Patents an IntroductionPratt Professional Masters Program Seminar SeriesNovember 30, 2012

Ruthie D. Lyle, PhDIBM Master InventorRegistered Patent Agentrlylecannon@gmail.com

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The information provided in thispresentation is for informational purposes only. This presentation does not serve as legal

advisementor an interpretation of patentassets. For all concerns, please consult a licensed IntellectualProperty Attorney or Patent

Agent.

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Overview

• What is a patent?What

• How is patent protection enabled?

• How does a patent work?

• How can inventive ideas impact the marketplace?

How • Why should you care?

• Why should corporations care about developing a patent strategy?Why

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Patents – Enablement When were patent laws first

considered in the United States?

What agencies enables patent protection and govern patent laws?

Interesting “Patent Firsts”

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When? “.. 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; …”

The Constitution of the USA

Article 1 – The Legislative Branch Section 8 – Powers of Congress Signed April 10, 1790 by President George Washington

Reference: http://www.usconstitution.net/xconst_A1Sec8.html

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United Stated Patent and Trademark Office (USPTO)

World Intellectual Property Organization (WIPO)

“to encourage creative activity, to promote the protection of intellectual property throughout the world”.

Specialized Agency of the United Nations created in 1967, for the express purpose of governing international laws that increase protection for intellectual property, for example the Patent Cooperation Treaty

References: http://www.usptocareers.gov/Pages/WhyWork/About.aspxhttp://www.wipo.int/pct/en/texts/articles/atoc.htm

Enabling Patent Protection

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First Issued US Patent

"Improvement, not known before such Discovery, in the making of Pot ash and Pearl ash by a new apparatus and Process“

The first patent issued in the United States to Samuel Hopkins of Pittsford, Vermont in 1790.

Pot ash was used to make: soap, glass, etc; and was thought to be a key aspect of the emerging chemical industry in the nineteenth century.

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African-American Leaders Incredible Americans

References: http://americacomesalive.com/2012/02/08/sarah-e-goode-ca-1850-1909-inventor/

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Patents – Basic Nuts and BoltsWhat is a patent and how does

it work?

How can a comparison between a patent asset and real-estate asset be used to “get a feeling for” what protection a patent provides legally?

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…exclude others from making, using, offering for Sale …

References: http://www.uspto.gov/patents/

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General Patent FormatTitleList of InventorsAssigneeReferences CitedAbstractDrawingsBackground/

SummaryDescription of

EmbodimentsClaims

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How Patents WorkFor a certain period of time patent-holders (sometimes

the inventor themselves) are allowed to control how their inventions are used, potentially allowing them to reap financial rewards for their work.

Conception •An Inventor conceives a novel, useful, non-obvious idea

Prosecution •Patent prosecution process is successfully completed (US and/or PCT)

Patent Asset •Patent Issued

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Comparing to a Real Estate Asset

Generally, in real estate a deed defines where the boundaries of a property begin and end. The owner of the property can choose to negotiate a compromise or easement with a potential trespasser.

At a high-level patent claims defines the legal boundaries of what is protected in a patent. The owner of the patent can choose to negotiate a compromise such as a license or assignment with an infringer.

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Patents – The ValueWhy is a fundamental knowledge of

patent important to you?

Why is a solid patent strategy important to companies?

What can we learn from the recent patent wars we’ve read about in the news?

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An Example, in the News …

Reference: http://www.jdjournal.com/2012/07/24/apple-sues-samsung-over-its-android-technology-for-2-525-billion/

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Potential Broader Impact

Reference: http://www.jdjournal.com/2012/07/24/apple-sues-samsung-over-its-android-technology-for-2-525-billion/

http://www.apple.com/about/job-creation/

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Patent Assets Enable

Patent Assets

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Court Battles Go Way Back

Reference: http://www.journalgazette.net/article/20121022/BIZ07/310229982/1234/biz07

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Closing Thoughts

Personal Opportunities

A Neat Idea!

Patent Research Tools and Resources

Explorations on Your Own

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Personal OpportunitiesEnhance your

professional credentials

Academic Tech Transfer and Start-ups Opportunities

Corporate Employee Inventor Compensation Programs

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Gorilla Glass – a “neat” idea!

Reference http://www.corninggorillaglass.com

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Research -Tools and ResourcesPatent and Patent Application

SearchesUSPTO: http://www.uspto.gov/patents/process/search/index.jsp

Google Patents: http://www.google.com/patentsFreePatentsOnline: http://www.freepatentsonline.com/

Check Patent Application StatusPublic Pair: portal.uspto.gov/external/portal/pair (including PCT applications)

Other Resources

Reference: http://www.uspto.gov/patents/

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Exploration on Your Own1. Practice using one or more patent search tools and

locate patent number 8,170,872. Retrieve a PDF copy of the patent and complete a cursory review noting the format.

2. Considering the more recent Gorilla Glass and early Cabinet Bed patents, in the context of the capabilities of their time, reflect on the tremendous impact patents can have on the market place.

3. Read the online article, Apple’s patent war is old hat by Susan Decker and form your own opinion on the impact of patent litigation in light of US Constitution Article 1, Section 8.

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Conclusion

Reference: http://www.usptocareers.gov/Pages/WhyWork/About.aspx

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