration is reviewed to assure that it is of the
proper plant format noted above, that it is properly signed and dated, and it
includes applicant's address.
• Presence of an Abstract. The abstract is reviewed for length and content. An
abstract must be present, and should be on a separate page.
• Arrangement of the components of the specification. The application will be
reviewed to ensure that each required component of the application is present, that
proper headings are presented, and that each component is within the preferred
arrangement presented above.

When satisfied that the application is complete and formal, the examiner will examine the
disclosure on the merits. This examination will typically include assessment of:

• Completeness of botanical description. The description of the plant must be

complete to the point of reasonably distinguishing the claimed plant from the
most closely related plants, both patented and unpatented. If the claimed plant is
of a species which has not been previously patented, the details of the
specification will be compared with available descriptions of the species to assure
that the specification describes at least one clearly distinguishing trait not
previously described as characteristic of the species,or a combination of
characteristics which are unusual within the species. If applicant's description is
broad or brief, and such description falls within general descriptions of the species
of claimed plant, this will form a bonafide basis of rejection. If major
characteristics of the plant have not been botanically described, the disclosure will
be objected to (and the claim rejected) by the examiner as incomplete with the
reasoning of the examiner forming a basis for objection/rejection.

• Novelty of the claimed plant. The description of the claimed plant will be
compared with the closest available prior art. Prior art constitutes those plants
known and available to the skilled artisan at the time of applicant's invention. If
the disclosure of the application does not distinguish the claimed plant over such
previously known and available plants (either patented or unpatented) the claim
will be rejected as failing to distinguish the claimed plant over the known plant. A
plant patent or published botanical description of the prior art plant will be cited
to establish the existence of the referenced plant. Should such a rejection be
extended, it becomes incumbent on the applicant to amend the disclosure to
include further botanical description of the claimed plant to distinguish over the
known plant, if such is possible. Alternatively, or in addition, the applicant may
argue how and why the originally filed disclosure factually distinguishes the
inventive plant over the plant of the reference.

• Obviousness. The plant will be examined based on the standard statutory and
court determined tests of obviousness. The factual inquiries that are applied for
establishing a background for determining obviousness under Title 35 United
States Code, Section 103 include:

Determining the scope and contents of the prior art;

40
Ascertaining any differences between the prior art and the claim at issue and if there are
any in fact;
and Resolving the level of ordinary skill in the pertinent art.

The claimed plant must be indicated to have been suggested by the prior art relied on by
the examiner, and must be shown to have been reasonably expected by the reference or
references relied on by the examiner before such a rejection can be seen as constituting a
prima facie case of obviousness. Normally, if a reasonable prima facie case of
obviousness cannot be developed by the examiner, a rejection based on obviousness will
not extended. Such a rejection may be extended where the prior art indicates that a known
method of breeding, such as mutation induction breeding, using known and effective
mutagens in dosages known to work, would reasonably be expected to result in mutation
in a specific direction and of a specific magnitude, or where the prior art might suggest
reasonable results after attempts to alter a plant through known processes. Examples
include the tissue culture of diverse genotypes of a chimera to separate the different
genotypes, or the application of colchicine to plant cells to double chromosome numbers.

If the application is formal, complete and determined by the examiner to be drawn to a

plant which was both novel and unobvious, the application will be allowed by the
examiner and a notice of allowance forwarded to the applicant.

Once allowed by the examiner, the application will be forwarded to the USPTO Issue
Branch, where it will await payment of the issue fee by applicant. Upon payment of the
issue fee, the application will be published in due course.

Helpful Hints

• Make every attempt not to present a name for the plant which has already been
used or is confusingly similar to a plant of the same market or botanical class.
Search old catalogs and available international register listings before assigning a
name to a plant.
• File all drawings in duplicate. Be sure that two formally mounted sets of drawings
accompany the application when filed, and that these are of reasonable fidelity to
the specified colors of the plant. Be sure that the scale and clarity of the drawings
are appropriate to allow for adequate reproduction even if reduced in scale upon
publishing. Include a transmittal sheet which itemizes the contents of the
application as filed.
• File each individual application in a separate envelope, and be sure to include all
of the parts of each application in the same envelope. Include a self-addressed
postcard itemizing all of the components of the application (see MPEP § 503) for
return to applicant with a preliminary indication of the serial number of the
application.
• Model the application after a patent of acceptable format and content which
describes a plant which is related to or in the same market class as the claimed
plant, if one is available.

41
• Check that the oath or declaration is that required for a plant patent application.
Ensure that the oath or declaration has been signed and permanent ink or its
equivalent, and is signed no earlier than three months prior to the filing of the
application. Check that the mailing address of the inventor(s) is/are correct and
complete.
• Where color is a distinguishing characteristic of the plant, specify the color of the
plant as defined by reference to an established color dictionary which is
recognized in this country.
• Be sure that drawings filed are complete, correctly mounted, and reasonably
correspond with the colors of the plant which are specified and to the true and
characteristic plant coloration.
• Include the appropriate filing fee, search fee, and examination fee with the
application to avoid processing delays.
• Direct preexamination questions concerning the application to the Examiner, by
telephone,to expedite prosecution. Include a current telephone number with all
correspondence with the USPTO.

42
INTELLECTUAL PROPERTY
ASKING THE RIGHT QUESTION
The first question you must answer before you can think about how to protect any
specific innovation is:

“What exactly have I got here?

What sort of Intellectual Property are we talking about?”

The concept of intellectual property, or IP, treats certain intangible products similarly to
physical things. In most countries, IP laws grant certain kinds of exclusive rights over
these intangibles on the analogy of property rights, some expiring after a set period of
time, and others lasting indefinitely.

Overview
The purposes of these laws has varied, but most grant the "owner" a monopoly on the use
or copying of the protected "property". This was done historically to both grant a boon to
a king's favourite, as well as to resolve a free rider problem ("to promote the progress of
science and useful arts", as is stated in the United States Constitution). In the latter sense,
patents and copyrights serve as incentive to inventors and authors to produce works
which benefit the public. These creators can exact a fee from those who wish to copy
their invention or publish their compositions.

Seen as an incentive to benefit the public, patent rights in particular have sometimes
promoted innovation by ensuring that someone who devoted, say, ten years of penury
while struggling to develop vulcanized rubber or a workable steamship, could recoup his
investment of time and energy. Using monopoly power, the inventor could exact a fee
from those who wanted to make copies of his invention. Set it too high, and others would
simply try to make a competing invention, but set it low enough and one could make a
good living from the fees.

In latter years, the public benefit idea has been downplayed in favor of the idea that the
primary purpose of "property rights" is to benefit the holder. This view places a priority
on the benefit of the patent or copyright holder, even to the detriment of society at large,
and has attracted some opponents.

In some fields, patent law has had an unintended, indeed, a perverse consequence:
treating mental products like physical ones has stifled innovation in those fields, rather
than aiding it.

43
The four main types of non-physical things considered by this point of view are
copyrights, patents, trademarks and trade secrets. Common types of intellectual property
rights include conflicting areas of law:

• Copyrights, which give the holder some exclusive rights to control some
reproduction of works of authorship, such as books and music, for a certain period
of time.
• Patents give the holder an exclusive right to prevent third parties from
commercially exploiting an invention for a certain period, typically 20 years from
the filing date of a patent application.
• Trademarks are distinctive names, phrases or marks used to identify products to
consumers.
• Trade secrets, where a company keeps information secret, perhaps by enforcing a
contract under which those given access to information are not permitted to
disclose it to others.

These rights, conferred by law, can be given, sold, rented (called "licensing") and, in
some countries, even mortgaged, in much the same way as physical property (especially
real property). However, the rights typically have limitations, sometimes including term
limits and other exceptions (such as fair use for copyrighted works). These limitations are
sometimes analogous to public easements, they grant the public certain rights which are
considered essential.

It is important to understand that it is the rights that are the property, and not the
intellectual work they apply to. A patent can be bought and sold, but the invention that it
covers is not owned at all. For this and other reasons, some people think that the term
intellectual property is misleading. Some use the term "intellectual monopoly" instead,
because such so-called "intellectual property" is actually a government-granted monopoly
on certain types of action. Others object to this usage, because of negative connotation of
the term "monopoly" and the wide-availability of substitute goods. Others still prefer not
to use a generic term because of differences in the nature of copyright, patent and
trademark law, and try to be specific about which they are talking about.

Legal status

Intellectual property rights are generally divided into two categories: those that grant
exclusive rights only on copying/reproduction of the item or act protected (e.g.
copyright,copyleft) and those that grant not only this but also other exclusive rights. The
difference between these is that a copyright would prevent someone from copying the
design of something, but could not stop them from making that design if they had no
knowledge of the original held by the copyright holder. A patent, on the other hand, can
be used to prevent that second person from making the same design even if they had
never heard of or seen the original. Patent rights can thus be more powerful, and
generally harder to obtain and more expensive to enforce.

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There are also more specialized varieties of so-called sui generis intellectual property
rights, such as circuit design rights (called mask work rights in USA law, protected under
the Integrated Circuit Topography Act in Canadian law, and in European Community
Law by Directive 87/54/EEC of 16 December 1986 on the legal protection of
topographies of semiconductor products), plant breeder rights, plant variety rights,
industrial design rights, supplementary protection certificates for pharmaceutical products
and database rights (in European law).

Types and scope of intellectual property

Intellectual property may be analysed in terms of its subject matter, the actions it
regulates in respect of the subject matter, the duration of particular rights, and the
limitations on these rights. Intellectual property law is conventionally categorized
according to subject matter: inventions, artistic expression, secrets, semiconductor
designs, and so on. Intellectual property law regulates what people may legally do with
these inventions, expressions and so on. The regulations regarding each subject matter
area tend to form distinct bodies of law; the rules permitting reproduction without license
of patented inventions and copyrighted expression are entirely independent of one
another.

Generally, the action regulated by intellectual property is unauthorized reproduction.

However, as indicated above, some rights go beyond this to grant a full suite of exclusive
rights on a particular idea or product. Generally, it is true to say that intellectual property
rights grant the holder the ability to stop others doing something (i.e., a negative right),
but not necessarily a right to do it themselves (i.e., a positive right). For example, the
holder of a patent on a pharmaceutical product may be able to prevent others selling it,
but (in most countries) cannot sell it themselves without a separate license from a
regulatory authority.

Most intellectual property rights are nothing more than the right to sue an infringer,
which has the effect that people will approach the rightholder for permission to perform
the acts covered by the rightholder's exclusive rights. The granting of this permission is
termed licensing, and IP licenses may be used to impose conditions on the licensee,
generally the payment of a fee or an undertaking not to engage in particular forms of
conduct. In many jurisdictions the law places limits on what restrictions the licensor (the
person granting the licence) can impose. In the European Union, for example,
competition law has a strong influence on how licences are granted by large companies.

A license is 'permission' to do something, in contract form. Therefore a license is only

required for activities which fall under the exclusive rights in question. The intellectual
property laws of certain countries provides for certain activities which do not require any
license, such as reproduction of small amounts of texts, sometimes termed fair use. Many
countries' legal systems afford compulsory licenses for particular activities, especially in
the area of patent law.

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Many intellectual property rights are awarded by a government for a limited period of
time. Such rights are justified as a reward for creating intellectual works. Economic
theory typically suggests that a free market with no intellectual property rights will lead
to too little production of intellectual works relative to an efficient outcome. Thus by
increasing rewards for authors, inventors and other producers of intellectual capital,
overall efficiency might be improved. On the other hand, intellectual property law could
in some circumstances lead to increased transaction costs that outweigh these gains (see
Coase's Penguin). Another consideration is that restricting the free reuse of information
and ideas will also have costs, where the use of the best available technique for a given
task or the creation of a new derived work is prevented.

Arguments against the term intellectual property

The term intellectual property is seen as problematic by some because the rights
conferred by IP laws are in some ways more limited than the legal rights associated with
property interests in physical goods (chattel) or land (real property). The presence of the
word property in the term can be seen as favoring the position of proponents of the
expansion of intellectual property rights, who may thereby more readily draw on the
rhetoric of property itself to remove the many restrictions built into intellectual property
law which would be inappropriate if applied to physical goods. For instance, most nations
grant copyrights for only limited terms. Additionally, the term is sometimes
misunderstood to imply ownership of the copies themselves, or even the information
contained in those copies. This would severely differ from physical property laws, which
rarely restrict the sale or modification of physical copies of a work (something which
many copyright laws do restrict).

A common argument against the term intellectual property is that information is

fundamentally different from physical property in that a "stolen" idea or copy does not
affect the original possession (see the tragedy of the commons). Another, more specific
objection to the term, held by Richard Stallman, is that the term is . Stallman argues that
the term implies a non-existent similarity between copyrights, patents, trademarks, and
other forms of intellectual property which makes clear thinking and discussion about
various forms difficult. Furthermore, most legal systems, including that of the United
States, imply that intellectual property "rights" are a government grant, rather than a
fundamental right held by citizens.

Though it is convenient for beneficiaries to regard intellectual rights as akin to

"property", items protected by IP law are, by definition, not physical objects "ownable" in
the traditional sense.

Opponents of the term also point out that the law itself treats these rights differently than
those involving physical property. To give three examples from US law, copyright
infringement is not punishable by laws against theft or tresspass, but rather by an entirely
different set of laws with different penalities. Patent infringement is not a criminal
offense although it may subject the infringer to civil liability. Willfully possessing stolen
physical goods is a criminal offense while mere possessing of goods which infringe on

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copyright is not. Furthermore, in the United States physical property laws are generally
part of state law, while copyright law is federal. States are forbidden from passing laws
regarding copyright.

Others would argue that the law is simply recognising the reality of a situation. In some
jurisdictions a lease of land (e.g. a flat or apartment) is regarded as intangible property in
the same way that copyright is. In these cases too the law accepts that the property cannot
be stolen - if someone moves into the flat and prevents you from living there they are not
regarded as 'thieves of the lease' but as 'squatters' and the law provides different remedies.
Identity theft is another example of the adaptation of physical property laws to intangible
items, though that term itself is seen as problematic by some.

History
It is not exactly clear where the concept of intellectual property originated.

The first patent in England was granted by Henry VI in 1449 to a Flemish man a 20 year
monopoly (co-incidentally, the current length of UK/EU patents is still 20 years) on the
manufacture of stained glass (destined for Eton College). This was the start of a long
tradition by the English Crown of the granting of "letters patent" (meaning 'open letter',
as opposed to a letter under seal) which granted "monopolies" to favoured persons (or
people who were prepared to pay for them). This became increasingly open to abuse as
the Crown granted patents in respect of all sorts of known goods (salt, for example).
After public outcry, James I was forced to revoke all existing monopolies and declare that
they were only to be used for 'projects of new invention'. This was incorporated into the
Statute of Monopolies 1623. In the reign of Queen Anne the rules were changed again so
that a written description of the article was given.

Outside of England, patent law was the subject of legislative protection in the Venetian
Statute of 1474.

Copyright was not invented until after the advent of the printing press and wider public
literacy. In England the King was concerned by the unfair copying of books and used the
royal prerogative to pass the Licensing Act 1662 which established a register of licensed
books and required a copy to be deposited with the Stationers Company. The Statute of
Anne was the first real act of copyright, and gave the author rights for a fixed period.
Internationally, the Berne Convention in the late 1800's set out the scope of copyright
protection and is still in force to this day.

Design rights started in England in 1787 with the Designing & Printing of Linen Act and
have expanded from there.

The term intellectual property appears to have originated in Europe during the 19th
century. French author A. Nion mentions "propriété intellectuelle" in his Droits civils des
auteurs, artistes et inventeurs, published in 1846, and there may well have been earlier
uses of the term.

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During the period in question, there was some controversy over the nature of copyright
and patent protections in Europe; those who supported unlimited copyrights frequently
used the term property to advance that agenda, while others who supported a more
limited system sometimes used the term intellectual rights (droits intellectuels).

The system currently used by much of the Western world is more in line with the second
view, with limited copyrights that eventually expire. Regardless, the term intellectual
property has gained prominence throughout the world, as evidenced by the United
Nations World Intellectual Property Organization (WIPO), formed in 1967.

Trends
Recently the general trend in intellectual property law has been expansion: to cover new
types of subject matter such as databases, to regulate new categories of activity in respect
of the subject matter already protected, to increase the duration of individual rights, and
to remove restrictions and limitations on these rights.

Another effect of this trend is an increase in the term of the government-granted rights,
and an expansion of the definition of "author" to include corporations as the legitimate
creators and owners of works. The concept of work for hire has had the effect of treating
a corporation or business owner as the legal author of works created by people while
employed.

Another trend is to increase the number and type of what is claimed as intellectual
property. This has resulted in increasingly broad patents and trademarks: for instance,
Microsoft attempting to trademark the phrase, "Where do you want to go today?". Trade
marks in EU law can now encompass smells (e.g. of cut grass for tennis balls), shapes
(e.g. of a soft drinks bottle), colors (e.g. red for fizzy drinks), words (e.g. COCA-COLA)
and sounds (Intel, has registered four notes). The granting of patents for life forms,
software algorithms and business models stretches the initial concept of giving the
inventor limited rights to exclude the use of his invention.

Some argue that these expansions harm an essential "bargain" driven between public and
copyright holders: as most "new" ideas borrow from other ideas, it is thought that too
many intellectual property laws will lead to a reduction of the overall creative output of a
society. The expansion of exclusive rights is also alleged to have led to the emergence of
organizations whose business model is to frivolously sue other companies.

The electronic age has seen an increase in the attempt to use software-based digital rights
management tools to restrict the copying and use of digitally based works. This can have
the effect of limiting fair use provisions of copyright law and even make the first-sale
doctrine (known in EU law as 'exhaustion of rights') moot. This would allow, in essence
the creation of a book which would disintegrate after one reading. As individuals have
proven adept at circumventing such measures in the past, many copyright holders have
also successfully lobbied for laws such as the Digital Millennium Copyright Act, which
uses criminal law to prevent any circumvention of software used to enforce digital rights

48
management systems. Equivalent provisions, to prevent circumvention of copyright
protection have existed in EU for some time, and are being expanded in, for example,
Article 6 and 7 the Copyright Directive. Other examples are Article 7 of the Software
Directive of 1991 (91/250/EEC), and the Conditional Access Directive of 1998
(98/84/EEC).

At the same time, the growth of the Internet, and particularly peer-to-peer file-sharing
networks like Kazaa and Gnutella represents a challenge to intellectual property laws.
The Recording Industry Association of America, in particular, has been on the front lines
of the fight against what it terms "piracy". The industry has had victories against some
services, including a highly publicized case against the file-sharing company Napster,
and some people have been prosecuted for sharing files in violation of copyright.
However, the increasingly decentralized nature of such networks makes legal action
against file-sharing networks more problematic.

Non-government systems of IP protection

The notion of protecting intellectual capital is much older than copyright or patent law.
There have long existed socially-enforced systems for protecting intellectual capital.
These include the ancient scholarly taboo against plagiarism, along with other informal
systems such as the code of non-infringement, used by clowns to recognise each clown's
exclusive rights to their unique style of makeup, costume and persona. In the case of 'The
Code' of the clowns, the universality of the custom lends credence to the clown's belief
that this protection is 'stronger' than that provided by trademark and copyright law.
Regardless of this, some clowns do trademark, copyright or patent "clown material",
perhaps as protection from infringement by those outside the clown community.

On a more modern topic, intellectual property law has been brought to bear on domain
names where trademark holders (in particular) have objected to third parties registering
domain names which they believe should be theirs. The domain name registries, many of
whom are not governmental organisations, have had to find a solution to this and
therefore have dispute resolution systems which operate in parallel with national laws.
The majority of the generic top level domain names (.com, .net etc.) use the ICANN
model known as the Uniform Dispute Resolution Policy (UDRP). Other registries, such
as the .uk registry Nominet UK have their own different systems. For example, Nominet's
sytem is called the Dispute Resolution Service.

Economic view
Intellectual property rights such as copyrights and patents give the holder an exclusive
right to sell, or license, the right to use that work. As such, the holder is the only seller in

49
the market for that particular item of intellectual property, and the holder is often
described as having a monopoly for this reason.

However, it may be the case that there are other items of intellectual property that are
close substitutes. For example, the holder of publishing rights for a book may be
competing with various other authors to get a book published. In such cases, economists
may find that another market form, such as oligopoly or monopolistic competition better
describes the workings of the market for the intellectual property. For this reason, many
writers prefer that intellectual property rights are described as exclusive rights rather than
monopoly rights.

If the market for the rights to some intellectual property is perfectly competitive, then the
rights to that intellectual property will generally be worthless. This is because in a
perfectly competitive market, sellers are price takers and can sell to as many people as
they like at the prevailing price in the market. It costs little or nothing to grant someone
the right to use a copyrighted work or patent, so the optimal behaviour for the seller is to
sell as many licenses as possible, whatever the price is, forcing the price towards zero.
Thus intellectual property rights, to be valuable, must give the holder some market power
(the ability to influence price) in the market for rights to use that intellectual property. An
example may be a patent covering an idea where another idea which is in the public
domain provides the same utility and no-one is likely to accidentally stumble on and use
the patented idea. If someone were to re-invent the patented idea and use it unaware a
patent exists, the patent holder can claim damages.

The case for intellectual property in economic theory is substantially different than the
case for tangible property. Consumption of tangible property is rivalrous. For example, if
one person eats an apple, no other person can eat it; if one person uses a plot of land to
build a home, that plot is unavailable for use by others. Without the right to exclude
others from tangible resources, a tragedy of the commons can result. Intellectual property
does not share this feature. For example, an indefinite number of copies can be made of a
copyrighted book without interfering with the use of the book by owners of other copies.
Therefore, the rationale for intellectual property rests on the incentive effects. Without
intellectual property rights (or subsidies), there would be no direct financial incentive to
create new inventions or works of authorship. However, as BambooWeb and Free
software demonstrate, works of authorship are written without direct financial incentives.
Moreover, many important works and inventions were created before copyright was
invented. One might argue that much more invention occurred after patents came into
existence, however, one could also argue that patents were brought into law as the power
and influence of industrial interests grew.

A more elaborated view of capital suggests that the three most common property
instruments applied provide exclusive rights to use different things: copyright covers
creative works and expressions of ideas, patent covers ideas with industrial application
and trademark covers means to uniquely identify a producer or other source of reputation.
The three types of instruments have different histories, different intent, and protect (in the
modern analysis that grants capital status to individual creativity, instructions, and social

50
repute) three different kinds of capital. Even if asserting that any of the three is property
is acceptable, asserting that all three deserve it for the same reasons is not. Yet the most
common definitions in international law confuse the three rather badly:

"Intellectual property refers to creations of the mind: inventions, literary and

artistic works, and symbols, names, images, and designs used in commerce."
(Source: )

Those who contest the idea of IP say that this assertion is propaganda for a property view
of these works or marks, and for their confusion with each other. They also prefer the
older terms individual capital, instructional capital and social capital to the more modern
"intellectual capital" which has an ambiguous status, even among believers in
neoclassical economics. It seems no one can say exactly "what" this "IP" or "IC" "is",
other than to say that they are related to each other, and that holding IC gives you the
ownership of IP, and that holding IP gives you the right to be paid. This view of political
economy does nothing to suggest either is useful to society at large, or why police or
court time should go into enforcing rights.

While widely accepted in Western culture, the status of IP is disputed in India, China and
other developing nations. Economist Lester Thurow claims that only in nations whose
culture derived from practices of Judaism, Christianity and Islam, all of which share a
vision of man as "created in God's image", is the creative power of the individual
assumed to be worthy of property protection. These nations have imposed the intellectual
property system and benefit from it - the United States and the United Kingdom are the
only two nations who consistently receive net balance of payments benefits from IP. On
the other hand, if incentives do increase investments in invention and authorship, then the
resulting inventions and creative works may produce net benefits to other nations--as
would be suggested by the so-called law of comparative advantage.

A more recent type of IP, the protection of databases, has been introduced by the EU in
1996. This is an important right as it protects the information contained in a database
against re-utilisation and extraction of a substantial part. The right, in order to come into
existence, requires a substantial investment and subsists alongside copyright in the
database structure.

The beneficiaries of IP protection have an incentive to expand their rights and benefits.
Many pool their resources to form organizations that attempt this such as the Business
Software Alliance (BSA) represents the interests of the commercial software industry
while the Recording Industry Association of America (RIAA) represents the interests of
the commercial music publishing industry. While IP law creates beneficiaries, it also
symetrically creates a class of people with reduced rights. The non-rights holder is
prevented by law from making use of IP without permission. The non-rights holder bears
a cost for this which is not easy to quantify. The cost is distributed widely and unequally
based on the need for the IP. Ironically the beneficiary organizations are a good source
for this data. The BSA reports a study "that while $80 billion in software was installed on
computers worldwide last year, only $51 billion was legally purchased" (Source:) So, the

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software purchasers cost is $51 billion. An unknown subset of non-rights holders
interested in this software have ignored the IP law and have become "software pirates."
They thus have avoided a cost of $29 billion while the rest that honor the IP law and
forgo the benefits of the IP bear a real and substantial opportunity cost that is yet
uncounted.

Related articles
Property, Real property, Personal property, Fair use, Reverse engineering, Software
patent, Legal aspects of computing, Copyleft, Free software, Open source, Intellectual
property education, Intellectual property organization, Paris Convention for the
Protection of Industrial Property, Idea, Doha Declaration, Intellectual rights, Logo
Against Intellectual Property and Copyright, Copynorm

Types of intellectual property (rights)

Copyright, Patent, Trade dress, Trademark, Trade secret, Personality rights, Industrial
design rights, Parallel importation, Geographical indications law, Integrated circuit
layout, Moral rights.

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GLOSSARY
Assign
Intellectual Property can be assigned, usually by a Deed of Assignment from one party to
another. Where a patent is filed in the US their patent office will wish to see that the
inventor has formally assigned rights to the company where the application is being made
by the company

Block Exemption
An arrangement under EU Competition Law to permit the sort of monopoly situation
which patenting and licensing arrangements often give rise to, which would otherwise be
anti-competitive under the law.

Claims
In a Patent Application, the claims describe what a technological innovation is claimed to
be able to do and which are better than what came before

Copyright
A non-registrable right applicable to creative literary, artistic, musical, recorded and
performance works. Software is included. Available for 70 years beyond the death of the
author.

Confidentiality Agreement
An agreement allowing the disclosure of confidential information usually between two
parties, for instance an inventor and a company interested in exploiting the technology.
Also known as a NDA or Non-Disclosure Agreement.

Design Right
A right applicable to the external appearance of products. Can be registered, but also
available in non-registered form.

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Esp@cenet
The European patent office's free patent search facility

Infringement
Treading on the toes of a company who already hold IP rights. Could result in legal
action on the part of the IP owner or licensee.

Licensing
The formal operation of agreeing to allow others to use your intellectual property usually
in return for a royalty.

Licensor
The organisation granting rights under a licence agreement

Licensee
The organisation receiving rights under a licence agreement

Royalty
Payments made following a licensing agreement by a licensee to the licensor in return for
being allowed to make use of the licensors IP. Royalties are often based on sales values
over a specific period.

Patent
A right granted for scientific and technical innovation of industrial application for a
maximum of twenty years.

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Patent Agent
A professional adviser who will put together a patent application deal with the UK and
other Patent offices on behalf of the client

Patent Office
The national or supranational (e.g. European Patent Office) office which registers Patents
and sometimes other IP e.g. Designs, Trademarks

Search
Before or after filing an application for a Patent, Trademark or design, you may search to
see if the technology, the name, the design is original and whether it may infringe the
rights of others.

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Bibliography
• Arthur Raphael Miller, Michael H. Davis, Intellectual Property: Patents,
Trademarks, and Copyright, West Wadsworth; 3rd edition, 2000, ISBN
0314235191 (textbook particularly covering copyright and patent law)
• Michael Perelman, Steal This Idea: Intellectual Property Rights and the
Corporate Confiscation of Creativity, Palgrave Macmillan, 2002, ISBN
0312294085, (a critical discussion of some of the social, scientific and cultural
impacts of recent intellectual property developments)
• Roger E. Schechter, John R. Thomas, Intellectual Property: The Law of
Copyrights, Patents and Trademarks, West Wadsworth, 2003, ISBN

Websites
www.upsto.gov
www.bambooweb.com
www.fitzpatricks.com

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