1. Patent Basics April 9, 2003 Fernandez & Associates LLP Stanford BioDesign Invention Challenge IP Lecture

2. Types of Intellectual Property Copyright Trademark Trade Secrets/ Know How Mask Work Patents

3. Basic Idea Behind IP Protection: To grant period of monopoly to inventor/author in exchange for enriching the public domain

4. Basic Patent Criteria Novel Useful Non-obvious

5. Examples of Patents: Mechanical Device Chips Drugs Genes Software New Compounds Business Methods Designs

6. Types of Patents Utility Design Plant

7. Patent Application Requirements Specifications abstract, background, detailed description of preferred embodiments Claims carves out your monopoly

8. What is Prior Art? Any information related to your invention e.g. journal publications, issued patents, pending patent applications Patent examiners cite prior art to show that an invention is not patentable

9. When will a patent be issued? After a few rounds of arguing with the examiner and possible amendments ~3 years from filing Patent covers 20 yrs. from filing or 17 yrs. from issue

10. Patent Timeline

11. Intellectual Property Tips DO: Maintain an inventor notebook with conception dates and concept diagrams Determine the strength of your invention Search on www.uspto.gov for issued/pending patent applicationswww.uspto.gov Browse related tech journals/publications Submit invention disclosure even before the prototype is built

12. Intellectual Property Tips Without checking with a patent attorney: Don’t disclose any concepts or make offers for sale Don’t use technology that is not your own Don’t admit infringement liability

13. Procedural Strategy Early Filing Date Provisional Filing International Filing Foreign Filing Continuation-in-Part (CIP) Filing

14. What to Protect? Portfolio Development Defending Approach Defending Core Technology Current Products/Future Products Offensive Blocking Claims Anti-Competitor Emerging Standards Acquisition/Partnership Positioning

15. Issues of Concern Damage Control Imminent Deadlines Bar Date: US Rule, Foreign Rule 3 rd Party Activity Infringement Exposure Internal Procedures

16. Issues of Concern Infringement Risk Wilfulness Exposure Prior Art vs. Design-Around Licensing Option Disclosure Submission Invention Disclosure Prior Art Search? Best Mode Figures Alternate Embodiments

17. dennis@iploft.com Questions?