© 2010 Woodcock Washburn LLP Patents and Technology Protection “Everything You Wanted to Know About IP – But Were Afraid to Ask” University of Hawai’i October 20, 2010 Disclaimer: Woodcock Washburn LLP is not providing legal advice, but is only providing information through this presentation. Jeffrey H. Rosedale, Ph.D, J.D.

© 2007 Woodcock Washburn LLP Who is this? Shane Victorino, Center Fielder, Philadelphia Phillies “The Flyin’ Hawaiian”

© 2007 Woodcock Washburn LLP IP is important!  Legally-protected competitive advantage over your competition  Important at all times; even during recessions –Recessions can be good time to start a business  IP-driven companies started during recessions: –Procter & Gamble –Disney –Johnson & Johnson –Microsoft

© 2007 Woodcock Washburn LLP The Four “Flavors” of IP  Trademarks  Identify source of goods  Copyrights  Protect works of authorship  Trade Secrets  Protect processes, information  Patents  Protect processes, compositions, devices *

© 2007 Woodcock Washburn LLP What You Need to Know About Patents  What legal rights do patents provide (and not provide)? Who owns these rights?  What types of inventions are patentable?  What are the legal requirements for patentability? What problems can arise?  What is the process for patenting an invention? Who is an inventor?  Why are the claims so important?

© 2007 Woodcock Washburn LLP What is a Patent? A PATENT IS A BUSINESS TOOL. In Academia: patents spur interest in turning research results into products that benefit the public.

© 2007 Woodcock Washburn LLP Patent Examples Animal Ear Protector

© 2007 Woodcock Washburn LLP Wearable Pet Enclosure

© 2007 Woodcock Washburn LLP Toy Bar Soap Slide

© 2007 Woodcock Washburn LLP High Five Simulator

© 2007 Woodcock Washburn LLP A Notable University Patent

© 2007 Woodcock Washburn LLP

Patents Provide an Exclusive Property Right - A patent DOES NOT confer to the owner the right to practice the claimed invention! - A patent IS NOT a “Seal of Approval of Excellence in Technology” from the U.S. Patent and Trademark Office!

© 2007 Woodcock Washburn LLP A Patent is “A Contract with Society”  Inventor gives to society: –A written description of his/her invention that sufficiently teaches “one of ordinary skill in the art” how to make and use the claimed invention, and that sets forth the “best mode” at the time of filing the patent application.  Inventor gets from society: –About a 20 year monopoly from the filing date to exclude others from practicing the claimed invention.

© 2007 Woodcock Washburn LLP The “CLAIMS” are key… Claims – provide the metes and bounds of the right that the patent confers to exclude others from “trespassing” on the invention: The Claimed Invention

© 2007 Woodcock Washburn LLP Claim Terminology  “comprising” –is synonymous with “including”, “containing”, or “characterized by” –is inclusive or open-ended and does not exclude additional, unrecited elements or method steps

© 2007 Woodcock Washburn LLP Claim Analysis Example claim: 1. A cutting device, comprising: a metal blade having a cutting edge, and a handle attached to the metal blade. ANALYSIS: Any cutting device that has a metal blade having a cutting edge, and a handle attached to the metal blade will infringe the claim. DO THESE INFRINGE? ? ? ? ? Yes No

© 2007 Woodcock Washburn LLP A Variety of Patentable Inventions  Machines & Devices  Processes  Articles of manufacture  Compositions of matter

© 2007 Woodcock Washburn LLP  Note especially… –Improvements to known technologies –New combinations of known technologies –New uses of known technologies – … are all patentable!

© 2007 Woodcock Washburn LLP What is not patentable? Laws of nature Natural phenomena Abstract ideas Humans

© 2007 Woodcock Washburn LLP Requirements for Patentability (Important!)  Utility – it must be useful  Novelty – it must be new *  Non-obviousness – it can’t be a mere variation of what was done before  Enabling Description -- application must: –fully disclose invention (including “best mode” contemplated at time of filing); and –allow a person having ordinary skill in the art to make and use the invention Search patents, publications, public uses (news, internet, USPTO website, etc.)

© 2007 Woodcock Washburn LLP Example - Patenting Your Invention time Lee Taylor, et al., UH OTTED

© 2007 Woodcock Washburn LLP Who is an inventor? An “inventor” is simply a person who contributed to the intellectual conception of the claimed invention. Who is not an inventor? - workers who merely do what is asked and report requested information to others - managers who merely suggest a goal to achieve, but not how to achieve it Inventorship ≠ Authorship

© 2007 Woodcock Washburn LLP Your Publication Can Void Your Patent Publish or present your invention after filing a patent application. “Publishing” = “any public disclosure” For a U.S. patent – a one year grace period to file a patent application For international patents – typically, no patent for that which was disclosed!

© 2007 Woodcock Washburn LLP Your Actions Can Void Your Patent Avoid selling, offering for sale, or using the invention in public. For a U.S. patent – a one year grace period to file a patent application For international patents – typically, no patent for that which was disclosed

© 2007 Woodcock Washburn LLP Document how and when you made your invention Inventors should keep notebooks – numbered pages, signed, dated and witnessed - to document their work. Why?  “First to invent wins the patent” rule in the U.S. (v. “first to file” elsewhere)

© 2007 Woodcock Washburn LLP Keep Abreast of Relevant Literature in Your Field Do literature and patent searches Identify the “closest prior art” to your invention Give key prior art references to your patent attorney to analyze and submit to Patent Office week/1025.move1.jpg

© 2007 Woodcock Washburn LLP  Draft a patent application (use a patent attorney) –describe how to make and use the claimed invention –disclose your “best mode” –File it with the U.S. Patent and Trademark Office Obtaining Patents

© 2007 Woodcock Washburn LLP U.S. PATENT AND TRADEMARK OFFICE

© 2007 Woodcock Washburn LLP “priority date” 20 Oct 2010 file U.S. patent application Typical Patent Application Timeline one year from priority date – file optional “international” patent application(s) “filing date” 20 Oct 2011 “publication date” 20 April 2012 time 1.5 years from priority date – publication of patent application Examination of the Patent Application and Claims Begins by a U.S. Patent Examiner Examination Continues Your Article Publishes

© 2007 Woodcock Washburn LLP Patentability v. Infringement of a Patent Claim Patent Application Priority Date 20 Oct 2010 Future products infringe the claim time Prior Art (publications and products) discloses the claim Claim: A cutting device, comprising: a metal blade having a cutting edge, and a handle attached to the metal blade. Patent application for “Cutting Device”

© 2007 Woodcock Washburn LLP Patent Caveats  Co-inventors  Obligations to Assign Patent Rights  Written Agreements … MTAs, NDAs, CDAs s.com/duel_of_the_geeks.jpg

© 2007 Woodcock Washburn LLP Pop Quiz – What You Need to Know Question: 1. What is a patent? 2. What is patentable? 3. What type of legal right do patents provide? 4. What are the requirements for patentability? 5. Who is an inventor? 6. Why obtain a patent? Answer: 1. A business tool. 2. Almost anything. 3. Exclusive -- “no trespassing”. 4. New, useful, non-obvious, disclose how to make and use, best mode. 5. Intellectual contributor to the claims. 6. A business tool.

© 2007 Woodcock Washburn LLP Go Phillies! Mahalo! Any questions? Jeff Rosedale, (w),