Management Guide to Intellectual Property for State Departments of Transportation (2015)

Below is the uncorrected machine-read text of this chapter, intended to provide our own search engines and external engines with highly rich, chapter-representative searchable text of each book. Because it is UNCORRECTED material, please consider the following text as a useful but insufficient proxy for the authoritative book pages.

114 A P P E N D I X A Patent Search and Information Resources Types of Patent Applications Provisional Application A provisional application for patent is iled in the United States Patent and Trademark Ofice (USPTO) under 35 U.S.C. § 111(b). It allows iling without a formal patent claim, oath, or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective iling date in a later iled non-provisional patent application (discussed next) iled under 35 U.S.C. § 111(a). It also allows the term “Patent Pending” to be applied in connection with the description of the invention. A provisional application has a pendency lasting 12 months from the date the provisional application is iled. The 12-month pendency period cannot be extended. Therefore, an applicant who iles a provisional application must ile a corresponding non-provisional application within 12 months in order to beneit from the earlier iling of the provisional application. In accordance with 35 U.S.C. § 119(e), the corresponding non-provisional application must contain or be amended to contain a speciic reference to the provisional application. Non-provisional Application This application is examined by a patent examiner and may be issued as a patent if all the requirements for patentability are met. A non-provisional utility patent application must be submitted in English or be accompanied by a translation in English, a statement that the translation is accurate, and have payment of the fee set forth in 37 CFR § 1.17(i). If an applicant iles a non-provisional utility application in a language other than English without the translation, statement, or fee, the applicant will be given a notice and time period to submit the missing item(s). A non-provisional utility patent application must include a speciication, including a description and a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed iling, search, and examination fees.

Patent Search and Information Resources 115 Speciication (with at least one claim). Drawings (when necessary). Executed Oath or Declaration. Nucleotide and/or Amino Acid Sequence Listing (when necessary). Large Tables or Computer Listings (when necessary). Divisional Application For some non-provisional application ilings, the patent examiner may consider that the current application has more than one distinct or independent invention. In this case the inventor may elect which claims to prosecute under the current application and which would be subdivided into additional divisional applications. The divisional applications generally have the same speciication as the parent applications, claim the priority date of the parent, but have a different set of claims (Legal Information Institute, 2013). Continuation Application After iling a non-provisional application, the inventor may wish to add more or different claims to the native application. The continuation application provides the mechanism to add this additional information. The continuation uses the same speciication as the native application, claims the priority date of the parent, and generally names at least one of the same inventors as in the parent. This type of application is often iled when a patent examiner has allowed some but rejected other claims in an application, or where an applicant feels that he or she has not exhausted all useful ways of claiming different embodiments of the invention during the prosecution of the native application (Legal Information Institute, 2013). “Continuation-in-Part” Application A continuation-in-part application provides substantially the same speciication as the non- provisional application but has disclosed additional subject matter that was not included in the non-provisional application. For a continuation-in-part application, claims to subject matter that was also disclosed in the native are entitled to the native’s priority date, while claims to the additional subject matter are only entitled to the iling date of the continuation-in-part application. Continuation-in-part applications are generally used to claim enhancements that were developed after the non-provisional application was iled (Legal Information Institute, 2013). A complete non-provisional utility patent application should contain the elements listed below, arranged in the order shown: Utility Patent Application Transmittal Form or Transmittal Letter. Appropriate Fees. Application Data Sheet (see 37 CFR § 1.76).

116 Management Guide to Intellectual Property for State Departments of Transportation Abandonment Application Patent applications may become “abandoned” for a number of reasons (e.g., because the appli- cant has failed to respond to a required action or missed a deadline; failed to ile required docu- mentation; or provided an incomplete response to a request for information or documentation). When this occurs, the applicant may apply to revive, reinstate, or otherwise continue the patent application. The speciic forms and process by which an applicant petitions for reinstatement will vary according to the reason the original application was abandoned. Details on petitioning to revive or reinstate abandoned patent applications are available online at www.uspto.gov. Internet Resources United States Patent and Trademark Ofice http://www.uspto.gov A clearinghouse for critical information related to U.S. Patents and Trademarks. Includes a search tool to review U.S.-granted patents and patent applications. Google Patent Search Engine http://www.google.com/patents World Intellectual Property Organization http://www.wipo.org A clearinghouse of information regarding global intellectual property (IP), policy, and challenges. World Intellectual Property Organization IP Search Tool http://www.wipo.int/sme/en Espacenet http://worldwide.espacenet.com/advancedSearch?locale=en_EP Provides access to more than 80 million patent documents worldwide. A service of the European Patent Ofice. MicroPatent Patent and Trademark Information http://www.micropat.com Global Patent and Innovation Quality http://www.bustpatents.com