Presentation on theme: "How to Lose your Innovation in Ten Easy Steps Michael J. Meehan, JD, PhD Registered Patent Attorney Knobbe Martens Olson & Bear"— Presentation transcript:
How to Lose your Innovation in Ten Easy Steps Michael J. Meehan, JD, PhD Registered Patent Attorney Knobbe Martens Olson & Bear Michael J. Meehan, JD, PhD Registered Patent Attorney Knobbe Martens Olson & Bear
There are numerous types of innovation Innovation, innovation, innovation Patent – Novel, non-obvious, protectable* Windshield and wiper for a horse (sorry, but its taken!) Trademark – The image of my product Nike’s swoosh Copyright – Expression of an idea, not the idea itself Text of a book Trade Secret – Anything you can hide* Formula for Coke
Now that I have an innovation… How can I lose it? So many ways For most of these actions, you have one year
Test it out Perform a few test runs, Give to beta customers Mechanic Lough v. Brunswick Mr. Lough – a boat repair man that made a new seal for a motor Tried it in his & friends’ boats & Patented it 2+ years later Brunswick “stole” the idea – But patent invalid Rubik’s cube (Moleculon Research Corp) Nichols invented it in grad school, used it in private and where he had a “legitimate expectation of privacy” – not public use. Moleculon’s patent stands in later litigation Lesson: Get an NDA from test subject and beta customers! Or just patent it before testing.
Publish it Publish? You have one year to file a patent MIT Patentee spoke and distributed copies at a conference Even distributed copies are considered “published” Undergrad students’ theses, indexed by subject matter in a Reed College Library –”published” Lesson: If you plan to patent, do it before publishing, but at the very least right after
Inspire, but don’t invent Dr. E. and American Cyanamid were trying to increase absorption of iron in pregnant women They performed a test and told others Other Drs. Performed follow up studies, & published their results in the New England Journal of Medicine Dr. E and Cyanamid copied (literally) their results and patented them Once the Drs saw the patent, they filed for unjust enrichment and other claims – and won over $50 million Lesson: Even if the idea to innovate is yours, you have to be the inventor to patent
Collaborate Chou v. U. Chicago (Now Dr.) Chuo was a grad student of Dr. R. working on using herpes virus as an avirulent vaccine Dr. R patented the work as sole inventor Invention later assigned to a company Chuo should be allowed a share of proceeds She received a “favorable” settlement Lesson: If you collaborate and invent, make sure you get the inventors right!
Collaborate (again – so important!) Dr. Yoon working on a trocar (a device to make small incisions for endoscopic surgery) Hired Choi, an electrician, to help on trocar and other projects Dr. Yoon fired Choi & filed a patent as sole inventor Dr. Yoon (“Ethicon, Inc.” ironically) later sued US Surgical US Surgical obtained a license from Choi ($300k + $100k / year!) Then filed to get Choi added as an inventor They won Dr. Yoon got nothing! Lesson: If you collaborate and invent, make sure you get the inventors right!
Sell it Paragon patented orthotics & brought suit against KLM Paragon had sold the orthotics > 1 year before patenting Patent invalid Lesson: Patent before you sell – or at least within one year
Offer it for sale UMC Electronics patented an accelerometer system for counting the times a plane has lifted off & landed It sued US government On-sale bar found – patent invalid Prototypes (not the invention, but a “substantial embodiment of the invention”) made > 1 year before Invention (not prototypes) was offered for sale > 1 year before patenting Lesson: Even if your invention is not 100% built, consider an offer to sell it as triggering the on-sale bar
Forget to patent “Theft” of your idea Is it really stealing? Only if you have a “property right” Facebook: Winklevosses and Narendra received settlement of $65 million, but not clear why Contract breach? Public relations move for Facebook? Not patent rights If the ConnectU team had a patent, that $65 million likely much higher Lesson: protect your ideas or you cannot protect yourself
Abandon, suppress, or conceal it Gore v. Garlock: Gore invented a process for stretching Teflon Budd created same (?) process earlier, but kept it secret Budd’s same or not: suppressed / concealed Public not “in possession” – not prior art to Gore If Budd had later filed a patent application (not in this case), earlier “invention” irrelevant – cut off by concealment Lesson: If you are going to hold off on something for a while, patent it or risk intervening innovation by another
Forget to tell people it is secret Paragon’s orthotics again Claimed that the sales were for experimental use and were meant to be “secret” Forgot to tell anyone else that Sales barring Lesson: get an NDA, contract, or some sort of protection of privacy
Lose your patent everywhere Most international rights lost upon disclosure US: you get one year…for now Proposed patent reform could revise this Appears to be first-to-file, with one year grace period
Let me count the ways There are so, so many other ways Advice: Treat your innovations as trade secrets until you file a patent Keeping it secret Forever: trade secret For now: then file a patent (or a provisional)
Fin PS: If this were legal advice, you would be getting a bill PS: If this were legal advice, you would be getting a bill