Now you’ve got a product… what next? Next steps in IP

What are options for your next step? Commercialize it yourself License IP to entity Do nothing Further research and development alone Further research and development with entity

Things you “own” Idea and implemention for how to solve a problem “Know how” for your product Name for product Logo design Slide presentations about product Brochure/handouts about product

Possible Kinds of IP protection Patents and trade secrets Idea and implemention for how to solve a problem “know how” for your product Trademarks Name for product Logo design Copyrights Logo design Slide presentations about product Brochure/handouts about product

To obtain IP protection Patents File patent application with U.S. Patent and Trademark Office (USPTO) and get patent application granted. Trade Secret Keep information secret with guidelines for preserving secrecy. Trademarks File trademark application with USPTO and get application granted. Copyrights Embody information in a tangible form (e.g., brochure, slides, book, video, music, logo). Copyright registration also available. IP protection is generally on a per-country basis

Benefits of IP ownership Exclude others from use of the IP License use of the IP to others Prevent importation of products that use the IP Get damages (and sometimes attorneys fees) from others that use the IP without a license

Do you need a patent? Alternatives trade secrets Good for things that can be kept secret for longer than the typical life of a patent (~17 yrs) first to market, market maker with no patent protection Good for goods with a short lifespan (less than the typical time to get a patent, currently about 3-5yrs) that are easy to copy

Should you pursue a patent? Considerations How strong are the grounds for IP protection? How easy is it to copy the IP? What is the lifespan of the IP? Who are your competitors? What is the time to market? What is your budget for obtaining protection? What is your budget for enforcing IP rights? Ultimately, this is a business decision.

What kind of patents are available? Utility Patents (35 U.S.C. 101) process: method; series of steps for carrying out a task machine: apparatus; generally has moving parts composition of matter: chemical composition; mixture of substances manufacture: human-made objects without moving parts improvements of the items in the above four categories Design Patents (35 U.S.C. 175) ornamental design for an article of manufacture Plant Patents (35 U.S.C. 161) asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state

What can be patented? Statutory Subject Matter for Utility Patents (35 U.S.C. 101) process: method; series of steps for carrying out a task machine: apparatus; generally has moving parts composition of matter: chemical composition; mixture of substances manufacture: human-made objects without moving parts improvements of the items in the above four categories Judicial Exceptions laws of nature natural phenomena abstract ideas unapplied mathematical algorithms product of nature

What are the requirements for patentability? Statutory requirements Invention, as described in the claims, must be Novel (35 U.S.C. 102) Not novel if a single prior art reference discloses every element of the invention, arranged as described in the claim. Nonobvious (35 U.S.C. 103) Obvious if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Obviousness can be established by combining multiple prior art references. Useful (35 U.S.C. 101) Not useful if there is not a specific, substantial, and credible utility. Not useful if it does not work (e.g., contravenes generally accepted scientific principles)

By when must the patent application be filed? Statutory bars Goals of patent system: promote prompt and widespread disclosure of new inventions to the public. limit period of exclusivity to the statutory patent term. 1-year grace period*: the following events may not occur more than a year before the application for the patent is filed filing for a patent in a foreign country describing the invention in a printed publication (e.g., journal article) public use of the invention (e.g., public disclosure) any person has use of the invention without limitation or restriction offering the invention for sale 35 U.S.C. 102 * in the U.S. Most foreign patent systems do not have a 1-year grace period.

Types of U.S. utility patent applications Provisional patent application (PPA) Fewer requirement for filing than non-provisional patent application Not published Not examined Non-provisional patent application “Regular” patent application Usually published within 18 months May lead to grant of patent after examination. Filing either type of application satisfies the statutory bars.

U.S. Provisional Patent Application What is it? A provisional application for a patent in the U.S. Benefits Satisfies statutory deadlines for filing a patent application in the U.S. (e.g., one year from public disclosure) Filing date establishes a date of invention Fewer requirements than a nonprovisional patent application (e.g., no oath or claims needed) Less expensive than a nonprovisional patent application Allows one to mark a product “patent pending” Preserves the option to file a nonprovisional patent application for a year (giving you time to further develop the idea and find investors, capital for the patent application process)

U.S. Provisional Patent Application What is it? A provisional application for a patent in the U.S. Benefits Satisfies statutory deadlines for filing a patent application in the U.S. (e.g., one year from public disclosure) Filing date establishes a date of invention Fewer requirements than a nonprovisional patent application (e.g., no oath or claims needed) Less expensive than a nonprovisional patent application Allows one to mark a product “patent pending” Preserves the option to file a nonprovisional patent application for a year (giving you time to further develop the idea and find investors, capital for the patent application process)

U.S. Provisional Patent Application Cautions A provisional patent application (PPA) only protects what is described within the application. Should be very careful to describe idea fully and broadly PPA is not examined and will not lead to a granted patent. PPA are not available for aspects that would be covered by a design patent.

U.S. Provisional Patent Application What if you don’t file a nonprovisional patent application within a year after filing the PPA? If no statutory bars have passed (e.g., one year after public disclosure, offer for sale, etc.), you may still file either a PPA or nonprovisional patent application. If a statutory bar has passed, the subject matter subject to the statutory bar becomes public domain (unless someone else seeks protection for it). But, you can still file for patent protection for aspects of the design not subject to the statutory bar.

If you do not pursue a PPA Try to get non-disclosures signed before talking to third parties.

If you want to pursue a PPA Decide if you want to do most of the work yourself or pay a professional to help you. What you can do to reduce costs: Do your own patent search Become familiar with patents by reading them Draft written description for your idea/invention Follow the format of patents you have read and understood Prepare your own patent drawings Export drawings from Solidworks Import into powerpoint Add lines and numbers

How much will a patent cost? Official filing fees to U.S.P.T.O. *Additional fees for large numbers of claims, late responses, & more FeeLarge Entity (>500 people) Small Entity Provisional Application Filing Fee Basic Filing Fee - Utility (82 e-filing) Utility Search Fee Utility Examination Fee Request for Continued Examination Utility Issue Fee Total Fees (e-filed) *

How much will a patent cost? Labor fees with Patent Agent or Attorney Very rough estimates Provisional Patent Application preparation & filing (minimal) 5-15 hrs * $ /hr = $ (~3500) Patent Application preparation & filing (from scratch) ~30 hrs * $ /hr = $ (~10000) Patent Application prosecution (per Office Action response) 5-15 hrs * $ /hr = $ (~4000)

What are costs for maintaining a patent? Official maintenance fees to U.S.P.T.O. *Assuming no late payment surcharges FeeLarge Entity (>500 people) Small Entity Due at 3.5 years Due at 7.5 years Due at 11.5 years Total Maintenance Fees *

What is the process for getting a patent? A simplified timeline Day 1 Invention Date Within 1 year of Public Use File Provisional Patent Application (Optional) Or File Patent Application Within 18 months of Filing Date Patent Application Published 3 months later Public Use Filing Date Receive e-filing receipt Or About Week Later Receive paper filing receipt A Few Weeks Later Notice of Missing Parts (if applicable)

What is the process for getting a patent? A simplified timeline Goal: Within 14 months of Filing Date USPTO Takes Action on Application First Office Action Goal: Within 4 months of Response USPTO Takes Action Final Office Action A few weeks later USPTO Processes Patent Issue Notification (Patent No. & Issue Date) Goal: within 3 months from Mailing Date of Office Action (no later than 6 months) Respond to First Office Action Goal: within 3 months from Mailing Date of Office Action (no later than 6 months) File a Response and a Request for Continued Examination (RCE) Or Start Appeal Process Goal: Within 4 months of Response USPTO Takes Action Notice of Allowance Within 3 months from Mailing Date of Notice of Allowance Pay Issue Fee Shortly Afterwards Receive Letters Patent Goal: Within 3 yrs of Filing Date Issue Date USPTO Issues Patent

Resources Recommended books Patent Savvy for Managers: Spot & Protect Valuable Innovations in Your Company, by Kirk Teska Read to become patent literate, meaning that you understand the basics of patent law. Patent Pending in 24 Hours, by Richard Stim & David Pressman Read to get a sense of what is involved in preparing a provisional patent application. Patent It Yourself, by David Pressman Read to get a sense of what is involved in preparing a patent application. How to Make Patent Drawings: A Patent It Yourself Companion, by Jack Lo Read to understand the U.S.P.T.O. requirements regarding patent drawings. Invention Analysis and Claiming: A Patent Lawyer’s Guide, by Ronald Slusky Read to learn how to draft better claims for protecting your invention.