what every business manager needs to know about patents...

B EEM | patent law

W hat every business m anager needs to know about

patents and t rade secrets

Alliance for I llinois Manufacturing

I ntellectual Property ( I P) Sem inar Tuesday, March 29, 2011

Richard P. Beem Beem Patent Law Firm

[email protected]

www.BeemLaw.com

Disclaimer: This presentation is for general information only and does not constitute legal advice or form an attorney-client relationship. If you desire legal advice or representation, please contact an attorney as soon as possible.

B EEM | patent law

Intellectual Property (IP) Topics

W hat do I need to know before launching a new product to avoid infr inging on som eone else's I P/ patent r ights?

How do I ident ify our com pany's intellectual property, and how do I protect it in order to m axim ize profits and prevent others from infr inging on our r ights?

• Protect ing your product domest ically and internat ionally This part of presentat ion focuses on patents and t rade secrets

• Update on I P law and t rends

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B EEM | patent law3

OVERVIEW

I dent ifying your com pany’s intellectual

property ( I P)

I P Port folio

I P Audit ( for large port folios)

I nvent ions and launching new products

Protect ing products dom est ically and

internat ionally

Update on I P law and t rends

B EEM | patent law4

What is Intellectual Property (IP) ?

Patents

Trade secrets

Tradem arks

Copyrights

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Inventions and New Products

Focus here: patents, patentability & the

patent applicat ion process

But be aware: patent infr ingem ent

I nfr ingem ent clearance: I m precise and

expensive ( I f accused of patent

infr ingem ent , call a patent lawyer)

Stopping infr ingem ent by com pet itors:

negot iat ion and lit igat ion

Trade secrets: All patents begin life as t rade

secrets, but one m ust keep them secret !

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What is the invention?

The invent ion is the essent ial (claim ed)

elem ents, including at least one novel

elem ent

The product is generally NOT the invent ion

To ident ify the invent ion requires two things:

1. Know the new product

2. Dist inguish new product over prior art

I dent ifying the invent ion is the hardest and m ost im portant part of the patent process

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Inventions & Patents

A patent applicat ion can be filed, after proof of concept , but before perfect ing and going public

I nvolve a patent at torney or in-house counsel

A U.S. patent is the legal r ight to exclude

others from m aking, using or selling the patented invent ion in the U.S.

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Importance of Inventions & Patents

Benefits to U.S.• “ I mprove the Economic, Environmental, & Social Well-

Being of the United States”

Benefits to I nventor/ Com pany• Leveraged R&D I nvestment

• Prest ige and Recognit ion

• Technology Steering

• Enhances Recruitment & Retent ion

• Revenues

• Patent Ownership in Dealing with Cont ractors & Collaborators

Benefits to I nventors/ Com panies• Recognit ion and Money

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Inventions

Study the problem & the known

facts

I dent ify the need

Draw from other areas

Solve the problem

Proof of concept

What did they invent?

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Goldilocks School Of Patents

“ I have a concept ” ( too soon)

“ I n the last 2 years this product has really taken off! ” ( too late)

“ I ’ve tested prototype in secret & plan to go to m arket ” ( just r ight )

B EEM | patent law

The Inventive Process

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Production

& Marketing

Exclusive

20 Years

from filing

$

$

Input &

feedback

Input &

feedback

PROBLEM

=

U.S. Patent7,890,123


The Engineer’s Biggest

Patent Mistake

“All I did was solve the problem .”

“ I t can’t be patentable.”


Solut ions and problem -solving, i.e., invent ions, are highly likely to be patentable

“Minor” im provem ents often are patentable

Recognizing the problem is part of the

invent ion.

The solut ion ( invent ion) m ay seem obvious

to the inventor, but not to the ordinary

person


What is Patentable?

Any “ invent ion” that is• New (even if it is a com binat ion of old

elem ents)

• Not obvious AND

• Useful ( for anything, low threshold)

Software and im plem entat ions often are patentable

I n other words, m ost new devices, m ethods and im provem ents are patentable


Is it a Patentable Invention?

Many engineers and scient ists fail to

appreciate their own invent ions

Engineers and scient ists should not

“ filter” any invent ion disclosure: I f you

m ake any developm ent that m ight be

new and useful, subm it an invent ion

disclosure

Let Com pany, patent at torney & Patent

Office determ ine patentabilit y


Types of Patents

Ut ility Patents

• Technology protected by a U.S. and/ or foreign patent , classified broadly as chem ical, m echanical, elect r ical/ com puter including software or biotechnical and then into m ore detailed classes and subclasses.

• Provisional and Non-provisional

Design Patents

A new, original, and ornam ental design for an art icle of m anufacture.

Plant Patents ( e.g., hybrids)


US Design Patent 374,252


Utility

Patent

For exam ple:

Mechanical

Chem ical

Elect r ical

Biom edical

Software


US 6,694,853 - What is it? CLAIMSTI TLE: Apparatus for Encasing a Product

Claim 5. Looping and conveying apparatus for use with m eans adapted to issue forth an elongated linked casing, said apparatus com prising:

a support ;

an elongated tube- like horn extension having first and second end port ions and a bore extending therethrough and therebetween for slidably receiving said casing, said second end port ion having a length substant ially greater than the length of said first end port ion,

bearing means on said support having an axis of rotat ion and rotatably support ing said first end port ion of said horn extension, said second end port ion having a longitudinal axis which is substant ially st raight and which is angular ly disposed with respect to the longitudinal axis of said first end port ion and angular ly disposed with respect to said axes of rotat ion of said bearing means,

dr ive means for rotat ing said horn extension on said bearing means; and

a conveyor including a plurality of spaced apart hooks thereon and also including carrying means for moving said hooks along a predeterm ined path, said conveyor being posit ioned so that said hooks will pass adjacent said second end of said horn extension when being moved by said carrying means, whereupon said hooks will catch and carry away said casing at spaced points along the length of said casing as said casing passes out of said second end of said horn extension.


US 6,694,853 –A picture is worth a thousand words


Inventor & Assignee


Conditions for Patentability

3 5 U.S.C. § 1 0 2 : Novelty and loss of r ight to patent

A person shall be ent it led to a patent unless—

* * *

(a) the invent ion was known or used by others in this count ry, or patented or described in a printed publicat ion in this or a foreign count ry, before the invent ion thereof by the applicat ion for patent , or

(b) the invent ion was patented or described in a printed publicat ion in this or a foreign count ry or in public use or on sale in this count ry, more than one year prior to the date of the applicat ion for patent in the United States….


Conditions for Patentability

3 5 U.S.C. § 1 0 3 : Nonobvious subject m at ter

(a) A patent may not be obtained though the invent ion is not ident ically disclosed or described as set forth in sect ion 102 of this t it le, if the differences between the subject mat ter sought to be patented and the prior art are such that the subject mat ter as a whole would have been obvious at the t ime the invent ion was made to a person having ordinary skill in the art to which said subject mat ter pertains. Patentabilit y shall not be negat ived by the manner in which the invent ion was made.


Conditions for Patentability3 5 U.S.C. 1 1 2 : Specificat ion

I n addit ion, the patent applicat ion m ust include

a full and com plete detailed writ ten descript ion of the claim ed invent ion sufficient

to enable one of ordinary skill in the art to m ake, use and pract ice the claim ed invent ion.

The best m ode known to the inventor m ust be disclosed.

The specificat ion m ust conclude with one or m ore claim s dist inct ly set t ing forth that which the inventor believes to be his invent ion.


The Patent Process I nventor com pletes and subm its invent ion

disclosure to m anager ( in m ost com panies)

I n a large com pany- -patent com m it tee review:

• Determ inat ion of the com pany’s interest and

• Prior ity of the invent ion using cr iter ia, such as

available resources and com m ercial viability

Patent at torney prepares and files applicat ion

Patent at torney prosecutes applicat ion

( responding to writ ten act ions from the Patent

Office)

Allowance and issuance of patent

B EEM | patent law

Invention Patent

I nvent ion/ Docum entat ion

I nvent ion Disclosure

Claim s

Detailed Descript ion

Drawings

Prior Art

Ut ilit y Applicat ion

Patent

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Invention Disclosures

I nvent ion disclosure(s)

m ust be writ ten and subm it ted

to get started with the

patent ing process

Som e com panies use invent ion disclosure form


Invention Disclosures

I nventors

History

Status

Descript ion

Figures/ Drawings

Signatures

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Need for Details

A good invent ion disclosure ( and patent applicat ion) is detailed

What is your invent ion? (see above)

Benefits/ m arket

Big picture or sum m ary

Very detailed descript ion of invent ion

Describe even what seem s obvious to you

Drill down into further details

Should be detailed enough to tell a college

freshm an how to pract ice the invent ion

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Need for More Details

Spell out everything - the Patent Office

(exam iner) will give you credit only for what

you write down in detail and use plain English

whenever possible

Details will assist in draft ing the applicat ion

and m ay help get claim s allowed

Generally, one cannot add any new m at ter

(words or specs) after filing, so put all the

details in your disclosure from the beginning

B EEM | patent law

Description of the Invention

State the advantages of the invention over presently

known devices, systems or processes. Also

discuss/provide a background of the prior art.

Discuss the problems which the invention is

designed to solve, referring to any prior invention of

a similar nature with which you may be familiar.

Identify alternatives (welded, bolted or riveted).

List all known and other possible uses for the

invention.

List the features of the invention that are believed to

be novel.

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US Pat 6,708,821 – DrawingsCollated Fasteners

I dent ify claim ed features

with reference num erals.

Show steps

Consider exploded views,

perspect ives, cross-sect ions,

close-ups

Black and white line

drawings (not photos or 3-D

im ages) .

Mult iple figures m ay be on a single sheet .


Good Records Make Good Evidence

Maintaining technical

notebooks• Signing and dat ing your work

• Having two witnesses sign and

date your notebook ent r ies

• “Read and understood by _______

[ legible signature] , dated ______.”


Recordkeeping

I deas for using “Elect ronic

notebooks”• E-m ail repository for disclosures

• Read by m anagers

• Back-up storage

• Elect ronic signatures

• HTML (data/ drawings)

at tachm ents


Steps followed by Patent Attorney

In Preparing Patent Application

Review the invent ion disclosure and obtain addit ional details

Search and analyze prior art

Obtain patent drawings

Draft claim s

Write specificat ion


How a Patent Attorney

Completes a Patent Application

Draft background

Draft detailed descript ion

Draft sum m ary of invent ion and abst ract

Obtain and incorporate inventor com m ents

Obtain inventor’s signature

File the patent applicat ion

Disclose prior art to the Patent Office


Sense of Urgency Race to the Patent Office to beat out

com pet itors

• US has “ first to invent ” system

• But “ first to file” presumpt ively wins

Statutory bars:

• Most foreign count r ies require “absolute novelty”

• I n US, 1st public disclosure or commercial act ivity starts clock on one year “grace period”

• Key date ( for US and foreign r ights) is filing date of US patent applicat ion

• Foreign ut ilit y applicat ions usually can claim benefit of US filing date if filed within one year after US filing


Confident ialit y: Keep your invent ion secret unt il a

U.S. patent applicat ion is filed

• Don’t publish, offer, sell, or publicly use the

invent ion

• Don’t talk to cont ractors

• Don’t talk at conferences or t rade shows

• Unt il your patent applicat ion is on file

Require signed confident ialit y agreem ent (NDA)

before m aking any disclosure to outsiders

Tim eliness: File applicat ion as soon as your

invent ion is ready for patent ing

Confidentiality (Trade Secrets)

and Timeliness


Collaboration and Agreements

The unintended joint venture:

Dangers and rewards of working

with “outsiders” (vendors,

custom ers, tech specialists)

Confident iality & Non-disclosure

Agreem ents

Assignm ent and Ownership of I P

Licensing


Domestic and international

USPTO– usually 1st prior ity

I nternat ional Patent Applicat ions (PCT)

Foreign Patents (m ost count r ies)

Trilateral: US, Japan (JPO) , Europe(EPO)

I P5: Tri + Korea (KI PO) , China (SI PO)

( I P5 offices: 90% of all pat apps worldwide)

* Statutory bars and deadlines m ay apply!


Update on IP/patent law & trends

US Patent & TM Office, Suprem e Court ,

Congress are am ong m any authorit ies

act ive in intellectual property ( I P) law

Patent applicat ion filings cont inue to

increase in US and worldwide

Protect ing products dom est ically and

internat ionally with patents

B EEM | patent law

Thank You!

Richard P. Beem

Beem Patent Law Firm

5 3 W . Jackson Blvd.

Suite 1 3 5 2

Chicago, I L 6 0 6 0 4

3 1 2 - 2 0 1 - 0 0 1 1

Richard@Beem Law .com

w w w .Beem Law .com

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Disclaimer: This presentation is for general information only and does not constitute legal advice or form an attorney-client relationship. If you desire legal advice or representation,

please contact an attorney as soon as possible.

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