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Email: scglade@lbl.gov Phone: 510-486-6503 Date: October 4, 2012 Interviewed By: Andrew Collier, Christian Di Sanzo Source of Interviewee: Tony Ho > Larry Edelman Referrals from Interviewee: Bill Shelander, LBNL contact for C2M Interview Keywords: Provisional Patent Application, Non-Provisional Patent Application, and Utility Patent Application Executive Summary (1-3 Sentences): Stephen provided a helpful summary of the US Patent Process. He also helped us understand what is covered under our provisional patent application as well as what steps are required to pursue a longer-term utility patent application. Interview Details: Overview of patent process in the US • Two types of applications: Provisional Patent Applications (PPA) and Non-Provisional Patent Applications (NPA) [also known was Utility Applications] • Provisional Patent Application – 1 year term o Will never mature into a patent...no IP rights per se o A PPA is not formally examined by the US Patent and Framework Office o We have “priority” for everything included under the PPA, meaning that we have the first right to a NPA/Utility patent, as long as its filed within the one year timeframe o Note: it is okay to discuss any details of the PPA in interviews • Within that year, an NPA/Utility Application can be filed o Formally examined by US Patent and Framework Office o Specific format/requirements which requires legalese o Mainfocusistheclaims–i.e.,scopeandbreadthofIPbeingclaimed Comprises meat of negotiation with US Patent and Framework Office Lawyers explain/negotiate interpretation of claims Patent application examined 1-3 years after filing; if accepted, then have IP rights o We can add things that are not included under the PPA to the NPA/Utility application, but we would not have priority on those things Licensing / Assignment of Rights • It is possible to sell a PPA o It would be as assignment of the provisional application or a license in which the licensee has most/all of the rights • It is also possible to sell an NPA o Basically a sale of the patent...exclusive license agreement 47PDF Image | ElectraTherm Commissions 10 Green Machines
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