What You Didn’t Know That You Didn’t Know About Patents Eric Myers em@gandmpatent.com

Patents: In the news Just last week…

What we’ll cover What is a patent? Why would you want a patent? What do you need to do to get a patent? How do you avoid infringement? What’s new in the patent world?

What is a patent? An exclusive right for an inventor Constitution: “[t]o promote the progress of … useful arts …” “Exclusive” right: The right to exclude others from doing something Making, using, selling, offering to sell Limited time A trade-off for disclosing your invention

What is a patent NOT? E = m c2 NOT the right to do something Example: need FDA approval for food or drugs NOT protection for an abstract idea, law of nature, or natural phenomenon E = m c2 PV = nRT

Why would you want a patent? Stop other people from using the invention (competitive advantage) Get other people to pay for using the invention (licensing) Sell the patent to someone else Impress other people (investors, customers) Marking your product

Why would you want a patent? Due diligence may be important for selling or buying patents or patent applications Check for issues Validity Scope of coverage Often in context of acquisition ent Pat

Three types of patents Utility: what most people think of, our focus “useful process, machine, manufacture, or composition of matter” Design “ornamental design for an article of manufacture” Plant “asexually reproduce[d] … variety of plant”

Three types of patents: Duration Utility and Plant: 20 years from first U.S. filing Design: 15 years from grant (new applications)

How is a patent different from a copyright? Copyright protects “original works of authorship” fixed in a tangible form Examples: books, recorded music, plays, paintings, sculptures, photographs, movies, architecture ©

How is a patent different from a copyright? Patent (Utility) Duration: 20 years from effective U.S. filing (possible adjustments or limitations) Examination process for novelty, nonobviousness, etc. Patents examined by U.S. Patent and Trademark Office Copyright Duration: depends on who made it and for whom (e.g.: life of author + 70 years) Applicable once fixed in tangible form; registration to go after infringer Copyright Office is part of Library of Congress

How is a patent different from a trademark? A trademark is word, phrase, symbol, or design that identifies and distinguishes a commercial source Examples: brand names, slogans, logos

How is a patent different from a trademark? Patent (Utility) Federal protection Duration: 20 years from effective U.S. filing (possible adjustments or limitations) Trademark Mix of federal and state protection laws Duration: as long as it’s in use in commerce TM

Are there other types of intellectual property? Trade Secrets Plant Variety Protection “sexually reproduced or tuber propagated plant variety” In other countries: Utility Models Geographical Indications

What do you need to do to get a patent? Invent something! Must be new Cannot be obvious Describe it Enable people to use it Apply

Invent something Novel (New) Define invention in a way that does not encompass anything old Most novelty problems arise from description of something older (“prior art”)

Invent something Novel (New) For lack of novelty over prior art: All elements need to be there Must be arranged in the same way Same terminology not required

Invent something Not Obvious Yes, this is a legal term – but subject to a lot of developed law Factual backdrop required Determine scope and content of prior art Ascertain differences between prior art and invention Resolve level of “ordinary skill in the art”

Invent something Not Obvious For the differences Must have motivation to modify Must have reasonable expectation of success Can involve multiple pieces of prior art Cannot rely on hindsight

Invent something Not Obvious Opportunity to overcome basic obviousness case with “secondary considerations” Examples: unexpected results, commercial success, long-felt need

Describe invention Someone in the field should understand that you had the invention in your possession. For example: Describe working examples Include drawings Mention relevant identifying characteristics

Enable people to make and use the invention Someone in the field should be able to make and use it Should not require undue experimentation

Applying for a patent Determine who will do it Draft application On your own, or with attorney/agent? If application is in the name of a company, must be an attorney/agent Draft application Submit to USPTO Consider applying in other countries, too

Applying for a patent: Examination Pendency Backlog: 546,000 unexamined applications (down from 720,000 in 2011) 15-16 months on average until examination Office actions Rejections and other types Non-final versus final

Applying for a patent: Examination and Appeal Interviews In-person, phone, video conference Opportunity to advance examination Appeal Within the Patent Office Beyond the Patent Office

How do I avoid infringing someone else’s patent? Identify patents Patents/applications you already know of Searching for other patents/applications Determine what the patent covers Attorney could help Compare with your product or process to the coverage of the patent

What’s new in the patent world? Patentable subject matter Software, business methods Diagnosis methods Challenges to validity of others’ patents though Patent Office procedures Patent “Exhaustion” and International Sale

Wrap-up Patents: an exclusive IP right Patent application process Avoiding infringement Patent law continues to evolve

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