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By: Pooria Gill Ph.D. of Nanobiotechnology

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1 By: Pooria Gill Ph.D. of Nanobiotechnology How to Patent ?

2 What is Patent? Patent, is a legal document granted by the government giving an inventor the exclusive right to make, use, and sell an invention for a specified number of years. Patents are also available for significant improvements on previously invented items. 1

3 Goal of Patent System! The goal of the patent system is to encourage inventors to advance the state of technology by awarding them special rights to benefit from their inventions. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright. Patent law is one branch of the larger legal field known as intellectual property, which also includes trademark and copyright law. 2

4 What is patentable? To qualify for a patent, the invention must meet three basic tests: First, it must be novel, meaning that the invention did not previously exist. Second, the invention must be non-obvious, which means that the invention must be a significant improvement to existing technology. Simple changes to previously known devices do not comprise a patentable invention. Finally, the proposed invention must be useful. Legal experts commonly interpret this to mean that no patent will be granted for inventions that can only be used for an illegal or immoral purpose. 3

5 Discovery is NOT Patentable! Some types of discoveries are not patentable. No one can obtain a patent on a law of nature or a scientific principle even if he or she is the first one to discover it. For example, Isaac Newton could not have obtained a patent on the laws of gravity, and Albert Einstein could not have patented his formula for relativity, E=mc2. 4

6 EPC Law an inventive step Under the law of the European Patent Convention (EPC), patents are only granted for inventions which are capable of industrial application, which are new and which involve an inventive step. for solving a technical problem An invention may be defined as a proposal for the practical implementation of an idea for solving a technical problem. capable of industrial application An invention is capable of industrial application if it can be made or used in any kind of industry, including agriculture, as distinct from purely intellectual or aesthetic activity. 5

7 4 Types of Patents Under the United States law 4 types of patents can be issued: Utility patents Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof. Design patents Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. The term of a design patent is 14 years. Plant patents Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. Plant patent protection is available for biotechnology processes, genes, seeds, plant parts, cultivates, and hybrids. Utility patents may also be obtained on plants if the invention is new, useful, and not obvious. Provisional patents Provisional patents allow applicants to inexpensively establish an early filing date, or constructive reduction to practice, for an invention described in the provisional application without starting the 20 year patent term clock. It can provide up to twelve months to further develop the invention, determine marketability, acquire funding or capital, seek licensing or manufacturing. 6

8 What is not patentable? Some inventions cannot be patented! Under the law of the European Patent Convention (EPC) the list of non-patentable subject- matter includes: Methods of medical treatment or diagnosis New plant or animal varieties The following are not regarded as inventions: Discoveries Scientific theories Mathematical methods Aesthetic creations (such as works of art or literature; schemes, rules and methods for performing mental acts, playing games or doing business; presentations of information; computer software) 7

9 History of Patent 8

10 Patent Process: Overview 9

11 Patent Process: The Idea 10

12 novel Once you have your idea, one of the first things to do is follow the practice of industrial researchers and conduct a preliminary literature search to determine that your invention has not already been described. Quite simply, maybe someone else has already had the same idea and received a patent. Further investigation is not a wise investment of time without knowing your idea is novel. practicality useful reduction to practice The next thing to do is test practicality: do you have something that the public is willing to pay for. Under the conditions of the patent law, your discovery must be "useful". This means that your discovery must have a purpose and your invention must work. The process of making sure that your invention will work to perform its useful purpose is called "reduction to practice". use lab tests to demonstrate usefulness It is not always necessary to physically reduce your invention to practice. You may use lab tests to demonstrate usefulness. Filing a patent application also is a type of reduction to practice. 11

13 Patent Process: Document 12

14 documenting It is important to keep accurate records documenting your progress on your invention, starting with a written record of your idea even before doing any experimentation. Then make a complete written description, with drawings and photographs if appropriate, at all stages of your experimentation. Keep any correspondence about your work, sales receipts from materials, and any other records that might help you prove the facts and dates of your accomplishments. the records could be relied upon to establish who was the first inventor Get at least one trusted person who can understand your invention and corroborate your work to sign and date your written description of your project. Then sign the records yourself and affix the date. If another inventor should come up with "your invention" at about the same time, the records could be relied upon to establish who was the first inventor. extremely secretive At this stage, you should be extremely secretive about your work. If you describe your invention in a printed publication, or if you use it publicly or place it on sale, you must apply for a patent within a year of the public disclosure. Otherwise, your right to patent the invention in the U.S. will be lost. Importantly, although you have a one-year grace period in the U.S. after public disclosure or sale, a public disclosure even one day before filing your patent application can bar the patent in foreign countries. 13

15 Patent Process: Research 14

16 Now what? You've tested your idea and you know it works. You've kept complete and accurate records of your conception and experimentation. Now what? Under the conditions of the patent law, you must establish that your idea is novel and not obvious. An invention cannot be patented if before you made your invention: The invention was known or used by others in this country. The invention was previously patented in this or another country. The invention was described in a printed publication anywhere in the world. There were publications, patents or uses that make your invention obvious. World Wide Web You can do searches on the World Wide Web. Two major sites that allow you to search patents filed since the mid-1970's are: The U.S. Patent and Trademark Office - there is no charge to search on this site. Delphion - formerly the IBM Intellectual Property network, this site charges a subscription fee. If you decide to get help, be sure to hire a practitioner who is registered to prepare and prosecute patent applications. You can consult the Yellow Pages of your phone book; the Patent and Trademark Office also maintains a list of registered patent attorneys and agents. The list is also available on the U.S. Patent & Trademark Office web site. The list is also available on the U.S. Patent & Trademark Office web site. 15

17 Patent Process: Study 16

18 you will have to study the patents and publications Whether you conduct the search yourself or hire someone else to do it, you will have to study the patents and publications that are identified. If any of the patents disclose your idea, you cannot be granted a patent. Likewise, if your invention is described in any of the scientific literature, you cannot obtain a patent on it. It is possible that one or several existing patents or publications might describe something similar to your discovery, but they may be different in some way. In order for you to obtain a patent for your invention, those differences must be unobvious to anyone with knowledge in the area related to your invention. For example, ordinary differences, such as the substitution of one material for another, changes in size, or other obvious modifications generally are not patentable. But you can obtain a patent to cover an improvement or a new feature which makes your invention different from the prior patents. Generally you should not attempt to make these determinations on your own. The determination of unobviousness and of patent ability of an invention is often a complex issue involving a combination of legal principles and technical facts. Generally you should not attempt to make these determinations on your own. 17

19 Patent Process: Apply 18

20 An application for a patent consists of three parts: 1.A written description of your invention. specification claims This document, called a "specification", must be clear enough so that anyone skilled in the subject matter of the invention could recreate your idea and use it. It must fully and completely describe the invention; nothing may be withheld. This part of the application must conclude with one or more "claims" which legally define your invention. The wording of this part of the application is critical to the patent rights, if any, you may receive. Although you have the right to prepare your own application documents, getting assistance of a licensed patent practitioner will help your chances of obtaining good patent protection. With the written description, you must also submit a signed declaration stating that you believe yourself to be the first inventor of the discovery named. illustrationdrawing 2. An illustration or drawing of the invention. An illustration or drawing of the discovery, in those cases where they are possible, must show every feature described in the first part of the application. filing fee 3. A filing fee. Fees change periodically and should be verified by your patent practitioner. Consult the U.S. Patent & Trademark Office's web site for current fees ( 19

21 To give you an idea of cost (for 1999): utility patent The basic filing fee for an application for a utility patent is $690 design For a design patent, $310 plant For a plant patent, $480 based on the total number of claims (Additional fees are based on the total number of claims described in the application.) When a utility patent is issued, another fee of $1,210 is required: For a design patent, $430 For a plant patent, $580 Maintenance 3 1/2 years7 1/2 years 11 1/2 Maintenance fees are required periodically for the duration of a utility patent to keep it in force. Maintenance fees are due 3 1/2 years after issue ($830), 7 1/2 years after issue ($1,900) and 11 1/2 years after issue ($2,910). small entity an independent inventora small businessnon-profit organization inventor All fees (filing, issue and maintenance) are reduced by half if the applicant is a "small entity"- in other words, an independent inventor, a small business or non-profit organization inventor. When the application documents are finished they should be mailed to the Commissioner of Patents and Trademarks. 20

22 Be patient, it takes about two years for the Patent Office to process each application Once in the Patent Office, the papers will be studied by a Patent Office examiner. You will be notified in writing about any decision concerning your patent application. (Be patient, it takes about two years for the Patent Office to process each application). If your patent is denied, then you and your patent practitioner can amend the claims and point out why the patent should be granted. It is usual that the patent examiner will first reject your application even if eventually it is found to be patentable. This exchange of rejections from the Patent Office and amendments by you and your practitioner may continue until the patent examiner allows your application or says that the rejection is final. If you wish to continue seeking a patent in this eventually, then you and your practitioner may appeal to the Board of Patent Appeals and interferences. congratulations! If your patent is granted, congratulations! You now have a period of years in which to market and turn a profit on your idea. Unless you have some financial resources of your own, you will probably need to seek help in the marketing of your invention. Some suggestions for locating manufacturers and individuals who might be interested in your invention: Seek information from chambers of commerce and banks. Seek information from the district offices of the Small Business Administration and of the U.S. Department of Commerce. Write to the governor of your state to obtain a list of planning and development agencies that assist manufacturers and communities that are seeking new product/process ideas. U.S. Patent and Trademark Office Official Gazette If you want to sell or license your patent rights, you can, for a fee of $25, request the U.S. Patent and Trademark Office to publish such a notice in the Official Gazette, the weekly publication of information related to patents and trademarks. You can find copies of the Gazette in the library, or you may buy it from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C For more information, visit the Patent Trade Office at For more information, visit the Patent Trade Office at 21

23 Thanks for your Attentions Mazandaran University of Medical Sciences and Health Care Sari, I.R. Iran

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