1. Patents and the Patenting Process Patents and the Inventor’s role in the Patenting Process

2. Patents Grant of a patent is a bargained for exchange. Public disclosure of new and non-obvious technical information in exchange for a period of exclusivity. Patents are to “promote the progress of.. useful arts” [Those are the words of the Constitution].

3. Patentable Inventions Articles of Manufacture Methods of Manufacture Chemical Compositions Computer Programs (not universal) Methods of Doing Business (not universal) Designs Other – Life forms, ?, everything under the sun But not really everything…

4. Patentable Subject Matter Laws of Nature: “‘laws of nature, natural phenomena, and abstract ideas’ are not patentable” and “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo v. Prometheus Software: the opinion is packed with evidence that the Court intended for the term “abstract idea” to apply not to any “abstract idea” in the colloquial sense, but only more specifically to abstract ideas that are fundamental practices long prevalent in their fields. 1 Alice Corp. v. CLS Bank International 1. Bob Stoll, former Commissioner of Patents

5. The Patent Grant The patent holder is granted the right to prevent others from making, using, selling, or offering to sell the claimed invention. The patent holder is not granted the right to practice the invention. Patents are territorial, only enforceable in the country of issuance. Patent

6. Patents Cont. Patent Term: Period of Exclusivity is typically 20 years from the filing of the Patent Application. First-to-File: The US is now (mostly) like the rest of the world, the first to file gets the patent. It is very important to be timely with filing an application. Public Disclosure: Disclosing an invention publicly before filing destroys all foreign patent rights and can harm even a US filing.

7. Patent Requirements Novelty – Is it new? Non-obviousness – Would the improvement be obvious to one of ordinary skill in the art?

8. The Application Title Background of the Invention Summary of the Invention Detailed Description of the Preferred Embodiment Claims Figures Abstract

9. Inventor’s Role You as the inventor must understand the application. Advocate for your application! The patent attorney is technically skilled in the area, but you are the expert on your invention. Remember the audience for the application. Patent Examiner Judge/Jury You are an important part of quality control.

10. Formal Papers Declaration Assignment Information Disclosure Statement

11. Declaration Declaring you are an inventor of the subject matter of at least one claim, and your duty to disclose prior art. Deliberate misrepresentation is perjury. Deliberate misrepresentation invalidates the patent.

12. Assignment Under US law, only the inventor can apply for the patent. The inventor is the owner of the invention. Each inventor has an undivided interest in the patent As the inventor, you apply for the patent and assign the rights of the patent to the University of Rochester.

13. Information Disclosure Statement All persons involved with the filing and prosecution of the patent application are obligated to disclose material references. Intentional (or even negligent) failure to disclose can be “inequitable conduct” and invalidate the entire patent. What is a material reference? Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.

14. Enablement The application must provide sufficient detail to allow one of ordinary skill in the art to practice the invention without undue experimentation. There is no requirement that the application be a blue print to practice the invention. However, the application needs to disclose (enable) all the alternatives.

15. Filing Date Patent term is 20 years from the filing date. Filing must precede any public disclosure to preserve foreign patent rights. Filing must be within one year of any public disclosure, sale or offer of sale, to preserve US patent rights. Most importantly, the Filing (or Priority) Date determines what is prior art. Disclosures before the priority date are prior art, disclosures after are not.

16. Prior Art Publications Patents Thesis Sales Literature, Posters Service Manuals Machines Offers to sell Government Submissions Talks, publicly known Prior art predates the priority date, and prior art includes your own public disclosures!

17. Claims Claims are the heart of the patent! Claims define the scope of the patented invention. The claims set the boundaries of the protected invention. (An inventor is someone who contributed to the subject matter of at least one claim.)

18. Claims A method of placing an order for an item comprising: under control of a client system, displaying information identifying the item; and in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system; under control of a single-action ordering component of the server system, receiving the request; retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and generating an order to purchase the requested item for the purchaser identified by the identifier in the received request using the retrieved additional information; and fulfilling the generated order to complete purchase of the item whereby the item is ordered without using a shopping cart ordering model.

19. Types of Claims Independent Claims- The broadest claims, having the least number of limitations. Dependent Claims- Add limitations to the base claim, but do not limit the base claim. Independent 1 Dependent 5 Dependent 4 Dependent 3 Dependent 2 Dependent 6

20. Claim Scope Claim 1 Claim 2 Claim 3 Claim 4 Claim 5 Claim 6 Claim 7 Independent Claims Dependent Claims

21. Claim Scope and Prior Art in Patent Office Claim 1 Claim 2 Claim 3 Claim 4 Claim 5 Claim 6 Claim 7 Prior art

22. Claim Scope and Prior Art in Patent Prosecution Claim 1 Claim 2 Claim 3 Claim 4 Claim 5 Claim 6 Claim 7 Prior art

23. Issuance Enforcement in the US begins at issuance. Maintenance fees are periodically paid to maintain the enforceability of a patent. Issuance of a patent is not a right to use the invention. It is a right to exclude others

24. Foreign (Non-US) Filing Foreign cases get the US filing date if filed within one year of the US filing. Patents are only enforceable in the issuing country.

25. Non-US Patent Filing Patent work is performed by patent associates in the relevant country. Translation costs are substantial. The University of Rochester typically files where there is: a substantial sales market Non-US filing and maintenance fees are typically high.

26. Patent Enforcement Licensing opportunities increase with the issuance of the patent. The US has the strongest patent enforcement. Patent Litigation Litigation can force a licensing arrangement. Up to treble damages plus attorneys fees are available. Injunctive relief is available.

27. The Value of Patents Prevents others from using technology. Protects technology for your use by barring others from patenting. Provides licensable material.

28. Patent Best Practices Keep inventions confidential until filed with the patent office. Timeliness matters! It is a first to file world. Having a patent is not a right to use, just a right to exclude others. You must have an agreement in place to obtain rights in patentable inventions. Don’t give away your rights, understand the consequences of agreements (prior to you even inventing).

29. Appendix Patent Examination

30. The Patent Examiner: Performs a prior art search, typically for patents. Examines the patent application for compliance with formal requirements Examines the claims of the patent application for compliance with substantive requirements, Novelty Non-Obviousness

31. Responses of the Examiner “The Office Action” Allows Claim Claim meets all statutory requirements Rejects Claim Claim fails to patentably distinguish over the prior art Objects to claim Claim fails to meet a formal statutory requirement

32. Objections to Claims (112 Objections) Objections are typically for formalities. The objection may be overcome by amending the claim. The amendment will not typically reduce the scope of the claim.

33. Claim Rejections Lack of Novelty (102 Rejection) Obvious (103 Rejection)

34. Lack of Novelty (102 Rejections) Examiner’s Position Each and every limitation is found in a single prior art reference (as understood by one of ordinary skill in the art) Patent attorney and Inventor’s role Distinguish over the prior art reference by pointing out the differences between the claim and the reference.

35. Obvious (103 Rejection) Examiner’s Position While no single reference shows the claimed invention, it is obvious to one of ordinary skill in the art from the combination of references. Patent Attorney and Inventor’s role- Arguments: One or more of the references are non-analogous art There is no teaching or suggestion to combine the references as suggested by the examiner Even when combined, the references fail to teach or suggest the invention of the claim

36. Amendments The claims can be modified to overcome objections and rejections. The specification and drawings can sometimes be amended, but no new matter can be added to the application.