from proof of concept to patent: the nitty gritty about the patent process

From Proof of Concept to Patent: The Nitty Gritty About the

Patenting Process

Types of Intellectual Property• Patents

- Inventions: *Processes/Methods *Machines/Devices

• Copyrights- Expressions of Ideas: *Writings *Music *Art Works

Types of Intellectual Property• Trademarks

- Source indicators

• Trade Secrets- Confidential information that has economic value: *Formulas *Customer lists *Manufacturing processes

Patents

.

Patents: Practical InventionsPatentable Subject Matter Includes…• “Anything under the sun that is made by man”

• Excludes laws of nature, physical phenomena, abstract ideas

• Statutory classes: process, machine, manufacture, composition of matter– Compositions, devices, techniques, new

combinations, software, new uses of an old thing

Terminology• 1-year grace period:

– U.S. has a 1-year grace period from first public disclosure of invention to file patent application

– NO GRACE PERIOD in foreign countries must file BEFORE publish.

• Provisional application: Never examined, never issues into patent.– Automatically expires after 12 months (consider

research timeline)– Minimal formality requirements for filing

Terminology• Non-Provisional: Full blown patent application, will be

examined, and may issue into a patent• PCT: Patent Cooperation Treaty – international non-

provisional – “filed” in 148 countries– Examined, but never issues into a patent unless proceed

to national stage.

• National stage/phase: individualfilings for patents in each country of interest – based upon the PCT application.

Process OverviewProvisional First Approach

“non-provisional”

Manuscript may be submitted in-between

Process OverviewConsider this timeline in planning when to file a provisional, when to submit a manuscript, etc.

Estimated time when proof of concept may be close to finished (major questions answered)

Work backwards so that provisional filing isn’t premature

How to disclose?Invention Disclosure Form

-Submitted to Tech Transfer Office or Appropriate Division of Company

-Important to meet with Tech Transfer early in process – keep apprised ofmanuscript deadlines, etc.

-Important to document invention development.

-Company or University Policy may require employees or faculty to submit all IP for consideration

The Invention Disclosure• What to disclose?

• Identification of full scope of invention• Explore metes & bounds• Explore alternative or non-optimized versions• Any proposed manuscripts should be included with

disclosure form• Materials and methods for any working examples – very

important

• How to disclose?– In writing most preferred, e.g., manuscripts, grant

applications– Oral interview – expand on concepts contained in written

document

How much disclosure?

Disclosure considerations• Patent application disclosure must enable one skilled in

the art to practice the invention without undue additional experimentation– “show your work”– Best mode must be disclosed

• Patent application must adequately describe the invention (sufficient species to claim a genus)

• Once the application is filed there is virtually no possibility to add to it or update it*

* Added material is considered “new matter” and gets a new filing date.

• Important that disclosure/application is as comprehensive as possible.

Disclosure considerations

• Patent application will and should be more comprehensive than your manuscript (the patent attorney will help with this)

• Patent application should be submitted BEFORE your manuscript, poster presentation, etc.

Disclosure considerations

Road Trip - Hitting the Slopes!•The Manuscript Approach

• Why go to the mountains?• How do we get there?• I-70 is East/West Highway to Colorado• We suspected that driving I-70 west, we’d eventually

run into mountains• Report results—after driving west for 500 miles, we

encountered mountains• Future investigation – alternate routes to the mountains

• The Grant Application Approach– We’ve driven I-70 west and reached mountains– Problems with this approach – boring, not

enough places to stop– We suspect there are better routes, but need

funding to investigate (Dodge City route?)

Disclosure considerations

• The Patent Application Approach– Go North on I-135 for 1.5 miles, take the exit

to West I-70 for approximately 530 miles– Providing directions to achieve an outcome– Provide alternative directions, not just your

preferred route (back highways through Dodge City)

– Disclosure should enable others to also reach the mountains

Disclosure considerations

The Drawings

• Drawings helpful to understanding the invention

• PCT drawing quality issues:• Must be black & white – avoid colored lines!• Amenable to reproduction• Original, editable files preferable

Example – Experimental Setup

How do I know if my invention is patentable?• Ask Tech Transfer or Patent Attorney• The patent act defines what is patentable:

– Whoever invents or discovers any new and useful process, machine, manufacture, or composition of the matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. (35 USC § 101)

– The remaining fundamental requirements are that the invention be novel and non-obvious.

Basic Requirements for Protection

• Novel: loosely means that the invention is new and is non identical to the previous work of others. (35 USC § 102)

• Non-obvious: means that the invention must not be an obvious extension of what has gone before. (35 USC § 103)

- Obviousness is measured by what one of ordinary skill in the subject area of the patent would have known at the time of the invention.

America Invents Act

• The AIA significantly encourages early (and often) filing of patent applications

• U.S. patent laws are now based on “first-inventor-to-file” rather than “first-to-invent”

America Invents Act• File patent applications before any public

disclosure, use, presentation, commercial activity, etc. involving the invention– Limited “grace period” still available

– Use Non-Disclosure Agreements consistently, but do not rely on NDAs to fully protect invention

– Inter-institutional inventions: Use written joint development agreements with confidentiality provisions and publication restrictions

America Invents Act

• Invention Disclosure forms and streamlined protocol for submitting and evaluating inventions becomes even more important under the AIA

Patent Acquisition

. Prepare and File

Post-issuance Challenges Examination

Issuance

Examination process• Patent examiner will do a search based upon the

application claims to see if there is any “prior art” related to the invention– Claims describe the metes and bounds of protection– “A method of…” “A composition comprising…”– Claimed invention must be: new, non-obvious as compared

to one or more prior art references located by Examiner.

• Examiner issues an “Office Action” – patent attorney will have a back and forth exchange with the Examiner regarding the prior art and the claims.– Inventor input can be helpful – “person skilled in the art”– Often Examiner is misinterpreting the claims, the prior

art, or both

Common Patent Misconceptions

• A patent gives the right to use or make the invention.

• Patented products are better than unpatented products.

• If I find a new use for an old product, I can get a patent on the product.

Thank You!

Crissa A. Seymour CookHovey Williams LLP84 Corporate Woods

10801 Mastin Blvd., Suite 1000Overland Park, KS 66210

913.647.9050www.hoveywilliams.com