© kolisch hartwell 2014 all rights reserved, page 1 oregon best fest september 2014 peter d. sabido...

© Kolisch Hartwell 2014 All Rights Reserved,

Oregon Best Fest September 2014

Peter D. SabidoIntellectual Property Attorney

Kolisch Hartwell, [email protected]

September 16, 2014


Kolisch Hartwell, P.C.

Overview• Intellectual property law firm founded in 1952• Full-spectrum intellectual property practice• Broad technical expertise and experience • Offices located in Portland, OR and Palo Alto, CA

Peter D. Sabido• Intellectual property attorney, 11+ years• Patent/trademark prosecution and licensing• Senior engineer at Intel Corporation• B.S. Chemical Engineering and M.S. Environmental Engineering• Registered professional engineer


What is Patentable?Patentable • Devices• Compositions of Matter• Processes• Articles of Manufacturing• Methods of Use• Computer Software• Business Methods• Genetically Engineered Organisms

Not Patentable• Laws of Nature• Abstract Ideas• Fundamental Truths• Mathematical Formulas• Natural Phenomena• Principles• Mental Processes


What is Patentable?

Alice Corp. v. CLS Bank Intl. (134 S. Ct. 2347 (2014))

• Computerized scheme for mitigating settlement risk found to be simply an abstract idea

• Merely requiring generic computer implementation fails to transform the abstract idea into a patentable invention

• Abstract ideas are not patentable unless there is an “inventive concept” that adds “significantly more”

• Transforming an abstract idea into a patentable invention: An improvement in computer functioning; or An improvement in another technological field


Types of Utility Applications• Provisional

Establishes a filing date Simple filing requirements and not substantively examined Extends patent term up to one year PCT or foreign filings must be filed within one year Automatically lapses one year from filing date

• Non-Provisional Ability to claim priority to provisional, PCT, or foreign filing Begins examination process Strict filing requirements May ultimately lead to a patent


Types of Utility Applications• Continuation

Filed during pendency of an earlier “parent” application Ability to claim priority to an earlier “parent” application “New matter” cannot be added

• Continuation-in-Part Same as continuation application but includes “new matter” Only the “new matter” receives a new filing date

• Divisional Filed as a result of a restriction requirement

on an earlier “parent” application Ability to claim priority to an earlier “parent” application


Lifecycle of a Patent: Filing & Prosecution

File U.S. Provisional

U.S. Applicationpublished

Priority date

18 months

~3 years

U.S. Patent Granted

12 months

File PCT or Foreign Application

30-31 months

Enter PCT National Phase

Prosecution

File U.S.Non-Provisional


Lifecycle of a Patent: Maintenance & Rights

Non-ProvisionalFiled

EarliestFiling Date

20 years

Patent Expires

Patent Granted

~ 3 years 3.5years

Maintenance Fees

7.5years

11.5years


Ring-Fencing• What is it?

Surrounding one or more key patents with all conceivable improvements and alternatives

Building a wall around the market to preempt competition

• Why use this strategy? Mitigate risk Protect key patents Protect future business Obtain significantly broader patent protection Prevent competitors from blocking future technology


Ring-Fencing


Ring-Fencing• When to consider this strategy?

Earlier the better Preferably before key patent is granted Ideally prior to competition using a “fencing” strategy

• What does it take to execute this strategy? At least one or more additional patents Additional expenses and resources Anticipation of practical improvements and alternatives Reviewing patent portfolio on a periodic basis

© kolisch hartwell 2014 all rights reserved, page 1 oregon best fest september 2014 peter d. sabido...

Documents

patent slide

nonprovisional slide

foreign application

continuation application

earliest filing date

priority date

new filing date divisional

patent term