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PATENTSWhat You Need To Know

Robert Benson

Office of Technology Development

Harvard University

Brandeis University – October 20, 2005

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Patents – what you need to know

• What a patent is and what it isn’t

• What legal rights they provide

• Why they are important

• What makes an invention patentable

• What you need to know to protect your patent rights

• Patenting Process

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A patent is a legal document that, for a certain time, provides the owner the right to prevent others from making, using, selling or importing the claimed invention

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Claim 1 of Lieber US Patent 6,781,166

An article comprising:

An electrical crossbar array comprising at least two crossed wires, at least one of which is a nanoscopic wire, wherein the at least two wires are in contact with each other.

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A patent is not a monopoly

• It is the right to exclude others from the claimed invention

• Other dominating patents may prevent you from practicing your own invention – for example carbon nanotubes are patented by others

• Patents don’t last forever – typically (with exceptions) they last 20 years from the filing date of the first regular patent filing

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Patents are important to companies because they limit competition for a time and thereby encourage investment to develop the invention into a marketable product

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Example: Nantero

A Woburn startup and exclusive licensee of this Lieber patent that is developing a non-

volatile universal computer memory based on carbon nanotubes

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The Nantero example shows why it is so important for universities to patent their inventions – it would have been unlikely that Nantero would have started without the licensed Lieber patent offering security to the initial investors

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What makes an invention patentable?

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The claimed invention must:

a) be within a certain class of invention

b) be novel & unobvious in view of prior art

c) be described and enabled by the specification – you must teach the world how to make and use your invention, including the best way you know

d) the invention must have a practical use

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Patentable Classes of Invention

a) Compositions of Matter

b) Articles of manufacture

c) Methods

d) Improvements to the above

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Prior Art

The totality of what is publicly known the day before you file your patent application

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Practically, this means:

• Journal articles – published or on web

• Published patents and patent applications

• Abstracts and Poster Sessions – published, on web or presented

• Talks at public meetings

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Novelty: Prior art describes your claimed invention

Obviousness: prior art suggests your invention and its likely success

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Written Description, Enablement and Best Mode

The patent specification must:

a) describe what the invention is - written description

b) how to make and to use the invention – enablement

c) including the best ways you know - best mode

The broader the enablement the broader the

claims

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Claim 1 of Lieber US Patent6,781,166

An article comprising:

An electrical crossbar array comprising at least two crossed wires, at least one of which is a nanoscopic wire, wherein the at least two wires are in contact with each other.

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“While nanotubes, and in particular carbon

nanotubes, are preferred for use in the invention, any nanoscopic-scale

wires can be used, including nanoscopic

wires such as nanorods, nanowires, organic and

inorganic conductive and semiconducting polymers,

and the like.”

Written Description, Enablement and Best Mode

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Utility Requirement

The claimed invention must have a practical, immediate and specific utility

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In Re Fisher

Just decided by the patent appeals court, ESTs, Expressed Sequence Tags, generally

do not have a patentable utility

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Prior art in more detail

For Universities prior art from other parties and from their own disclosures before filing are the biggest obstacles

to getting strong patents

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Provisional Patent Application Serial No.

60/142,216, filed Jul. 2, 1999.

Rueckes, Thomas et al., "Carbon Nanotube-Based Nonvolatile Random Access Memory for Molecular Computing," Jul. 7, 2000, Science, vol. 289, pp. 94-97.

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Effect of your own public disclosure of your invention before filing a patent application is different in the US and most foreign countries

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In the US –a one year grace period allows you to file a year after the disclosure and your public disclosures will not be considered prior art

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In most foreign jurisdictions – If you fail to file prior to disclosure, you lose the right to get a patent.

This includes Europe, China, and Korea

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Lesson 1:

Report your inventions early so they can be filed before disclosure

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When should you report your invention?

• Ideal: As soon as think you have discovered something important (even if more experiments may need to be done)

• Adequate: At same time manuscript is sent to journal or abstract is sent to conference organizers

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When should you report your invention?

• Possible: Day before disclosure if invention is in written form (ROI or manuscript)

• Minimal: Before a year has passed since public disclosure – can get valuable US rights

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Secret prior art:

Other parties’ patent applications claiming same invention as your invention

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What happens if two parties file patent applications on the same invention?

Only one gets a patent, the other doesn’t.

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In most foreign jurisdictions:the party that files first wins

“first-to-file”

includes Europe, China, Japan

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In the US an interference proceeding at the US Patent Office determines who was the first inventor

“first-to-invent”

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How to protect your patent rights: #1 report your inventions as early as possible so they can

be filed as early as possible to beat out competitors in first-to-file countries

#2 Document your work in bound notebooks, describe your work and its significance and date the pages so you can win an interference in the US

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Patenting Process

• File provisional patent application in USPTO

• At one year: file PCT International Patent Application which gives right to file in all industrial countries later (except Taiwan)

• At two and one half years: file in individual patent offices around the world: US, Europe, China etc.

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Typical Patenting Path

File Initial Patent

Application

File National Phase

Application

(US, Korea, Europe, etc.)

0 yrs

1 yr

File PCT International Application

2 ½ yrsProsecution

Patents!

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Types of Patent applications• US Provisional application

• Regular or Utility US application

• PCT International Patent Application

• National Phase filings – regular filings in foreign patent offices

• European patent application – EU wide patent application – still requires eventually filing in individual EU countries

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Reconciling the fundamental academic value of open communications and public disclosure of advances with the global patent system

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Initial Discovery

File first Patent

Application

Disclose Initial Discovery

Further Discovery

File 2nd Patent

Application adding further

discovery

Disclose Further

Discovery

More Discovery

File PCT International Application

Combining all discoveries

It can be done: First Year of the Patenting Process

0 yrs

1 yr

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