march 21, 2012 charles l. leeck keith h. heidmann 1

Download March 21, 2012 Charles L. Leeck Keith H. Heidmann 1

Post on 26-Mar-2015




1 download

Embed Size (px)


  • Slide 1

March 21, 2012 Charles L. Leeck Keith H. Heidmann 1 Slide 2 Big picture Better use of TTO budget. File fewer applications of better quality. How to get there? 1. Disclosure evaluation. 2. Communication between TTO and patent attorneys. 3. Structure Prosecution to Control Cost. 4. Ten Practical Examples 2 Slide 3 Cost-related issues raised by the new America Invents Act (AIA) 3 Slide 4 What is the biggest financial mistake a TTO can make? What is the invention(s)? This question is the fundamental starting point and different from the question of "what can/should we claim?" 4 Slide 5 Who is the licensee? This question is different from "what is the market?" Big market doesn't mean big royalty. What are the market forces? This question is different from "how large is the market?" 5 Slide 6 Breadth of Claims. This is a large source of unnecessary spending. Inventor has one or a few data points. Likely that more will appear? Easy to envision a genus around one species? Are broader claims supported and enabled? Would broader claims be commercially valuable (consider costs of developing a broader commercial embodiment)? Would broader claims rope in more prior art? 6 Slide 7 Breadth of Disclosure: Licensee considerations. Example: Need for human data. The point here is not what the USPTO needs but what the licensee needs. Consider Art Unit. Policing? This may be an issue if you are limited to method claims. 7 Slide 8 Moving Beyond the Disclosure. Draft IP that speaks to all potential audiences. Investigators, Examiners, CEO, In-house Attorney, Corporate Engineer/Scientist, VC/Angel, Jury. Build Brands. Institutions. Inventions. Inventors. Does it save money to file a provisional application? What about cover sheet provisional applications? 8 Slide 9 How attorneys think: The "Drive-in Window Rule": Once you tell him/her what you want, that's what you'll get. "If you don't ask for it, you won't get it." Famous last words? Talk about it first! What dealing with teenagers can teach us about business communication. Are you getting the most value from your attorney? 9 Slide 10 Talk about what you want to claim. Is it worth it to go broad? What should you cover not what can you. Short e-mail with assumptions. Simple equals less attorney time. Attorney guidelines are useful, but can't cover all situations. Inventorship disputes When can an attorney add value? 10 Slide 11 Consider Art Unit. Evaluate the need for speed. Accelerated Examination? Not cheap, but could save costs in the long run 11 Slide 12 Control foreign costs. Continuously reevaluate whether you intend to prosecute the application The average time to first action is 1.5 years. Have your plans changed? You may wish to have your attorney notify you before analysis of an Office Action. You'll save money if you reevaluate and decide not to prosecute. Are the claims now too narrow? 12 Slide 13 Is it a good idea to take allowance of a sub- set of the claims rather than continuing to prosecute the entire claim set? Depends on specific facts. The "commercial independence" rule. It would incur minimal attorney costs to file continuing application to the claims that are not yet allowed. 13 Slide 14 Utilize Interviews. Initial interviews, Office action interviews, Interviews with SPE. Provide a great deal of insight into how the Office views the case and what the best strategy would be for efficiently moving the case forward. Also provide an opportunity to educate the Examiner without time-consuming and expensive written back and forth. 14 Slide 15 Present expert declarations or other evidence early in prosecution Educating declarations. Declarations with additional data. 15 Slide 16 After-final Practice. The Office is encouraging examiners to be open to interviews after final rejection. In certain situations, an appeal (optionally including a pre-appeal brief request for review) can be more productive than continuing prosecution. 16 Slide 17 Use non-attorneys as resources throughout prosecution. This will both lower costs and increase quality. Use licensee as a resource. Use inventor(s) as a resource. 17 Slide 18 1. Issue: Incomplete disclosures that focus on the proof of the invention. Solution: Encourage inventors to supplement their initial disclosure to expand the enablement of broad claims. Even if the inventors only have raw data, they should write it up as if it were a manuscript. 18 Slide 19 2. Issue: Inventors sometimes provide written material in forms that cant be electronically manipulated. Solution: All material should be in electronic form so that it can be quickly cut, pasted, and edited for use in the application. Inventors should provide electronic copies of chemical structures whenever possible. 19 Slide 20 3. Issue: Multiple inventors, and especially multiple inventors from different institutions, can create a situation where inventors are "talking" over one another. Solution: Designate a lead inventor/institution and stick to that designation. 20 Slide 21 4. Issue: Initial inventor meetings to discuss a disclosure can vary in usefulness. Situation: When the inventor has provided useful disclosure materials (new developments, prior art papers, data, etc.) beforehand, the meeting can be more productive. 21 Slide 22 5. Issue: Inventors often continue to revise the manuscripts during the patent application drafting process, which can substantively affect the content of the application. Solution: Explain the patent drafting process to the inventor at the outset. If there are substantive changes that must be made to the manuscript, the inventor needs to point the changes out and not merely hand over a new manuscript. 22 Slide 23 6. Issue: When information in tables, figures, or sequences is incorrect, it can be difficult, if not impossible, to correct and can endanger the claims if the error is in the patentable subject matter. Solution: Inventors should make a separate check of this important data. 23 Slide 24 7. Issue: When writing an application with the goal of licensing the technology, effort should be made to have a final application that "speaks" to all potential audiences, which may require details beyond those necessary for enablement. Solution: Prepare "educational" language for some technologies and re-use the language. 24 Slide 25 8. Issue: Applications can have unnecessary extensions of time. Solution: Better, standardized system of planning and reminders and better understanding of priorities. 25 Slide 26 9. Issue: Office Action is received that cites hundreds of pages of prior art. Solution: Have attorney provide an initial review of an Office Action, ask the inventor or a licensee to pour through the hundreds of pages of prior art and see if there are additional distinctions that may be available. 26 Slide 27 10. Issue: Prosecution is becoming protracted and licensing revenue is stalling as a result, Solution: Utilize alternatives to continuing prosecution before the primary examiner: pre-appeal brief conference request, appeal, interview with SPE. 27 Slide 28 The Act will change the timing requirements for patenting and for prior art (e.g., change to a First to File system (with some modifications)) The Act will change the types of challenges that can be made against your patents TTOs may need to change and examine internal documentation procedures and disclosure strategy Slide 29 Heidmann files Leeck invents Leeck Leeck files Patent to Leeck Patent to Heidmann Time Heidmann invents Hallmark: swear behind practice Slide 30 Heidmann files Leeck invents Leeck Leeck files Patent to Leeck Patent to Heidmann Time Heidmann invents Heidmann files Hallmark: absolute novelty Slide 31 Heidmann files Leeck invents Leeck Leeck files Patent to Leeck Patent to Heidmann Time Heidmann invents Heidmann files Hallmark: publish behind practice Heidmannpublishes Heidmann files the grace period but only for the inventor Patent to Heidmann and Leeck is barredLeeck is barred Leeck may publish before Heidmann filedLeeck may publish before Heidmann filed 1 year Slide 32 Conditions for Patentability/Novelty A person shall be entitled to a patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention, EXCEPT Slide 33 Exceptions (1) Publish behind public disclosure by applicant made one year or less before the effective filing date of the claimed invention (subsequent non-applicant disclosure also exempt) (2) Derivation public disclosure by non- applicant who obtained information from applicant (limited to patent/published application if before grace period) (3) Team public disclosure made by co- owner Slide 34 Leeck invents Leeck Leeck files Baker invents Bakerpublishes Baker files Patent to Baker and Baker is 2 nd inventorBaker is 2 nd inventor Baker is 2 nd filerBaker is 2 nd filer 1 year Slide 35 Will need to think about US vs. Foreign strategy Should I file early and often or rush to disclose? Increased reliance on inexpensive cover sheet provisional applications? Slide 36 - - Ex parte reexamination - - Inter partes reexamination - - Litigation in federal court Post-issue submissions Ex parte reexamination Post grant review Business method review Inter partes review Supplemental examination Litigation in federal court Current LawAIA Slide 37 Who can file:Patentee Time to file:Any time after patent issuance Materials:Corrected or new information Action:Order reexamination if substantial new question Civil action:- Patent cannot be later held unenforceable on basis of information considered - No adverse inference Slide 38 The patent owner must provide a detailed explanation for each item submitted to demonstrate a SNQ of patentability, after which an ex parte reexamination is ordered. No interview or amendments are allowed. Proposed fees: $5,180 req


View more >