intellectual property basics thad mcmurray intellectual property manager

Intellectual Intellectual PropertyPropertyBasicsBasics

Thad McMurrayThad McMurrayIntellectual Property ManagerIntellectual Property Manager

Thad McMurray, Intellectual Property ManagerThad McMurray, Intellectual Property Manager© 2007, Research Foundation of State University of New York, All Rights

Reserved

Types of ProtectionPatent

Design

Utility

Copyright

Trademark / Servicemark

Trade Secret/Know How

What is “Intellectual Property”?What is “Intellectual Property”?

SM

TM


Reserved

IP ProtectionIP Protection

Copyrights Life + 70 years OR 95/120 Life + 70 years OR 95/120 yearsyears

Trademarks Potentially ForeverPotentially Forever

Trade Secrets Potentially ForeverPotentially Forever

Patent 20 years20 years

First steps: Knowledgeable ResearcherKnowledgeable Researcher

Laboratory NotebooksLaboratory Notebooks

Patent DisclosuresPatent Disclosures


Reserved

CopyrightCopyright

A right granted by U.S. Federal lawOriginal expression found in works of authorship fixed in tangible medium

Section 102(a): literary works (including computer programs); musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and audiovisual works; and,sound recordings and architectural works.

Exclusive Rights:1. Reproduction

2. Preparation of derivative works3. Distribution via public sale, rental, lease or lending4. Public performance or display of works including a literary, musical, dramatic, artistic or digital work

Arises automatically the moment an original work of authorship is fixed in a tangible medium of expression

Last 70 years after author’s death, or 95/120 years


Reserved


Bound notebookBound notebook

Sequentially numbered pagesSequentially numbered pages

Record in inkRecord in ink

Cross out, don’t erase (mistakes only)Cross out, don’t erase (mistakes only)

No blank space: lines to bottomNo blank space: lines to bottom

Explain what you feel is novelExplain what you feel is novel

Cross reference (even e-records)Cross reference (even e-records)

Securely affix insertsSecurely affix inserts (sign and date across edge)(sign and date across edge)

Sign and date entries, changes, correctionsSign and date entries, changes, corrections

SecureSecure


Reserved

What should be included?

Instruments used

Experimental data

Concepts and ideas

Procedures and protocols

Formulas and calculations

Content/date of outside collaborations

Raw data/results (both favorable and unfavorable)

Results of brainstorming sessions (identify contributors of novel ideas)



Reserved

Identify the project for each entryIdentify the project for each entry

Write complete descriptions, recording all Write complete descriptions, recording all the “little details”:the “little details”:

What was doneWhat was doneWho did itWho did itWhy it was doneWhy it was doneWho suggested itWho suggested itWhat were the resultsWhat were the resultsWhat conclusions can be drawnWhat conclusions can be drawn


Invention DisclosuresInvention Disclosures

First line of protecting your IP


Reserved

Disclosure– Protecting IP - Any public disclosure before filing

appropriate intellectual property protection will adversely affect patenting or other forms of protection.

– Give yourself time - initial disclosure assessment can take several months.

• The sooner you submit your disclosure, the easier to fully review invention and secure any intellectual property rights.

• Alert Corporate Counsel or appropriate management of any needs for early disclosure.

– ALWAYS USE an NDA if you must disclose potential IP subject matter.


Reserved

Disclosure (con’d)– Evaluation - When you submit a disclosure the

company evaluates it for commercial potential. • This evaluation includes market and patentability

assessments.

– Not all inventions are patentable - For an invention to be patented, it must meet the legal standards of novelty, non-obviousness, and usefulness, as outlined by the USPTO.

• An assessment is made for each disclosure. You may be asked to review certain patents and publications to help determine if they impact the patentability of your disclosure.


Reserved

Disclosure (con’d)– Insufficient commercial potential - It is important to

understand that even though a discovery may be patentable, the commercial potential may not justify the patent investment.

• There are significant costs associated with patenting. • This is an important consideration in the disclosure

assessment process.

– Copyright - Copyright is another form of intellectual property protection.

• Although a patent application may not be appropriate for certain types of technologies, copyright may be. Computer software is often copyrighted rather than patented.

What is Patentable?What is Patentable?


Reserved

Patentable

Compositions of matter

Articles of manufacture

Processes or methods

Computer programs

Business methods

Designs

Plants

Improvements on above

What is Patentable?What is Patentable?

Non-Patentable

Data

Abstract ideas

Laws of nature

Natural phenomenon

Naturally occurring organisms

"Anything Under the Sun that is Made by Man" (U.S. Supreme Court, 1980)

If it is the result of human intervention = patentable subject matterIf it is the result of human intervention = patentable subject matter


Reserved

Useful Useful

Novel Novel

NonobviousNonobvious

Enablement & Written DescriptionEnablement & Written Description

Requirements for a PatentRequirements for a Patent


Reserved

Inventors should not do any of the following without determining whether patent protection should be sought for the technology:

Display or discuss the invention at a seminar, lecture, workshop, poster presentation or trade show open to the public, or

Disclose the invention without a signed Confidentiality (or Non-Disclosure) Agreement, or

Disclose the invention on inventor’s or University’s web site, or

Submit an article to a journal for publication, or

Publish a manuscript, letter, note or chapter in format available to the public, or

Offer for sale or sell the invention, or

Distribute samples of the product to customers or collaborator, or

Consumer or market test a new product, or

Distribute advertising brochures about the invention, or

Demonstrate a prototype to a public group.

Public Use/Offer for SalePublic Use/Offer for Sale


Reserved

NoveltyNovelty

Published or patented anywhere before invented• Journal, Poster presentation, Non-confidential grant

submission, Abstract, Website, Newspaper, Magazine, TV, etc.

Known or used by others in the U.S.• Thesis defense• Presentation

Offer for sale or used publicly in U.S. more than 1 year before application filed

Patent or described in a printed publication more than 1 year before application filed

Another files an application before your invention date

All ElementsAll Elements


Reserved

Non-ObviousnessNon-ObviousnessSingle reference or combination of two or

more

Review scope and content of the art

Look at a person of ordinary skill in the field

Contrast art against the “claimed” invention


Reserved

Non-ObviousnessNon-ObviousnessArguments against obviousness:

Long Felt But Unsolved NeedsFailure of OthersPrior Art Teaches AwayCommercial successAll elements of the claimed invention are not taught or

suggested by the reference or combination of references

Proposed modification of the reference renders the reference inoperable***Include in application comparison data with state

of the art and/or failure data


Reserved

Non-ObviousnessNon-ObviousnessMore Arguments against obviousness:

There is no reasonable expectation of successThere is no teaching suggestion, or motivation to combine the

referencesCombination of elements is not obviousThe prior art does not work, or does not work as well as the

inventionHistory of failed attemptsTwo or more changes away from the cited reference may/should

be considered undue experimentationSimplification of a process may constitute a patentable inventionSuccess of invention not obvious even if it is “obvious to try” – lack

of complexity of invention is not evidence of obviousness.


Reserved

Enablement and Enablement and Written DescriptionWritten Description

“It is not the reward for the search, but the compensation for its successful conclusion,” Brenner court

EnablementSpecification: enough detail to enable one to practice your claimed invention(w/o undue experimentation)

Written DescriptionSpecification: evidence that applicant was in possession of what is claimed

Constructive ReductionAble to describe the invention in such

detail that it would enable one skilled in the art to make and use that which is disclosed

Actual ReductionBuild a working inventionAn experimental machine that

does not demonstrate utility is insufficient

Inventorship, Ownership, Cost & ValueInventorship, Ownership, Cost & Value

It is all about making money

The “quid pro quo” of the patent systemEarly disclosure of technical information for a “patent monopoly”, i.e., exclusive rights

Companies may use patents to Show value. Patents are treated as assets

Sell, trade or use as financial vehicles, treated as a commodity.

For product protection from others use

As negotiating leverage in their questionable infringement on others patents

MotivationMotivation


Reserved

InventorshipInventorship

An inventor is . . .

A person who “conceived” or made a material contribution to the conception of the invention or at least some part of the claimed subject matter

Inventorship is a legal determination

An inventor is not. . .

One who merely suggests an area of research or a desired result

(or simply identifies a problem);

One who only follows the instructions of the person who first

conceived the solution;

Co-authors and investigators listed for an academic paper are not

necessarily “inventors”

Supervisors are not necessarily inventors


Reserved

OwnershipOwnershipIn the U.S. ownership initially rests with inventor!

Assignment:Transfer of ownership

Most universities and companies have statutes or company

rules that require assignment


Reserved

When do I have an invention?When do I have an invention?

You might have an invention if . . .

No one has solved the same problem or addressed the same need . . .

In the same way . . .

To achieve the same result

Two elements of an invention

Mental – constructive reduction

Physical – actual reduction


Reserved

CostsCosts

US ApplicationPatentability Search and Opinion: 1.5-5KPatent Preparation: 4-20K

Fees: 500-1100Patent Prosecution: 4-15KAllowance Fees: 700-1500Maintenance Fees: 500- 4,000

PCT and Foreign Filing: 2K

Foreign National Stage Filings: 3-6K

Translation Costs: 5-10K

Prosecution and Annuities: 4-15K


Reserved

It’s a Patent, But Can You Commercialize It?– Only 2 – 4 % of all patents are ever commercialized– Even in Industry only as high as 10%

It Gets Commercialized, But Does It Get to the Market?– Funding– Distribution– Competition

Does It Make Any $?– For the company?– For investors?

Patent ValuePatent Value

EndEnd

Thanks to UB-STOR for providing this material

What is a PatentWhat is a Patent


Reserved

Term is 20 years from filing of application

(Everything before June 1995 – choice of which ever is longer 17 yrs from issue or 20 yrs from filing)

Purpose of a Patent?Purpose of a Patent?

Basic Principle:

Inventor – Discloses invention to public in sufficient detail to show something new and significantly different

Government – Grants inventor right to exclude use by others for some period

Patent Gives Right to EXCLUDEEXCLUDEPrevents others from making, using, selling, offering for sale, or importing

Path of PatentingPath of Patenting


Reserved

Prepare the application – interview and discussion with patent attorney– Draft claims that are broad but narrow enough to overcome any

prior artFile the ApplicationProsecution – dialogue with the patent office

– Examiner will reject application based on prior art that was found– Applicants supply reasons why the claims are patentable in spite

of the cited artOR

– Amend the claimsAllowance and Issuance

Patent PathPatent Path


Reserved

Prosecution Flow ChartProsecution Flow ChartPatent application filed

Examination by USPTO

Patent issues Rejection of Application

2nd examination by USPTO

Patent issues Final rejection

Applicant’s reply

Patent issues

Reverse rejection

Appeal to BPAI

Appeal in District Court or

Fed Circuit

Affirm rejection

Denial

Appeal of Final Rejection

Board of Patent Appeals and Interferences


Reserved

Invent Prepare Patent Application (interview and discussion with patent attorney) (draft broad claims that do not read on prior art)

File Patent Application with USPTO (Provisional or Non-provisional)

Patent Prosecution Application is Published (Negotiation with USPTO) (18 Months after Filing)

Patent Issues (Patent Exclusivity Starts)

3, 7 and 11 Year USPTO Patent expires 20 years Maintenance Fees from filing date

Patenting Process in the U.S.Patenting Process in the U.S.


Reserved

TimelineTimeline

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Inve

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Non

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Paten

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Con

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Dec

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T (fo

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Filin

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File

a U

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Provi

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Paten

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Applic

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1 year

Loss of foreign rights

1 year


Reserved

Prior ArtPrior Art

Standard against which you have to establish patentability of your invention

Disclosed in publications;

Known to others before you;

Patented by others before you;

Offered for sale or in use by others;

Published or publicly used or disclosed by you more than one year ago


Reserved

Duty to DiscloseDuty to Disclose

37 C.F.R. § 1.56(a) imposes a duty on patent prosecutors to disclose information material to patentability. (IDS)– The duty extends to inventors, legal assigns, patent

attorneys and agents, staff, and anyone involved in the preparation and prosecution of the patent application.

– Need to be sure to pass along references material to patentability to outside counsel


Reserved

Public DisclosuresPublic Disclosures

Why are these important?

First to invent – One year grace period to

file patent application

First to file – Patent application must be

filed before ANY public disclosure

Abstracts

Manuscripts

Websites

Oral presentations

Poster presentations

Theses and Dissertations

Grant Awards

Offers for sale

Public Use


Reserved

Provisional PatentsProvisional Patents

One year lifespan

Not examined by the USPTO

Do not trigger the 20-year patent term

Establish an early filing date


Reserved

The Patent Cooperation Treaty (PCT) is an international agreement that created a system for filing patent applications internationally without having to initially file an application in the patent office of each selected country.

Patent Cooperation Treaty (PCT)Patent Cooperation Treaty (PCT)


Reserved

Invent

File PCT International Patent Application With USPTO (Often relying on Provisional filing date) Prior Art Search Application is Publishedis Carried Out (18 Months after Filing) National Stage Filing and Prosecution(30 Months After Priority Date)

Patenting Process under the PCTPatenting Process under the PCT

Country 1 Prosecution

Country 1 Patent Issues








Reserved

PCT filing is key to securing “global” patent coverage

Benefits of Using PCTBenefits of Using PCT

PCT filing makes technology

more attractive and valuable

PCT filing reduces overall patenting costs


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USPTO: http://www.uspto.govhttp://portal.uspto.gov/external/portal/pair

European Patent Office: http://ep.espacenet.com/

www.wipo.int

www.pat2pdf.com

http://www.google.com/patents

The Invention Blog: http://nip.blogs.com/

Patently-O: http://www.patentlyo.com/patent/

Just a Patent Examiner: http://just-n-examiner.livejournal.com/

PHOSITA: http://www.okpatents.com/phosita/

Patent the Progress: http://www.promotetheprogress.com/

PDFs of Patent: http://www.pat2pdf.org/

Useful Patent SitesUseful Patent Sites

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