© 2010 Hodgson Russ LLP IEEE Southern Area Entrepreneur’s Day Overview Of The Patent Process R. Kent Roberts Hodgson Russ LLP (716)

2 © 2010 Hodgson Russ LLP Topics To Be Covered 1. Overview Of The Patent Process 2. Written Description Requirement 3. Ownership And Inventorship 4. Patentable Subject Matter 5. Infringement 6. Patent Mistakes 7. Overview Of Health Care And Biotech Areas 8. Protecting IP With Design Patents, Trademarks, And Copyrights

3 © 2010 Hodgson Russ LLP 1. Types Of Patents  For utility patents—a new and useful process, machine, manufacture, plant or composition of matter, or a new and useful improvement in these items.  For design patents—a new, original and ornamental design for an article of manufacture.  For plant patents—asexually reproduced, distinct and new variety of plant, and newly found seedlings, other than a tuberpropagated plant or plant found in an uncultivated state.

4 © 2010 Hodgson Russ LLP 2. Two Primary Hurdles – Anticipation and Obviousness  A patent may be obtained unless the invention is “anticipated”.  Non-Obviousness. A patent may not be obtained 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 the subject matter pertains.  Search the USPTO web site -

5 © 2010 Hodgson Russ LLP 3. Provisional Patent Application  Never reviewed by the USPTO and never matures into an issued patent.  Becomes abandoned 12 months after filing.  Priority may be claimed to the provisional patent application if the non-provisional patent application is filed before the 12-month mark.  Need not meet all the requirements applicable to a non- provisional patent application. BUT, the provisional patent application must accurately and completely describe the invention in order to properly protect the invention.

6 © 2010 Hodgson Russ LLP 4. PCT Patent Application  A patent application that may be nationalized in more than 135 patent offices.  Provides a means to obtain review and comments on a patent application before it is reviewed by a patent office that can issue a patent.  Provides a means by which to delay filing of patent applications.

7 © 2010 Hodgson Russ LLP 5. Infringement  Occurs when there is unauthorized making, using, offering to sell or selling of the patented invention within the U.S. or importing into the U.S. any patented invention during the term of the patent. For most utility patent applications the term of an issued patent is 20 years from the application date. For design patent applications, the term of an issued patent is 14 years from the date the design patent issues.

8 © 2010 Hodgson Russ LLP 6. Damages  Lost sales/profits  Reasonable royalty  Treble damages for willful infringement

9 © 2010 Hodgson Russ LLP Trade Secret  Definition: Something that is not known by the public and provides a competitive advantage.  Requires diligent efforts to keep the invention secret.  Should use NDA/NCA when making a disclosure. Protects the trade secret. May preserve any foreign patent rights (absolute novelty). Should use NDA/NCA even if a patent application is pending.

10 © 2010 Hodgson Russ LLP Getting Started  Create an invention disclosure: Usually 1 to 3 pages of text describing the invention, and 1 to 3 sketches. Need not be fancy.  Consider outlining a business plan. Is the income likely to exceed the costs to prepare and file a patent application?  Consider whether someone with experience in starting a business should be involved.