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Patent Basics for Entrepreneurs October 17, 2014 Michael P. Dilworth, JD Anthony D. Sabatelli, PhD, JD © Copyright 2014.

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Presentation on theme: "Patent Basics for Entrepreneurs October 17, 2014 Michael P. Dilworth, JD Anthony D. Sabatelli, PhD, JD © Copyright 2014."— Presentation transcript:

1 Patent Basics for Entrepreneurs October 17, 2014 Michael P. Dilworth, JD Anthony D. Sabatelli, PhD, JD © Copyright 2014

2 Overview 1.About Us and Our firm 2.Background on Inventions and Patents 3.How a Patent Works 4.Patent Time Line 5.First to File 6.Patent Examples and Recent Trends 7.Useful Links and Sites © Copyright

3 1. About Us and Our Firm © Copyright 2014

4 2. Background on Inventions and Patents © Copyright 2014

5 IP Basics What is a patent? © Copyright

6 IP Basics What is a patent? What is an invention? © Copyright

7 IP Basics What is an invention? © Copyright

8 IP Basics What is an invention? An invention is a discovery or idea that is made into a machine, product, or process. © Copyright

9 IP Basics What is an invention? An invention is a discovery or idea that is made into a machine, product, or process. An invention is “intellectual property”. © Copyright

10 IP Basics What is a patent? © Copyright

11 IP Basics What is a patent? It is a contract – a legal document. © Copyright

12 IP Basics What is a patent? © Copyright

13 IP Basics What is a patent? A patent describes and “claims” an invention. © Copyright

14 IP Basics What is a patent? A patent describes and “claims” an invention. A patent “protects” an invention. © Copyright

15 IP Basics What is a patent? A patent describes and “claims” an invention. A patent “protects” an invention. A patent gives an inventor certain rights to his or her invention. © Copyright

16 IP Basics What is a patent? A patent describes and “claims” an invention. A patent “protects” an invention. A patent gives an inventor certain rights to his or her invention. – the right to exclude others from making, using or selling the invention (more on this later) © Copyright

17 A Patent Is Similar To A Deed To A House A deed describes and shows ownership of a house – “real property”. © Copyright

18 A Patent Is Similar To A Deed To A House A deed describes and shows ownership of a house – “real property”. A patent describes and shows ownership of an invention – “intellectual property”. © Copyright

19 US Patent and Trademark Office Patents Patents are issued by the government © Copyright

20 US Patent and Trademark Office Patents Patents are issued by the government The United States Patent and Trademark Office Located in Alexandria, Virginia (and now some satellite offices) © Copyright

21 Constitutional Basis 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. U.S. Constitution, Article I, Sec. 8, Par. 8 © Copyright

22 The US Patent System Was Established In 1790 Thomas Jefferson, then as Secretary of State, was instrumental in establishing the US Patent system. He was one of the first commissioners of the US Patent Office. He was also an inventor. © Copyright

23 The Patent as a Contract Patents are a contract with the government. The inventor discloses how to make and use the invention in the written patent application. In return, the inventor receives the right from the government to exclude others from making, using, and selling his or her invention for 20 years. © Copyright

24 The Patent as a Contract When the patent expires, or when the owner chooses to let it lapse by not paying maintenance fees, the claimed subject matter enters the public domain, and the public benefits from the disclosure. The useful arts and the progress of science and technology are promoted by the disclosure, while there would have been little or no public benefit if the inventor chose to keep the invention a secret. © Copyright

25 What is patentable? Any new process, machine, manufacture or composition of matter. Examples:  Cell phones, computers, and other electronic devices  Pharmaceuticals, food additives  Jet engines, hockey sticks, golf balls  Soaps, cosmetics, tooth paste  Chemical manufacturing processes  Methods of doing business (?)  Methods of conducting research (?)  Diagnostics (?)  Computer software (?)  DNA (no!), cDNA and other biomolecules (yes, for now) © Copyright

26 Requirements for Obtaining a Patent 3 Requirements Utility – the invention must have at least one use. Novelty – the invention must be new. It must not have been previously known. Nonobvious – the invention must not be “obviousness” over what is already known (the “prior art”). © Copyright

27 3. How a Patent Works © Copyright 2014

28 How does a patent work? Example 1. – Jennifer is an inventor. – She builds a chair (assume that chairs were unkown). – She applies for a patent on her chair. – The Patent Office awards Jennifer a patent. © Copyright

29 How does a patent work? Jennifer can now use her patent to exclude others from making, using, and selling chairs, unless she allows them to do so (by granting licenses). Jennifer makes a lot of money selling her chairs to other people. Some people even pay Jenifer to license her chair patent so that they can make their own chairs. © Copyright

30 How does a patent work? Example 2. – Paul buys a chair from Jennifer. – He finds the chair very uncomfortable – the back is too straight. – He builds an improved chain with an adjustable back. – He files a patent. – He is awarded a patent on his adjustable chair. © Copyright

31 How does a patent work? Paul can now use his patent to exclude others (including Jennifer) from making, using, or selling chairs with adjustable backs, unless he allows them to do so. However, one day, Jennifer sees Paul sitting in his adjustable chair... What can Jennifer do? © Copyright

32 How does a patent work? Jennifer can assert her patent rights. She can prevent Paul from making, using, or selling his adjustable chairs this is because Paul’s adjustable chairs infringe Jennifer’s dominant chair patent. Paul either has to stop making, using, and selling his adjustable chairs, or he must get a license from Jennifer to continue to do so. © Copyright

33 Freedom to Operate vs. Patentability As seen from these examples, being issued a patent does not give one the right to practice one’s invention. Freedom to Operate and Patentability are opposite sides of the patent coin. © Copyright

34 4. Patent Time Line © Copyright 2014

35 Patent Time Line © Copyright File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes Enter National Stage $$$ 01 yr18 mo 30 mo 21 yrs (20 from PCT Appl.) 26 yrs Patent Issues Patent Expires Up to 5 years Patent Term Restoration (drugs) 35 USC § yrs Up to 3 years Patent Term Adjustment for USPTO Delays 35 USC § mo 0

36 Patent Time Line © Copyright File Provisional Patent Application $ 0

37 Patent Time Line © Copyright File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ 01 yr

38 Patent Time Line © Copyright File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes 01 yr18 mo

39 Patent Time Line © Copyright File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes Enter National Stage $$$ 01 yr18 mo 30 mo

40 Patent Time Line © Copyright File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes Enter National Stage $$$ 01 yr18 mo 30 mo 0

41 Patent Time Line © Copyright File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes Enter National Stage $$$ 01 yr18 mo 30 mo Patent Issues 30 mo 0

42 Patent Time Line © Copyright File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes Enter National Stage $$$ 01 yr18 mo 30 mo 21 yrs (20 from PCT Appl.) Patent Issues Patent Expires 30 mo 0

43 Patent Time Line © Copyright File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes Enter National Stage $$$ 01 yr18 mo 30 mo 21 yrs (20 from PCT Appl.) Patent Issues Patent Expires 24 yrs Up to 3 years Patent Term Adjustment for USPTO Delays 35 USC § mo 0

44 Patent Time Line © Copyright File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes Enter National Stage $$$ 01 yr18 mo 30 mo 21 yrs (20 from PCT Appl.) 26 yrs Patent Issues Patent Expires Up to 5 years Patent Term Restoration (drugs) 35 USC § yrs Up to 3 years Patent Term Adjustment for USPTO Delays 35 USC § mo 0

45 5. First to File © Copyright 2014

46 First to File On March 16, 2013 the US went from a first- to-invent to a first-to-file system – America Invents Act (AIA) © Copyright

47 First to File Insights The US previously awarded a patent to whoever could demonstrate the earlier completion of an invention rather than whoever won the race to file a patent application with the patent office. Reverses two centuries of US patent law Seeks to harmonize US patent law with that of most other countries © Copyright

48 First to File Insights However, US patent law still uniquely allows a one-year grace period. Thus, an inventor can publish a paper, make a presentation, or otherwise disclose the invention to the public prior to filing a patent application and still be entitled to a patent, provided that the patent application is filed within one year of the disclosure. “Publishing ahead” of filing a patent application will prevent anyone else from patenting the same invention anywhere, even if the other is the first to file a patent application. © Copyright

49 First to File Insights “Publishing ahead” sounds like a good idea. However, most inventors want to preserve not only their right to a US patent, but also their rights to patents around the world. Because most countries require “absolute novelty”, an early disclosure will forfeit patent rights almost everywhere but the US. The one-year grace period therefore has limited value. © Copyright

50 6. Patent Examples and Recent Trends © Copyright 2014

51 Famous Patents – The Telephone US Patent 174,465 – Alexander Graham Bell “Improvement in Telegraphy” (1876) © Copyright

52 Famous Patents – The Airplane US Patent 821,393 – Orville and Wilbur Wright “The Flying Machine” (1906) © Copyright

53 Famous Patents – Barbed Wire US Patent 157,124 – Joseph F. Glidden “Wire Fences” (1874) © Copyright

54 Famous Patents – The Light Bulb US Patent 223,898 – Thomas A. Edison “The Electric Light Bulb” (1880) © Copyright

55 Famous Patents – The Elevator US Patent 31,128 – E.G. Otis “Safety Elevator” (1861) © Copyright

56 Famous Patents – Aspirin US Patent 31,128 – F. Hoffmann “Acetyl Salicylic Acid” (1900) © Copyright

57 Other Patents – Oil Eating Bacteria US Patent 4,259,444 – A. Chakrabarty “Microorganisms having multiple compatible degradative energy-generating plasmids and preparation thereof” (1981) 1. A bacterium from the genus Pseudomonas containing therein at least two stable energy- generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway. © Copyright

58 The Biotech Revolution is Launched Diamond v. Chakrabarty Landmark 1980 Supreme Court decision (5-4) finding genetically engineered organisms patentable. © Copyright oil-eating bacteria “anything under the sun that is made by man” Diamond v. Chakrabarty, 447 U.S. 303 (1980) “markedly different” from naturally occurring products

59 Other Patents - Rib-X Pharmaceuticals/Yale University – Drug Discovery Patent US Patent 6,952,650 – (2005) A method of identifying a compound that binds to a large ribosomal subunit comprising the steps of: (1) providing a molecular model having one or more target regions of a large ribosomal subunit from the Haloarcula atomic coordinates... or derived therefrom by molecular modeling... (2) identifying a compound that binds to it... (3) and producing the compound. © Copyright

60 Fast-Forward to Myriad Genetics 60 © Copyright 2014 vs.

61 Basis for Patents and Patentable subject matter 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. US Constitution, Article I, Section 8, Clause 8... any new and useful process, machine, manufacture, or composition of matter USC §101 © Copyright But, there are exceptions...

62 Judicial Exceptions to 35 USC §101 Laws of Nature Natural Phenomena Abstract Ideas © Copyright

63 The Myriad Decision Myriad isolated and sequenced the DNA encoding the BRCA 1 and BRCA 2 genes – mutations associated with breast and ovarian cancer Obtained patents to isolated DNA, cDNA, diagnostic methods, etc. In 2009, the ACLU brought suit on behalf of several plaintiffs – sought invalidation of Myriad’s gene patents civil rights strategy legal theory: DNA is a nonpatentable product of nature Supreme Court granted review on a single question: Are human genes patentable? © Copyright Naturally occurring DNA is not patentable. Synthetically produced cDNA is. Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct (2013)

64 Also, the Mayo Decision Patent claims directed to: A method of optimizing the therapeutic efficacy of a thiopurine drug for treating an autoimmune GI disorder by: (a)administering the drug, and (b)measuring the level of the drug in the patient, wherein the level indicates the need to increase or decrease a subsequent dose. District Court – the claims recite an ineligible law of nature Court of Appeals for the Federal Circuit reversed (twice) Supreme Court reversed (unanimous) © Copyright The patent effectively claims an underlying law of nature. Lacking other elements. Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct (2012)

65 Now, the Alice Corp. Decision The USPTO must now grapple with abstract ideas (2014 Guidance in revision). Alice Corp. has patents directed to: A method of mitigating exposure to “settlement risk” in business transactions. - method claims - computer system for implementing the exchange - computer-readable medium containing program code District Court – struck down the patents Court of Appeals for the Federal Circuit, ultimate affirmed in a highly – fractured 7 opinion decision Supreme Court affirms (unanimous) © Copyright The patent claims an ineligible abstract idea. Alice Corporation Pty. Ltd. v. CLS Bank International et al., S. Ct. No (2014)

66 Where are we going? We live in interesting times as biotech and IT patents continue to be the subject of high- stakes litigation. © Copyright

67 Amusing Patents – Leash Umbrella US Patent 6,871,616 – “Pet Umbrella and Combined Pet Leash and Umbrella” (2005) © Copyright

68 Amusing Patents – Plane Boat US Patent 6,938,852 – “Flying Craft Tethered to Water Vehicle” (2005) © Copyright

69 Amusing Patents – Electric Candle US Patent 6,929,381 – “Solar Powered Electric Candle” (2005) © Copyright

70 Amusing Patents – Cap Watch US Patent 6,870,796 – “Cap and Timepiece Device” (2005) © Copyright

71 7. Useful Links and Sites © Copyright 2014

72 USPTO Website PATENTS Tab © Copyright

73 WIPO/PCT Website World Intellectual Property Organization – Administers the Patent Cooperation Treaty (PCT) – Provides a single international application for seeking patent protection in approx. 150 countries Good search site for finding both US and foreign patent documents – patentscope © Copyright

74 Thank you for your time. Michael P. Dilworth, JD Anthony D. Sabatelli, PhD, JD © Copyright


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