William A. Ziehler, PhD

Registered Patent Attorney

January 23, 2020

Patent Law Survey for Academics & Entrepreneurs

© ziehler 2020

Let’s start at the beginning… United States Constitution

The Supreme Law of the Land

United States Constitution Article I, Section 8, Clause 8

[The Congress shall have power] “To promote the progress of science

and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective

writings and discoveries.”

Protecting the rights of authors & inventors…

(1) Patents (2) Trademarks* (3) Copyrights* (4) Trade Secrets*

“Intellectual Property”

*not discussed today

Patents(1)Design Patent

— to protect appearance — 14 years

(2)Utility Patent — to protect function — 20 years

What is a Patent?A patent is a contract (an exchange or trade) between an inventor and the United States.

The U.S. gov’t requests the inventor to teach how to make and use the invention, and in trade, the U.S. gov’t says the inventor can have patent rights for a limited time; 14/20 years.

What Is Patentable?Something that is…

(1) New (novelty)

(2) Useful (utility, industrial applicability)

(3) Non-obvious (inventive step)

(4) Patent Eligible Subject Matter

What do Patents Do?Patents give you negative rights.

That is, they do not give you the right to practice your invention.

Wait a minute…What did you say?

Intellectual Property Can Be Easy to Copy

Stop Others from Copying…

…a negative right.

Let’s go back a minute… What is a Patent?

We have a deal!

The inventor gets a limited monopoly and the United States (all of us!) benefits by the invention thereafter.

When the Patent Expires…

Anyone can make, use, or sell the technology…and society gets:

Generic pharmaceuticals, medical treatments, polymers, machines, electronics, photovoltaics, and so on…

“promote the progress of science and useful arts”

A medicine may take $400 million to develop, to test effectiveness, to test safety, and to optimize formulation and production…

But, it may take only pennies worth of chemistry to copy the medicine once you know how!

Example

So, the inventor may prevent others from making, using, and selling the patented medicine while the inventor sells the medicine to recover costs of inventing the medicine.

Example continued

But, at some point the patent expires and anyone can make, use, and sell the medicine. I.e., generic medicine or store-brand medicine.

Parts of a Patent Application(1) Specification

(a) introduction/background (b) figures/drawings (c) description — how to make/use (d) examples

(2) Claims (a) Legal definitions of the invention!

“the name of the game is the claim” — Giles Rich (former chief Judge of the Federal Circuit)

Specification • Must be enabling; i.e., can one of ordinary skill in the

art make/use the invention based upon the disclosure? • Can serve as the basis for 


claim amendments. • Fixed at time of filing; 


i.e., no new matter can 
be added to the filed 
application!

Parts of a Patent Application

Claims

• The legal metes and bounds of the invention. • Searched and examined by the USPTO. • To be patentable, must be found:

— definite/clear to one skilled in the art — supported by the written description — novel, useful, nonobvious, patent eligible

Parts of a Patent Application

Example Claims 1. A composition comprising A and B. 2. The composition of Claim 1, further comprising C. 3. A method of making a composition comprising

reacting X and Y to form A and B. 4. A method of treatment comprising administering a

composition comprising A and B.

Parts of a Patent Application

1

2

3 4

n

The claims are compared against the prior art. What is the prior art?

All public information existing before the priority date of the patent application. E.g., journal articles, white papers, sales brochures, webpages, public use, etc.

Examination of a Patent Application

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PRIOR ART

NoveltyThe claims are examined to see if a single piece of prior art discloses all of the claimed features in the fashion claimed.

E.g., a portion of a claim (or even almost all of the claim) may be known in the art, but the claim is novel if there is just one distinguishing feature over the prior art.

VS.Claim doc X

Novelty

I claim a composition comprising A and B.

doc 1 doc 2 doc 3 doc 4 doc 5

A B A+Bʹ A+B+CA+B

Yes Yes Yes No No

Is the following claim novel over these 5 prior art documents?

ObviousnessThe claims are examined to see if there is a rationale in the prior art that would direct one skilled in the art to combine prior art documents or known features to account for all of the claimed features.

E.g., is there a teaching, suggestion, or motivation in the prior art to combine documents to provide the sum of the claimed features?

I claim a composition comprising A and B.

Obviousness rationale examples in view of 5 prior art docs.

Obviousness

doc 1 doc 2 doc 3 doc 4 doc 5

A B A+Bʹ B for use X

A for use X

obvious

No obvious (if limited # of Bs exist)

Judicial exceptions to what may be patented.

Patent Eligible Subject Matter

Not patentable if the claim is directed to:

1. Abstract idea (e.g., computer algorithm, mental process)

2. Law of Nature

3. Natural Phenomenon (e.g., natural products)

Patent Filing & Prosecution Basics

1. Why file a patent application?

2. When should I file a patent application?

3. What to expect during examination

Why File a Patent Application?

(a) Expected competitive activity? (b) Is it a core part of your commercial

interests, if not, can it be licensed? (c) Is it commercially viable? 


E.g., is it price competitive to currently available alternatives?

2. Can the technology be reverse-engineered? (a) Product Claims versus Process Claims (b) Keep methods/processes/know-how as trade secrets?


(Claim Prior User Rights if later patented by another)

1. Is the technology commercially valuable?

When to File a Patent Application1. When the invention is enabled


i.e., one skilled in the art can make/use based upon the disclosure.

Note the difference between a concept and having a working embodiment reduced to practice (whether actual or prophetic).

2. Prior to any public disclosure/use!
Beware of dates of past and upcoming poster presentations, journal publications, dissertations, webpages, offers for sale, etc.

Don't let your own activities become prior art to your invention!

NB: The U.S. has a 1-year grace period for certain of your own activities, but most of the world requires absolute novelty.

When to File a Patent Application3. To establish priority —

a. competitive field b. desire or need to disclose to other parties

4. In the U.S., the first inventor to file wins in a priority contest.

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Application by X

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Application by Y

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Application by Z

What to Expect during Examination

1. Depending on the art unit, it may take up to a year or more after filing for examination to begin.

2. The Examiner will issue an Office Action enumerating why each of the patent claims are either rejected or allowable.

3. Wait . . . what? All my claims are rejected?

What to Expect during Examination

4. Applicant can file a Response 
to the Office Action

(a) Point out mistakes by the Examiner in interpreting the claims, in interpreting the cited prior art, in constructing an obviousness rationale, etc.

(b) Amend the Claims — all amendments must be supported by the specification! (no new matter)


What to Expect during Examination4. The “Office Action—Response” sequence can be an

iterative process until all rejections are overcome.

Patent Office procedure dictates the nature of amendments, timing, and continued examination; e.g., Applicant can pay fees for another round of examination.

New rejections can be made to amended claims.

5. Allowance or Abandonment

1. Patentability Analysis a. Check whether the technology is novel prior to investing in a patent

application and associated prosecution costs.

2. Freedom-to-Operate (Clearance Opinion) a. Check whether the technology may infringe one or more patents.

The technology may be patentable, but making/using/selling the technology may infringe one or more patents!

3. Infringement Analysis — does the technology infringe a particular patent?

U.S patent law provides for treble damages against a willful infringer!

Other Considerations

A patent can be dominant over another patent:

For example,

Patent ‘123 claims composition A. Patent ‘456 claims composition A+B.

One could not make/use/sell composition A+B without a license to Patent ‘123.

This is a common occurrence in technology development; as most inventions are improvements on what came before.

A

A+B

Questions?

William A. Ziehler, PhD

wziehler@shumaker.com

Shumaker, Loop & Kendrick, LLP

FL, NC, SC, MI, OH

Thank You