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A Very Brief Look at Applying for Patents - How to Begin

Robert P. Cogan

Rob Cogan Continuum Law (858) 831-9000

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OVERVIEW

WhyWhatWhenSoftwareBusiness Methods and Data ProcessingKeep a Written Record

Rob Cogan Continuum Law (858) 831-9000

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WhyPatents can:

protect market share; demonstrate competence to customers; produce royalty income; identify major players in a market; provide bargaining power in transactions or

disputes; and recognize the efforts and contributions of

inventors.

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What A new, useful, and non-obvious article of manufacture,

process, or composition. Software and business methods may be patentable.

Abstract ideas may not be patented.

“Is it patentable?” is often not a useful inquiry. A better question is, “Is it cost-justified to file a patent application?” A pending patent application may provide a business advantage.

There is no “goodness of invention” test.

European patent law looks for an “inventive step.” The United States looks at the invention as a whole.

Rob Cogan Continuum Law (858) 831-9000

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When

Under the old patent law (prior to September 2011), application for a United States patent was required within one year (the “grace period) after certain events, e.g., publication or sale. The new US patent law eliminates the grace period for a number of events. The grace period has not been completely eliminated. However, filing a patent application before sale or other events will avoid mistakes that can bar the right to get a patent. There is no grace period in Europe. Japan has no grace period for the vast majority of inventions.

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Software Patents

Algorithms are not patentable. Software to be patented should be practiced on a computer and transform the input information.

Methods can relate to drug discovery, signal processing, or bioinformatics.

Claims can be drawn to a “non-transitory” machine readable medium that will perform particular methods steps when executed on a processor.

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Business Method and Data Processing Patents The recent “Bilski” decision from the

Supreme Court clarifies the law and provides guidance as to the sort of subject matter is eligible for patent protection, i.e., what is “statutory subject matter.”

The Patent Office recognizes many different categories of data processing inventions.

Rob Cogan Continuum Law (858) 831-9000

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Keep a Written Record The new patent law gives priority to the first

patent applicant to file, not to the first to invent. If the first filer derives the invention from another

person, that person may introduce evidence of derivation, be the second applicant to file, and may seek to get the patent.

It is still a very good idea to keep an invention notebook and sign and date it in ink.

A witness who understands the technology should write, “Witnessed and understood by me,” and sign and date the page in ink.

Rob Cogan Continuum Law (858) 831-9000

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THANK YOU!

ROB COGAN

Rob Cogan Continuum Law (858) 831-9000

www.continuumlaw.com