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

The U.S. Patent Process:Conception to Filing

Kristine H. JohnsonMacMillan, Sobanski & Todd, LLC

[email protected]

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

Overview

The patent process should be handled very carefully!

Good idea Patent 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

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)

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!



application

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



application

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!

Evaluation of the disclosure by TTO

• Don’t 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 today’s market

– Licensable, profitable scope

– Social-only valuation is legitimate for US universities (Bayh-Dole – “for the benefit of the public”)

Patentability Evaluation

• What is “Prior Art?”

– Determined by 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”


• 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


• Two Ways that Prior Art is Created:

– Things the inventor does

– Things that others do


• 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 can’t be stopped!


• Things others do

– Publicly Known Before the date of your invention One year before the U.S. filing date

– You can’t do anything about this Best to know what’s out there

◦ lowers costs◦ helps identify what your “patentable invention”

can be


• 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


• 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

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

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



application

Choosing a patent drafter

• Who is allowed by law to draft a patent application?

– Anyone!• Scientist• Technology transfer professional• In-house attorney or agent• Outside attorney or agent• Patent litigator• Trained (or untrained) monkey

• Who is allowed by law to file a patent application?– An applicant– A registered patent agent or patent attorney

Choosing a patent drafter

• Who should draft your patent application?– A “patent prosecutor;” a registered patent agent

or attorney who specializes in patent drafting• With a pertinent science background• Who understands your organization and the PTO• Who communicates the way you prefer

– Do not hire a patent litigator for patent drafting – too expensive and less effective

– Do not hire based solely on scientist preference– Patent prosecutors are notoriously introverted,

so do not judge their drafting effectiveness by their personality

How I, a lawyer, hire lawyers

• Do they have the appropriate technical and legal background?

• Do they listen and reflect back to me what my goals are?

• Do they offer their opinion, not just options?

• Do they find ways to save me money?

• Do they tell me when they do not know something?

• Do they return my emails and phone calls promptly?

• Am I important to them as a client?

• Do they know the “right” people for my goals?

• Do they demonstrate an ethical worldview?

I have hired $150/hour lawyers for litigation who were just as effective as a $500/hour regulatory lawyer (who was also effective for the particular job at hand).

The Parts of a Patent:

– Drawings– Specification

• Background• Summary of

the invention• Description of

the drawings• Detailed description

of the invention– Claims

• Each claim written as one sentence • Describe the “metes and bounds” of the invention• Independent and dependent forms

Choosing a patent application type

• “Cover sheet” provisional

• Provisional with added disclosure

• Provisional with added claims

• Fully-prepped application, filed as provisional

• Fully prepped application, filed as PCT or US only

“Cover sheet” provisional

• File a manuscript/powerpoint/poster• Only in emergencies• Often contain admissions/statements against interest “As,

expected, our results confirm…”• Causes problems later (102, 103, 112)• Not much marketing value• Creates confusion with inventors• Attorneys fret about the liability/benefit• Sometimes the only option• Requires immediate follow-up• Can be done in-house, cheap

Attorney Report CardEffort: DEffectiveness: DExpense: A

Provisional with added disclosure

• File manuscript/power point/poster and a document that describes pertinent processes, generically

• Some attorneys advocate this as preferred method – no claims

• May still have problems with later claim amendments

• Can be done in-house, but a bit more difficult than a cover sheet provisional

Attorney Report CardEffort: CEffectiveness: CExpense: B

Better than cover sheet only

Provisional with added claims

• Focuses discussion on a licensable scope• Better marketing tool• Forces use of words that might not otherwise be

included – antecedent basis• Might have other 112 problems later• Best to have a patent agent/attorney draft claims

Best practice, given little time to file

Attorney Report CardEffort: BEffectiveness: BExpense: B

Fully-prepped application, filed as provisional

• More expensive• More likely to meet statutory requirements and

not cause problems in the future• Doesn’t create (as much) confusion with inventors

as cover sheet provisionals do• Ordinarily not prepared in-house• Anything less than two weeks lead time is often

considered a rush on these, but a decent patent application can be accomplished in twenty to sixty hours.

Attorney Report CardEffort: AEffectiveness: AExpense: C

Fully-prepped application, filed first as PCT or US-only

• Same lawyer/draftsman/sequence listing service fees as filing provisional

• Higher government filing fees

• Will be reviewed by PTO

• Not a good strategy for pharmaceuticals (need the extra year at the end of the patent life)

• Might be very important to speed prosecution for other technologies Attorney Report Card

Effort: AEffectiveness: AExpense: C

The well-written patent application

• Describes the invention so one of ordinary skill can understand it

• Discloses the best mode

• Provides support for claims of unknown scope

• Claims narrow enough to avoid prior art and prove literal infringement

• Claims broad enough to hamper design around

• A variety of claims to different uses, to create marketing and licensing options


• Claims clear enough to provide notice of infringement

• Factually accurate

• Suitable vehicle for foreign filing – But is impossible to comply fully with all

countries’ requirements in one document

• Tells a compelling story


• Tells a compelling story of

– The cast of characters– The prior art (don’t call it

that, though!)– Likely users of the

technology– Our hero - the inventor(s)


• The “Background of the Invention” provides the setting

– Unfulfilled needs– Failures of others– Problems with the prior art– Serious nature of the problem


• But . . . “what you say may be used against you in a court of law”

• Three pitfalls to avoid in the background– Disclaimer via “criticism and disavowal”– Written description – failure of claimed subject

matter to address at least one state problem or object

– Use of stated problems to support allegations of obviousness


• A patent may have its own dictionary

– “As used herein, the term X means Y”

– Applicant’s definition controls claim interpretation• This is a good quality control item for reviewing patent

prosecutor’s work: Do the claims have key terms that are not defined or discussed in the specification? Is this omission intentional?

– If a term is not defined, then the meaning that one of ordinary skill in the art would give it applies.

• Sometimes, this is actually a better strategy than defining the term.

Disclosed but unclaimed subject matter

• Disclosed but unclaimed subject matter is “dedicated to the public”

• Maxwell v. J. Baker, Inc.

• Solution is preparation of a comprehensive set of claims

37 C.F.R. §1.56 Duty of candor

• Misrepresentations, misleading statements, and omissions violate the duty of candor and good faith.

• Result is that the patent may be held unenforceable due to “inequitable conduct”

• This is why patent attorneys get jumpy about filing cover sheet provisional patent applications!

More cover sheet provisionals? Did I pay my malpractice insurance premium?

Inequitable conduct is scary!

• Hoffman-La Roche, Inc. v. Promega• Specification contained an “example”

implying that an experiment had been conducted and results obtained

• The “example” was theoretical (prophetic) and never actually performed

• Result was that the patent was held unenforceable due to inequitable conduct

Note onUS / non-US patent drafting interface

• EPO and JPO - problem/solution approach to determine inventive step (obviousness)

– Telling the story of invention in the application will provide a good basis to meet this requirement

• EPO - strict interpretation of “new matter”– Limited ability to amend– Solution is to draft comprehensive claim set



application

Final draft of patent application

• Inventors need to review the final draft– Scientific accuracy– To check if all potential uses are indicated– To check if anyone else should be named

as an inventor– To check for false statements or

omissions– Because they must attest to being an

inventor of the filed document



application

Deadlines

• U.S. -- file by one year from – sale or offer for sale– public or commercial use

or disclosure

• World -- file before public use or disclosure

Provisional Applications §111(b)

• Act as a “placeholder”– Never substantively examined– Automatically lapse or mature one year from the

filing date

• Once filed, applicants can mark “patent pending”

• Can not claim priority from another appln.

• Patent term measured from filing date of subsequent non-provisional application (bonus year!)

Provisional filing requirements

• Required– A specification– A drawing (if required to understand the

invention)– A cover sheet or cover letter naming inventors– Fee

• NOT Required– A claim– An oath or declaration (37 C.F.R. §1.63)– An IDS

Provisionals as a basis for priority

• US Priority– 35 U.S.C. §119(e)

• Non-US Priority (PCT and National)

– Article 4 of the Paris Convention

Provisionals & US Priority

• Requirements to perfect priority to provisional

– Non-provisional application (35 U.S.C. §111(a)) filed within 12 months of the filing date of the provisional

– At least one common inventor– Reference to the provisional application– Provisional application must satisfy §112 ¶1 for

112, the invention claimed in the subsequent non-provisional application

Yet another crazy warning about cover sheet provisionals

• New Railhead Manufacturing– Patent claimed drill bit with certain angle

between the bit and its housing

*Sales >1 Yr.*

Jan 96 Jan 98Jan 97

Sales spring/ summer 96

2/97- File Provisional 11/97- File Utility

New Railhead Provisional

• Court found that the disclosure of the provisional application did not meet the written description requirement with respect to the subsequently claimed drill bit angle

• Applicant not entitled to priority back to the filing date of the provisional application (limited to 11/97 filing date)

• Sales occurred more than one year prior to the 11/97 date, thus patent invalid under 35 U S C §102(b)

Invalid!

Provisionals & Non-US Priority

• Article 4 of the Paris Convention– A “regular national filing” in one country

provides a basis for a priority claim in an application filed within 12 months in another member country

– Governs priority claims in PCT applications– Provisional applications are considered a

regular national filing– Must file PCT/foreign application(s) within 1

year of the filing date of the provisional application.

Patent filing procedures

• Choices for accomplishing a filing:

– USPS First Class Mail (Date Received at USPTO)

– Hand Delivery (Date Received at PTO Window)

– USPS Express Mail (Date Received at Post Office) in accordance with 37 CFR 1.10

• Itemized Post Card with Return Postage as proof of mailing

– e-Filing (EFS Filing Receipt EST)

– A new initial application may not be filed via fax.

Best Filing Practices – Non-provisional filing

• Specification with at least one claim• Abstract• Oath and Declaration of inventors, naming all,

with home address and citizenship (Executed) • Fee (with Fee Transmittal)• Priority Claim (if appropriate)• Assignment (may wait until after filing)• Post Card if Filing Express Mail• ADS-Application Data Sheet (if e-filed)• Transmittal (if paper filing) • IDS- Information Disclosure Statement

Note on Order of Inventors

• Order of inventors is of NO legal consequence

• But make no mistake – it is of significant social/political consequence

– Petition may be made under 37 CFR 1.183 to change order.

• Communicate inventor order preference to patent drafter

• Consider having an “alphabetical order” policy, but it won’t eliminate all problems

Application Data Sheet

• What is an “ADS”?– Applicant Information– Correspondence Information– Application Information– Representative Information– Domestic Priority Information– Foreign Priority Information– Assignee Information– Reduces Filing Receipt Errors– By getting data directly into USPTO computers– Old way- OCR & Scanned form– Current Way – metadata in special PDF form– USPTO Form SB14 Application Data Sheet

Why use an ADS

• Not mandatory, however:– Reduces Filing Receipt Errors– Ensures complete application– Allows Direct Input of Information– Allows some guidance as to Technology

Center/Class

File an Application in EFS

• Benefits of EFS– Drawings come in perfectly– Instant serial number– No chance of mailing loss– Eliminates Transmittals (for the most

part)– No Pesky Postcards to look for– Pay Fees Instantly

E-Filing - Procedural Suggestions

• Print Online Receipt and Place in File

• Check IFW files in PAIR to see what was filed with the USPTO

– Print THAT Copy & put into the File Jacket

• Directory (redundant-Word & IFW)

• Print PDF Receipt in IFW and Place in File

More information on electronic filing

• The EBC– http://www.uspto.gov/ebc/index.html

• EFS Web– http://www.uspto.gov/ebc/efs_help.html

• USPTO EFS Sandbox (practice)– http://www.uspto.gov/ebc/portal/

tutorials.htm

Questions?

Please ask!

Thank you to Ms. Jenna Cogswell at MST who helped prepare these slides!

Contact us at [email protected] or 419.255.5900 for permission to use these slides, or to ask questions. We are happy to let others use these slides, but we would like to know who they helped.

mailto:[email protected]

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

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