Former USPTO Director of Independnt Inventor Programs Richard "Dick" Apley's outline of key topics inventors should address with their patent representatives.

1. USPTO 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE
Richard J. Apley, Chief Patent Officer
USPTO Director, Independent Inventor Programs, Retired
How To Help
Your Patent Representative
Help You

2. Patentability Search
Why do a patentability search of the prior art to
determine the novelty of your invention?
37 CFR 1.56: Each individual associated
with the filing and prosecution of a patent
application has a duty to disclose
information material to patentability
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

3. SEARCH FOCUS
Novelty most patentable features
Patent Collection evolution of a technology
State-of-the-Art overview of current technology in a specific area
Infringement un-expired patents with claims that may bar you
from making, using, selling or importing a product
Right-to-Use or
Freedom-to-Operate
determining whether a particular action can be done
without infringing rights of others
Validity claims of a patent in question
Accelerated
Examination
search strategy and other information required by
the USPTO
Other Types of Searches
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

4. As of March 16, 2013 the USPTO is a “first inventor to file”
system. The former system of “first to invent” and its “date of
invention” questions are no longer in use by the USPTO.
.
First to File
Meeting Your Representative
What should I bring for the first visit?
What is the patent process going to cost?
How do I pick a knowledgeable/trustworthy representative?
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

5.  Inventor(s)
• Sole
• Joint
 Applicant(s)
 Assignee(s)
 Investor(s)
Who’s Who?
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

6. 1. Field of invention; intended use
2. Problems addressed and solved
3. Summary of the invention with structural details
and methods of making/using
Disclosure
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

7. 4. Specification
35 U.S.C. 112(a): “The specification shall contain a written
description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms
as to enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use the
same, and shall set forth the best mode contemplated by the
inventor of carrying out his invention.”
Disclosure, 2
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

8. 5. Claims
35 U.S.C. 112(b): “The specification shall conclude with one or
more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.”
6. Drawings; must show every feature of the
invention specified in the claims
Disclosure, 3
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

9. As the below named inventor, I hereby declare that:
My residence and post office address are as stated below next to
my name.
I believe I am the original, first and sole inventor (if only one name
is listed below) or an original, first and joint inventor (if plural names
are listed below) of the subject matter which is claimed and for which
a patent is sought on the invention entitled:
MY MILLION DOLLAR INVENTION
the specification of which is attached hereto unless the following box
is checked:
Inventor’s Oath or Declaration
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

10.  was filed on _____________ as United States Application Serial
Number or PCT International Application Number
_________________________ and was amended on
_______________ (if applicable).
The above-identified application was made or authorized to be
made by me.
I believe that I am the original inventor or an original joint inventor
of a claimed invention in the application.
I hereby acknowledge that any willful false statement made in this
declaration is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years or both.
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
Inventor’s Oath or Declaration, 2

11. I hereby declare that all statements made herein of my own
knowledge are true and that all statements made on information and
belief are believed to be true; and further that these statements were
made with the knowledge that willful false statements and the like so
made are punishable by fine or imprisonment, or both, under Section
1001 of Title 18 of the United States Code and that such willful false
statements may jeopardize the validity of the application or any patent
issued thereon.
Legal Name of Sole or First Inventor:
Signature: ___________________________ Date: _______________
Residence: Any City, State 12345
Post Office Address: 789 Any Street, Any City, State 12345
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
Inventor’s Oath or Declaration, 3

12.  First action
 Second action may be a “FINAL” rejection
 Interviews
 Amendments
 Request for Continued Examination (RCE)
 Extensions of Time
 Appeals
Examination Process
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA

13. 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
Entity Category
Contact Information
Micro Entity vs. Small Entity vs. Large Entity
or Undiscounted Entity
 Change of Address
 Phone number Email Address
 Change of “entity” status
 Your representative must be kept current

14. New matter?
Revisions?
Improvements?
What’s a Continuation in part (CIP)
application?
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
Developments

15. There are four statutory categories of invention:
 Process
 Machine
 Manufacture
 Composition of Matter
35 U.S.C. §101: Whoever invents or discovers any new
and useful process, machine, manufacture, or
composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
Patentable Inventions

16. The Courts have interpreted the categories to exclude:
 Laws of Nature
 Natural Phenomena
 Abstract Ideas
These are commonly referred to as the “judicial
exceptions.”
16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE – USPTO
Richard “Dick” Apley, Chief Patent Officer, Becker & Poliakoff PA
What’s Not Patentable

17. Becker & Poliakoff has offices in New York,
Washington, DC, throughout Florida, and near
the USPTO in Northern Virginia.
RApley@bplegal.com
1 (800) 4-PATENT
USPTO 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE
Richard J. Apley, Chief Patent Officer
USPTO Director, Independent Inventor Programs, Retired