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First Meeting With The Inventor
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First Meeting With The Inventor
Topics to Cover Patents 101 Basic Elements of the Patent Background Solution Alternatives Claims Disclosure Who Owns What Rights
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First Meeting With The Inventor
Patents 101 Explain patent process Helps justify bill / gets your internal client “on-board” with the process Gives the inventor context Approach You have technical background Technical writer – bridge gap between inventor’s intensive knowledge and judge/jury’s lack of knowledge Topics What is a patent? What is a patentable invention? How do you use a patent? Patent prosecution process Requirements of disclosure, enablement, best mode – you must teach your invention
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First Meeting With The Inventor
What is a patent? Agreement with national government (bargain theory) You disclose secret Government gives you 20 year head start to exploit it Disclosure – must show best mode and enablement Claims – fences show boundaries of monopoly Right to exclude others from making, using or selling does not provide a positive right to practice Patent is a business tool – provides a choice Do nothing? Enforce License / cross-license Defensive / offensive strategies Not a right to make money – you must still develop market
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First Meeting With The Inventor
What is a patentable invention? New Must be secret Prior art – searches / opinion / IDS Reverse engineering Useful Solves a problem – faster, cheaper, smaller, stronger Commercial application – not usually an issue Inventive – eg. Reese’s Peanut Butter cups POSITA Diligent search Mosaicing Hindsight 20/20 – motivation to combine
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First Meeting With The Inventor
What is a patentable invention? (cont’d) Patentable Subject Matter “mere scientific principle or abstract theorem” Software Business methods Signals Algorithms No restriction on grounds of morality or illegality Higher life forms Games
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First Meeting With The Inventor
How do you use a patent? To make $$ Establish exclusive market Licensing revenue Defend against attack – cross-licensing Reputation Ego
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First Meeting With The Inventor
Patent Prosecution Process Draft patent disclosure / claims (cost) File application (cost) CA / US / EP / JP / other (cost) Priority 12 months PCT 30/31 months (cost) Provisional (cost) Potential pitfalls Prosecute application (cost) Expedite? US first? PPH?
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First Meeting With The Inventor
Patent Prosecution Process (cont’d) Fees Filing Exam RCE (US) / Appeal Maintenance Divisional / Continuation (US) / CIP (US) Issue Opposition (EPO) Renewal Term 20 years from date of filing Reasonable compensation / date of publication (certain restrictions) Reissue / Re-exam / Disclaimer Improvement patents
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First Meeting With The Inventor
Basic Elements of the Patent Background Why should anyone pay you $? How to describe Cocktail party Report to your boss’ boss What is the issue? Why is this a problem? What has been tried? Why didn’t it work? Telling a story to your reader – but who is the reader?
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First Meeting With The Inventor
Basic Elements of the Patent Solution Hopefully have written disclosure Take detailed notes – verbatim if possible Stop and go back frequently Bring a junior / student Camera for drawings / Camcorder if permitted? / Livescribe Ask for and work through drawings Understand commonly used terms in the art – POSITA Don’t be afraid to ask questions / clarify Understand what makes you inventor “tick” Summarize to confirm understanding Try to proceed in organized fashion
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First Meeting With The Inventor
Basic Elements of the Patent Alternatives Other implementations Look for sub-optimal solutions Predictions Equivalents Other fields of technology eg. optical / electrical Now is a good time to define the field of invention Subsequent versions When can you stop? How does this affect best mode?
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First Meeting With The Inventor
Basic Elements of the Patent Claims Who is competition? What are they doing? Jurisdiction Size Relationship with you Objective helps define claims Broad – predict 20 years into future Progressively narrowing – protect against prior art Detectability of infringement – standards / outward behaviour “Black box”? Trade secret? Apparatus / method claims? Reasonable pre-trial investigation. Targeted – single entity / infringer / hopefully not customer
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First Meeting With The Inventor
Disclosure When / how conceived of invention? Inventor’s notebooks Bound Signed Dated Mailed? Who was there? Who contributed to inventive concept? Invention: reduced to definite and practical shape (CA) Who knows about invention now? When did they find out about it NDA: importance / pitfalls What searches done – IDS Testing? Demonstrations? Production? Marketing?
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First Meeting With The Inventor
Who Owns What Rights? Who is the inventor? Inventorship test: reduced to definite and practical shape (CA) Co-inventors – no such thing as 50% Can’t increase number of rightsholders Ensure all rights tied up Consequences of failure to correctly name Common assignee False and misleading statement
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First Meeting With The Inventor
Who Owns What Rights? (cont’d) Who is the owner? Entitlement Employee (hired to invent) v. Contractor Assignment / Employee Agreement Bankruptcy / Death Other Beware of unsuspecting Owner – security interest Government Certain technologies Public servants Entity status Different for CA/US University/College Obligation to transfer Who is an employee?
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First Meeting With The Inventor
Who Owns What Rights? (cont’d) Who is the client? May not be owner or inventor Who gives instructions To whom do you report To whom do you bill? Conflict check Retainer agreement Conflict of interest where multiple clients See IPIC Code of Ethics, §2 Confidentiality
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First Meeting With The Inventor
Inventor Interview Exercise (Splash Stick)
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