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Patent Basics for Entrepreneurs October 17, 2014 Michael P. Dilworth, JD Anthony D. Sabatelli, PhD, JD © Copyright 2014
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 2014 2
1. About Us and Our Firm © Copyright 2014
2. Background on Inventions and Patents © Copyright 2014
IP Basics What is a patent? © Copyright 2014 5
IP Basics What is a patent? What is an invention? © Copyright 2014 6
IP Basics What is an invention? © Copyright 2014 7
IP Basics What is an invention? An invention is a discovery or idea that is made into a machine, product, or process. © Copyright 2014 8
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 2014 9
IP Basics What is a patent? © Copyright 2014 10
IP Basics What is a patent? It is a contract – a legal document. © Copyright 2014 11
IP Basics What is a patent? © Copyright 2014 12
IP Basics What is a patent? A patent describes and “claims” an invention. © Copyright 2014 13
IP Basics What is a patent? A patent describes and “claims” an invention. A patent “protects” an invention. © Copyright 2014 14
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 2014 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. – the right to exclude others from making, using or selling the invention (more on this later) © Copyright 2014 16
A Patent Is Similar To A Deed To A House A deed describes and shows ownership of a house – “real property”. © Copyright 2014 17
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 2014 18
US Patent and Trademark Office Patents Patents are issued by the government © Copyright 2014 19
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) www.uspto.gov © Copyright 2014 20
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 2014 21
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 2014 22
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 2014 23
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 2014 24
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 2014 25
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 2014 26
3. How a Patent Works © Copyright 2014
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 2014 28
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 2014 29
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 2014 30
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 2014 31
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 2014 32
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 2014 33
4. Patent Time Line © Copyright 2014
Patent Time Line © Copyright 2014 35 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 §156 24 yrs Up to 3 years Patent Term Adjustment for USPTO Delays 35 USC §154 30 mo 0
Patent Time Line © Copyright 2014 36 File Provisional Patent Application $ 0
Patent Time Line © Copyright 2014 37 File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ 01 yr
Patent Time Line © Copyright 2014 38 File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes 01 yr18 mo
Patent Time Line © Copyright 2014 39 File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes Enter National Stage $$$ 01 yr18 mo 30 mo
Patent Time Line © Copyright 2014 40 File Provisional Patent Application $ File US Nonprovisonal and/or PCT Application $$ Patent Application Publishes Enter National Stage $$$ 01 yr18 mo 30 mo 0
Patent Time Line © Copyright 2014 41 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
Patent Time Line © Copyright 2014 42 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
Patent Time Line © Copyright 2014 43 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 §154 30 mo 0
Patent Time Line © Copyright 2014 44 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 §156 24 yrs Up to 3 years Patent Term Adjustment for USPTO Delays 35 USC §154 30 mo 0
5. First to File © Copyright 2014
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 2014 46
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 2014 47
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 2014 48
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 2014 49
6. Patent Examples and Recent Trends © Copyright 2014
Famous Patents – The Telephone US Patent 174,465 – Alexander Graham Bell “Improvement in Telegraphy” (1876) © Copyright 2014 51
Famous Patents – The Airplane US Patent 821,393 – Orville and Wilbur Wright “The Flying Machine” (1906) © Copyright 2014 52
Famous Patents – Barbed Wire US Patent 157,124 – Joseph F. Glidden “Wire Fences” (1874) © Copyright 2014 53
Famous Patents – The Light Bulb US Patent 223,898 – Thomas A. Edison “The Electric Light Bulb” (1880) © Copyright 2014 54
Famous Patents – The Elevator US Patent 31,128 – E.G. Otis “Safety Elevator” (1861) © Copyright 2014 55
Famous Patents – Aspirin US Patent 31,128 – F. Hoffmann “Acetyl Salicylic Acid” (1900) © Copyright 2014 56
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 2014 57
The Biotech Revolution is Launched Diamond v. Chakrabarty Landmark 1980 Supreme Court decision (5-4) finding genetically engineered organisms patentable. © Copyright 2014 58 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
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 2014 59
Fast-Forward to Myriad Genetics 60 © Copyright 2014 vs.
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... 35 USC §101 © Copyright 2014 61 But, there are exceptions...
Judicial Exceptions to 35 USC §101 Laws of Nature Natural Phenomena Abstract Ideas © Copyright 2014 62
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 2014 63 Naturally occurring DNA is not patentable. Synthetically produced cDNA is. Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013)
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 2014 64 The patent effectively claims an underlying law of nature. Lacking other elements. Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012)
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 2014 65 The patent claims an ineligible abstract idea. Alice Corporation Pty. Ltd. v. CLS Bank International et al., S. Ct. No. 13-289 (2014)
Where are we going? We live in interesting times as biotech and IT patents continue to be the subject of high- stakes litigation. © Copyright 2014 66
Amusing Patents – Leash Umbrella US Patent 6,871,616 – “Pet Umbrella and Combined Pet Leash and Umbrella” (2005) © Copyright 2014 67
Amusing Patents – Plane Boat US Patent 6,938,852 – “Flying Craft Tethered to Water Vehicle” (2005) © Copyright 2014 68
Amusing Patents – Electric Candle US Patent 6,929,381 – “Solar Powered Electric Candle” (2005) © Copyright 2014 69
Amusing Patents – Cap Watch US Patent 6,870,796 – “Cap and Timepiece Device” (2005) © Copyright 2014 70
7. Useful Links and Sites © Copyright 2014
USPTO Website www.uspto.gov PATENTS Tab © Copyright 2014 72
WIPO/PCT Website World Intellectual Property Organization – Administers the Patent Cooperation Treaty (PCT) – www.wipo.org 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 http://patentscope.wipo.int/search/en/search.jsf © Copyright 2014 73
Thank you for your time. Michael P. Dilworth, JD Anthony D. Sabatelli, PhD, JD 203-220-8496 firstname.lastname@example.org email@example.com www.dilworthip.com © Copyright 2014 74
Patents Copyright © Jeffrey Pittman. Pittman - Cyberlaw & E- Commerce 2 Legal Framework of Patents The U.S. Constitution, Article 1, Section 8:
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