09-the u.s. patent process: conception to filing

Download 09-The U.S. Patent Process: Conception to Filing

Post on 08-May-2015

2.026 views

Category:

Business

0 download

Embed Size (px)

TRANSCRIPT

  • 1.The U.S. Patent Process: Conception to Filing Kristine H. Johnson MacMillan, Sobanski & Todd, LLC [email_address]

2. Overview

  • Patentability rules: technical and unforgiving
  • Dates are critical
  • Delay is a significant risk
    • Prior art
    • Barring events
  • Activities of inventor may foreclose patent protection
    • U.S. vs. non-US activities

3. Overview

  • The patent process should be handled very carefully!

4. Good ideaPatent Filing

  • General timeline
    • Scientific research and discovery
    • Disclosure of the discovery to TTO
    • Evaluation of the disclosure by TTO
    • Drafting of patent application
    • Final draft of patent application
    • Filing provisional or PCT or national application

5. Good ideaPatent Filing

  • General timeline
    • Scientific research and discovery
    • Disclosure of the discovery to TTO
    • Evaluation of the disclosure by TTO
    • Drafting of patent application
    • Final draft of patent application
    • Filing provisional or PCT or national application

6. Scientific research and discovery

  • Funding
    • If US funded, need to state in patent
  • Record keeping
    • Sign and countersign, date
  • Reporting
    • Not usually a tech transfer function (grants & contracts admin)

7. Record Keeping Notes

  • Schedule regular reminders and instruction on patent-worthy recordkeeping for researchers (some attorneys will do this for free)
  • Intellectual property policy should address notebook and data retention
  • Notebooks and data walk away fairly often at least have a copy!

8. Good ideaPatent Filing

  • General timeline
    • Scientific research and discovery
    • Disclosure of the discovery to TTO
    • Evaluation of the disclosure by TTO
    • Drafting of patent application
    • Final draft of patent application
    • Filing provisional or PCT or national application

9. Disclosure of the discovery to TTO

  • This is a money-saving stage if done right
  • Get documents in editable form (MSWord, not PDF)
  • Ask for all of the elements of a patent application details!
  • Ask for licensing contacts
  • Ask patent attorneys for suggestions on time saving measures at this stage

A good offense is better than a good defense!Great disclosure equals 10. Good ideaPatent Filing

  • General timeline
    • Scientific research and discovery
    • Disclosure of the discovery to TTO
    • Evaluation of the disclosure by TTO
    • Drafting of patent application
    • Final draft of patent application
    • Filing provisional or PCT or national application

11. Evaluation of the disclosure by TTO

  • Science value
  • Patentability
  • Market value
  • Are interrelated but do not fully overlap.

It takes experience to judge market value! 12. Evaluation of the disclosure by TTO

  • Dont be misled by who is talking
    • Scientists value science
    • Patent attorneys are sometimes scientist-thinking
    • Patent attorneys are often noncommittal on the law
    • First adopters love everything
    • Risk adverse people hate everything
  • Most important: actual value in todays market
    • Licensable, profitable scope
    • Social-only valuation is legitimate for US universities (Bayh-Dole for the benefit of the public)

13. Patentability Evaluation

  • What is Prior Art?
    • Determinedby law , not strictly time
    • Anything that is publicly known, published, publicly used, or sold in this country
    • Anything published or patented here or elsewhere in the world
    • That came BEFORE your invention (applies to both above)

DANGER:Using the term prior art is an admission / statement against legal interest!Get in the habit of saying reference or disclosure 14. Patentability Evaluation

  • Duty to disclose prior art
    • Not a duty to search
  • Why search?
    • May give the inventors a better idea
    • Helps the patent attorney and the inventor define the invention in the specification
    • Uncovers what the Examiner may find
      • Saves time and money

15. Patentability Evaluation

  • Two Ways that Prior Art is Created:
    • Things the inventor does
    • Things that others do

16. Patentability Evaluation

  • Things the inventor does
    • What starts the clock ticking?
      • 4 triggering events
        • Public Disclosures
        • Public Use
        • Sale
        • Offers for Sale
      • Fact Specific Inquiry
    • Once the clock starts, it cant be stopped!

17. Patentability Evaluation

  • Things others do
    • Publicly Known
      • Before the date of your invention
      • One year before the U.S. filing date
    • You cant do anything about this
      • Best to know whats out there
        • lowers costs
        • helps identify what your patentable invention can be

18. Patentability Evaluation

  • What does obviousness mean to an inventor?
    • Almost always, different from what it means in patent law.
    • Their answer depends on their ego and scientific indoctrination
    • Either ask the patent attorney to evaluate obviousness or file without asking

19. Patentability Evaluation

  • What information will help overcome an obviousness rejection?
    • Teaching away, long-felt need, superior results over closest comparator, great difficulty in obtaining, etc.
    • Get this information during the disclosure stage (saves money!)
    • But watch out for admissions / statements against interest

20. Patent Searching

  • U.S. Patent and Trademark Office(uspto.gov)
    • Wealth of information
    • Key word searching
  • ep.espacenet.com for non-US patents
  • Google Patents (3 month lag)
  • Searcher in Wash. DC

21. What to Look for in a Search

  • Would my invention infringe patents of others?
    • Look at claims
    • Unexpired patents only
  • Is my invention patentable?
    • All U.S. patents back to 1790
    • Worldwide patents and publications
    • Any language

22. Good ideaPatent Filing

  • General timeline
    • Scientific research and discovery
    • Disclosure of the discovery to TTO
    • Evaluation of the disclosure by TTO
    • Drafting of patent application
    • Final draft of patent application
    • Filing provisional or PCT or national application

23. Choosing a patent drafter

  • Who is allowed by law todr

Recommended

View more >