1. How to Lose your Innovation in Ten Easy Steps Michael J. Meehan, JD, PhD Registered Patent Attorney Knobbe Martens Olson & Bear michael.meehan@kmob.com Michael J. Meehan, JD, PhD Registered Patent Attorney Knobbe Martens Olson & Bear michael.meehan@kmob.com

2. 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

3. Now that I have an innovation…  How can I lose it?  So many ways  For most of these actions, you have one year

4. 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.

5. 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

6. 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

7. 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!

8. 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!

9. 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

10. 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

11. 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

12. 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

13. 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

14. 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

15. 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)

16. Fin PS: If this were legal advice, you would be getting a bill michael.meehan@kmob.com PS: If this were legal advice, you would be getting a bill michael.meehan@kmob.com