what international businesses need to know about us patents · a patent does not give you the...

What international businesses need to know about US patents

Jennifer Blount, Ph.D., J.D.

Erik Huestis, J.D.October 23, 2019

© 2015 Foley Hoag LLP. All Rights Reserved. 1© 2016 Foley Hoag LLP. All Rights Reserved. 1

Introduction / Agenda

1. Patent Fundamentals

2. Patent Process

3. Patentability

4. Post-Grant

5. Best Practices


PATENT FUNDAMENTALS


Patent Taxonomy

Provisional Application- NOT a “Provisional Patent”- 12-Month Placeholderthen

PCT Application- International Application (152 Participating States)- 18-Month Placeholder

Non-Provisional Application (a/k/a National Application)- Per-Country- Matures into a Patent after Examination

Patent- After Grant/Issuance- Conveys Enforceable Rights


What does a Patent Get You? A limited term monopoly to make, use, sell, or import your invention

- Scope Determined by Specific Claims- 20-Year Term (with Caveats)- Rights are Per-Country

A patent does not give you the unfettered right to practice your invention

Patent can be Licensed or Sold- e.g., Licensing Different Companies to Enter Different Markets

Patent can be Enforced in Court, or Through Customs- Damages, Injunction, Seizure

Contributes to Valuation of Company- Why buy your company or your product when I can just make my own?


Filing Timing

An invention is only patentable prior to public disclosure (in Europe)

In the US, there is a one year grace period, so an invention may be patent eligible in the U.S. even after disclosure

Academic papers, conference presentations, poster sessions, etc., all can count as public disclosure

Once public, if no patent is pursued within the appropriate time limit, the invention is committed to the public domain.


PATENT PROCESS


Prosecution After Filing, Examiner Searches Prior Art

Examiner Issues Office Actions- Addressing Formal Issues- Assessing Novelty and Non-obviousness

Argument for Patentability- Claim Amendments- Interviews

USPTO Averages- 14.7 Months from Filing to First Office Action- 30.6 Months from Filing to Issuance or Abandonment


Typical Timelines

File Provisional Application• 0 Months

File PCT (International) Application• 12 Months

Application is Published• 18 Months

File National Applications• 30 Months

Receive First US Office Action• 45 Months

Patent Issued in US• 61 Months

File Provisional Application• 0 Months

File Non-Provisional Application• 12 Months

Application Publishes• 18 Months

Receive First Office Action• 28 Months

Patent Allowed• 43 Months

Standard

U.S. Only

File Non-Provisional Application• 0 Months

Receive First US Office Action• 3 Months

Patent Allowed in US• 6-8 Months

Expedited U.S. Only


Allowance

After Allowance and Payment of Issue Fees, Patent Issues

Prior to Issuance, May File Additional Applications- Maintaining Right to Filing Date

Patent Term is 20 years from earliest non-provisional filing date- With various adjustments

Marking- “Patent Pending” vs. “Patented”


PATENTABILITY


When is an Idea Patentable?

Although you need not have built the invention yet, you need to have enough information to do so.- Identifying an interesting avenue of research isn’t enough.

New, Useful, Non-Obvious- Useful is Easy- New is Easy

Non-Obvious (Inventive Step) is Hard- Would someone of ordinary skill have come up with the idea?- How much experimentation would it take to make the idea work?- “Obvious” ideas include: predictable optimizations, substitution of known

materials and techniques


Questions to Ask Your Team

What solutions are you particularly proud of?

What problems kept you up at night?

What solutions are reusable?

What solutions are key to the functioning of the product?

What can be reverse engineered from the product?


Special Note on Software

Is this a technical solution to a technical problem?

Does this contribute to the functioning of an underlying machine?


Technical Requirements

Specification- Enablement – describe how to make and use the invention- Written Description – Inventor had possession of the claimed invention at

the time of filing- Use to ascertain the scope of the claims- Minimal amendments

Claims- Define the scope of patent protection- Significant amendments during prosecution


Inventorship

“Inventorship” is a legal determination

The standard for inventorship is NOT the same as the standard for including co-authors on a scientific paper

University invention disclosure forms often refer to “contributors” until the patent attorneys can make a factual determination regarding inventorship

Touchstone for inventorship is the *conception* of the invention


POST-GRANT


Prosecution and Court Decisions

Post Grant Proceedings


Case law: implication on patent drafting

Patent process is continuously evolving- Congress:

• AIA/Patent reform- Decisions from:

• U.S. District Courts• Court of Appeals for the Federal Circuit (CAFC)• United States Supreme Court decisions• Patent Trial and Appeal Board (PTAB)

Consequences:- Stronger claims and specification- Limit invalidity challenges- Better infringement cases


Formal Requirements

Maintaining Pendency

Marking

Maintenance Fees- 3.5, 7.5, and 11.5 years

No need to “Police”


BEST PRACTICES


Ownership of Inventions

By default, an inventor owns their own inventions (in the US).- In many foreign jurisdictions an employer owns inventions that originate

within the scope of employment.

BUT, employment agreements almost always assign inventions to the employer.

Likewise, graduate fellowships almost always assign inventions to the University.

Your own companies should have employment agreements in place that provide for intellectual property ownership (among other things).- This is a particular risk with contractors.


Confidentiality and Disclosures Anyone with access to innovations should be under confidentiality

obligations.- Non-Disclosure Agreements for Contractors, Vendors, etc.- Employment Agreement for Employees

Obligation to Assign and Assist

Trade Secret Protection Hinges on Reasonable Measures to Protect- Both Legal and Operational Measures (InfoSec)

Public Disclosure Limits Patent Rights- Starts One Year Grace Period in U.S. for Filing- May Give Up All Rights in Europe (and Other Jurisdictions)


Business Decisions re Patenting

Is this important to the business?

Are you likely to obtain useful scope of protection?

Do your investors, partners, or licensees demand filing?

Can you invention reasonably be kept secret?


Pre-Filing Search Novelty and Non-Obviousness in View of Prior Art

- Patent publications- Journals- Conference Presentations- Textbooks- Since the Beginning of Time- In any Language (with Some Caveats)

Can I use Features Appearing in the Prior Art?

Do I really want to know?- Willful Infringement

Patent Search is Limited by What is Published


Freedom to Operate

Does my product infringe anyone else’s patent rights?- What jurisdictions?- Who would infringe?

Complex Products Involve Many Patents- e.g., Apple is estimated to have filed 1,291 mobile device related patents

since 2007

Which Features do I Need to Clear?- What is critical to success of product?

Invalidity or Non-Infringement- Proactive Challenges


Patenting pointers

Maintain up-to-date records- Potentially relevant publications- Experimental methods- Supporting figures- Employment agreements/assignments- NDA/CDA/MTA

Be cautious about making an inadvertent disclosure- Actually, don’t just be cautious, be paranoid- If you do make a disclosure, tell an attorney immediately

File complete applications early and often If you are affiliated with a university, get to know your Technology

Transfer office liaison

© 2015 Foley Hoag LLP. All Rights Reserved. 27© 2016 Foley Hoag LLP. All Rights Reserved. 27Proposal or event name (optional)

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Other Questions?

Jennifer Blount, J.D., Ph.D.

[email protected]

+1.617.832.1216

Erik Huestis, J.D.

[email protected]

+1.646.927.5525

© 2015 Foley Hoag LLP. All Rights Reserved. 28© 2016 Foley Hoag LLP. All Rights Reserved. 28Proposal or event name (optional)

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Backup Slides


Design vs. Utility

“Patent” usually refers to a Utility Patent- Applies to a Useful Invention- “any new and useful process, machine, manufacture, or composition of

matter, or any new and useful improvement thereof”

Design Patent (a/k/a Industrial Design)- Applies to Look and Feel- “any new, original and ornamental design for an article of manufacture”- Shorter Term (14 or 15 Years)

Plant Patents

“Petty” Patents and Other Unexamined Registrations


Offensive and Defensive Use

Strategic Tool- License agreements- Joint Ventures- Corporate valuation- Blocking competition- Blocking from patenting- Bargaining chips

Revenue Driver- Top 10 drugs accounted

for $76.38 billion in sales

- Each of top 10 drug more than $5.5 billion each

- Settlement and Verdicts- Licensing


You Don’t Patent a Result

You patent a process, a machine, or a composition giving rise to a result

Engineers tend to focus on the benefits of the invention, not on the “invention”- But ours is better, faster, stronger!


Technical Requirements

Only one invention per patent- May file “children” or “offspring” patent applications (“divisional

applications”) if more than one invention is claimed in a “parent” patent application

Utility


Collecting Inventions

Standardized invention disclosure forms

Tap into the development process–Schedule in-team assessment to coincide with project milestones

–e.g., at the end of each sprint

Memorialize decision trees and forks in the road of the technology development

–Consider making this a living document


HOW TO READ A PATENT


How to Read a Patent


Cover Page

Issued Patent

First Named Inventor

Issue Date

Patent Number


Title, Inventors, Owner, Term

Title

All Inventors

Owner at Issuance

Term Adjustments


Application Data

Pre-Issuance Publication

Priority Date

Serial Number

Filing Date

Classification


Prior Publication

Pre-Issue Publication

First Named Inventor

Publication Date

Publication Number


Prior Art, Examiner, Attorney

Prior Art Considered

Examiners

Law Firm


Design

CLAIMThe ornamental design for an apparatus for delivering a closure element, as shown and described.

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