Introduction to Patents

Angela Lyon, MSc, Registered Patent Agent (US & CA)

What is a Patent Agent? Patent Attorney?

Scientific Education and Good Writing Skills

• Bachelor of Science & Law degrees; andPassed the Canadian Patent Agent Exam OR

• Graduate studies (M.Sc. and/or Ph.D.);Year(s) of Training in the intellectual property field;&Passed the Canadian Patent Agent Exam

Famous Canadian Inventions• Telephone• Basketball• Insulin• Zipper• Light bulb• Blackberry• Birth Control Pills • Goalie Mask

Edison did NOT invent the lightbulb?

Thomas Edison improved upon a 50-year old idea. He purchased the rights to a patent for an

incandescent lightbulb from inventors Henry Woodward and Matthew Evan who could not raise the financing to commercialize their invention. (Edison used lower current and an improved vaccuum inside the globe.)

PARTEQ’s Structure• Not-for-profit organization with:

• 2 registered patent agents• 3 commercialization managers • 3 administration & support staff• portfolio of 200+ technologies

Intellectual Property protection in Canada • Patents -- for inventions, i.e., new technology

• Copyrights -- for literary, artistic, dramatic & musical works

• Trade-marks -- words, symbols, pictures, etc. used to distinguishgoods and services

• Industrial Design Registrations -- for the shape, patternor ornamentation of industrially produced objects

• Integrated Circuit Topographies -- for the 3-D configurations of electronic circuits

• Plant Breeders’ Rights -- for certain new plant varieties

I’ve made a discovery! …Now what?• Has anyone else thought of this before? If so, is there

still an invention?• Try google and free patent sites

www.patentlens.net & www.freepatentsonline.com • Have you told anyone about this?

• Public disclosure limits protection to US and Canada – one year grace period

• Does anyone care? • What is the product or service? Will people pay $$

for it? “Neat” doesn’t always equate to “Need”

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

s. 101, U.S.C.

What is a patent?

An exclusive monopoly to make, use or sell a claimed invention for a limited period of time in a specific country.

Why should you patent your invention?

Right to exclude: Without the exclusive monopoly of a patent, others are free to make, use, and sell your invention.

Investment: It will be difficult if not impossible to attract investors without a patent.

Public benefit: The public is more likely to benefit from the invention if it is patented, because of the possibility for commercial activity that results from the patent.

No. 1 misconception about patents

Having a patent gives you the right to do something

Actually, the patent only gives you the right to EXCLUDEothers from doing (i.e., making, using or selling) something

Similarly, some other patent-holder could exclude YOU from doing the very thing you have patented!

Can you patent your invention?

Patentable Subject Matter • “ “invention” means any new and useful art,

process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter” [s. 2, Canadian Patent Act]

• An invention must produce an essentially economic result in relation to trade, industry, or commerce

• Do you (or your employer) hold the rights to your inventions?

An invention MUST be:

NovelUnobviousUseful

How novel is it?One year grace period after invention is first made

available to the public by the inventor(U.S.A., Canada, Philippines)

Absolute novelty(Rest of world)

Paris Convention (1887)Signed by most developed countries in the worldProvides one year “priority” period to citizens and

nationals of signatory countries

Novelty

Non-Obviousness

• Claimed invention must not be obvious to a person of ordinary skill in the art at the time the invention was made

• References may be combined to demonstrate obviousness

Utility • The invention must be useful

• Claimed invention cannot be previously known or available to the public

• Absolute novelty vs. grace period (U.S., Canada)

• References cannot be combined to destroy novelty

Criteria for patentability of an invention:Subject Matter • Claims must recite patentable subject matter

Definiteness• Claims must be supported by the disclosure

• Claims must make sense

What is in a patent?AbstractDescription of the Invention

• Written description, with examples, data, figures, etc., as appropriate

• Enablement• Best known mode (as of filing date)

Claims• One-sentence statements that define the subject

matter protected.

Critical tips for effective patent draftingMake sure:

• The commercial product/service is covered by the claims

• The claims will catch an infringer• The application teaches the “best mode” known to the

inventor(s)• The application teaches the FULL scope of the claimed

invention

File first patent application(e.g., US)

File further applications e.g.,Patent Cooperation Treaty (WIPO--international)

Patent Application is published

Patent issues

0 12 18 ~24-36+months

Publish

U.S. provisional applicationInformal, unexamined applicationExpires automatically after 1 year

Patent Cooperation Treaty (PCT)Single international applicationInternational searchOptional international examinationNational/Regional Phase entryOver 100 signatoriesParis Convention applies

Misconception about patents

Describing something in the patent application automatically means that it is protected by the patent

Actually, ONLY the final claim scope defines the scope of protection

Genus claim1. A method for effecting neuroprotection in a subject, comprising administering to the subject an effective amount of a nitrate ester having the formula

wherein E, F, G are organic radicals which may contain inorganic counterions.

O

N

O

O

E-F-G

Species claim1. A method for effecting neuroprotection in a subject, comprising administering to the subject an effective amount of a nitrate ester having the formula

.

S

N

O2NO

Inventorship

Incorrect inventorship can invalidate an eventual patent.

Steps of the process of invention (U.S. law)• Conception

• Reduction to practice• Actual• Constructive

“Inventor” must contribute to conception, not necessarily reduction to practice.

Who has patent rights?• First to file: (Canada, most of the rest of the world,

USA as of March 16, 2013)

• First to invent: (U.S.A.----until March 16, 2013)Having kept organized, dated, and validated lab notes was critical in overcoming an attack on your patent by a competitor claiming to have made the invention first.

Ballpark Costs for a U.S. Patent Application• Patentability search: ~$2 000• Preparation and filing: ~$8 000-$25 000• Prosecution (very unpredictable): ~$3 000-$6 000

per office action (before any extension of time fees)

• Issue: ~$1 500

Tell your agent WHAT• What is your invention? Product? Composition? Process?

More than one of these?

• What kind of process? Method of making? Method of using? Both?

• What works? What features or elements are critical? What can be skipped? What can be substituted? What is a bonus add-on? What is a special case?

• What did you do?

• What did you make?

Tell your agent WHY• Why is your invention different, better, faster, cheaper

than what came before? Why is there an advantage?

• Why was there a problem with the old way? Why was there a need for something new?

• Why did you try this approach? Why was this not suggested by, or obvious in view of, what came before?

Tell your agent HOW• How does your invention work?

• How does it work best?

• How would you move your advance still farther?

• How can your invention be applied in different contexts?

• How would a competitor design around your invention?

Tell your agent WHO• Who came up with the core concept?

• Who added to the inventive concept, however small the contribution?

• Who did the hands-on work (reduced the invention to practice)?

• Who else is working in this field, or on this problem? Who has related patents, publications, products?

• Who has rights in the invention under an agreement (e.g., an employment contract, a license, a research agreement)?

Tell your agent WHEN• When did you come up with the invention? (Provide a signed, dated lab-

book!)

• When do you plan to submit your manuscript, abstract, poster, grant proposal, thesis?

• When will it be posted on the web? When will the journal be mailed from the publisher? When will the book of abstracts be given to the conference attendees? When will the poster go up?

• When will you give your talk? When will the thesis defense take place?

• When will the invention be offered for sale?

• OR -- When WAS it made public?! When WAS it offered for sale?!

Some Useful Resources• United States Patent & Trademark Office (USPTO) • Canadian Intellectual Property Office (CIPO)

• European Patent Office (EPO)

• World Intellectual Property Office (WIPO)

• Patent Lens Database (www.PatentLens.net)

WorkshopWe have an article that looks like a loop of rope within some clear tubing. If you made replicas of it you would be infringing its patent. The inventor’s surname is Rayne. Find the patent on-line. What is this article’s use?

Workshop

Angela Lyon is an inventor on a U.S. Patent. What is the predominant U.S. classification number on her patent?

WorkshopQueen’s University has an international patent application called Lift Assist Device and Method. Go to www.wipo.int/pctdb/en/ and search using title AND owner(a) Using the Documents tab, locate its International

Preliminary Report on Patentability(b) Using the National Phase tab, which countries has this

application gone national in?

Workshop

We have a back support article.

What type of protection does it have?

Workshop

We have an article that looks like a yellow circular shape with cut-outs. Written on it is its U.S. patent number “D445,980”. What is this article’s use? Who owns this IP?

Workshop

There are on-line patent tutorials that are available through the Queen’s University at Kingston library website.

BONUS QUESTION: What is the name of the Queen’s librarian who writes the following

blog http://patentlibrarian.blogspt.com/ ?

Thank you!