Intellectual Property Patent Primer Michael Pratt Executive Director, Business Development November 1, 2011

Boston University Slideshow Title Goes Here 2 Idea Product Customer Value Profit IP Market Action Resources

Boston University Slideshow Title Goes Here 3 Questions to consider  Can I patent my idea?  Should I patent my idea?  How do I patent my idea?  Can I practice my idea?

Boston University Slideshow Title Goes Here 4 Intellectual Property “A product of the intellect that has commercial value” American Heritage Dictionary  Invention  Innovation  Original Work  Know-how  Tribal Knowledge

Boston University Slideshow Title Goes Here 5 Protection of Intellectual Property  Patents  Copyright  Trademark  Trade Secret

Boston University Slideshow Title Goes Here 6 Who owns what?  Inventorship  Authorship  Ownership

Boston University Slideshow Title Goes Here 7 Why Patent an Invention?  Educate the public  Stimulate continued innovation  Encourage investment and development  Reduce investment risk  Profit from your ideas  very difficult  invention vs. innovation

Boston University Slideshow Title Goes Here 8 Patents  enshrined in the Constitution “Congress shall have the 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.”  grants the holder the exclusive right to practice their invention for a defined period in return for making their knowledge public  exclusive means “to exclude”  a constitutionally enshrined monopoly, and hence an inherent tension with the free market system

Boston University Slideshow Title Goes Here 9 What is patentable? Anything that is:  novel  useful  non-obvious  adequately described so that one ordinarily skilled in the art can reproduce  (Note: reduction-to-practice, actual vs constructive)

Boston University Slideshow Title Goes Here 10 Types of Patent  Utility:  a novel composition of matter (can include micro-organisms, animals)  a process or method  an apparatus, machine or device  a use  a method of doing business  Plant  an asexually propagated plant  Design

Boston University Slideshow Title Goes Here 11 Unpatentable Subject Matter  Ideas  Laws of Nature  Scientific principles

Boston University Slideshow Title Goes Here 12 Prior Art  Not just patents  Any enabling description of an idea that is in the public domain at any time prior to filing  Note: up to 12 months prior to filing in the USA  Includes:  Library submissions  Theses  Sale of goods  Grant Applications (public disclosure varies)  Presentations  Meetings (unless in confidence)

Boston University Slideshow Title Goes Here 13 Searching for Prior Art  Google Patents  United States Patent Office  All issued US patents  All Patent Applications (18 months after filing date)  World Intellectual Property Organization  Issued PCT patents and PCT Gazette  All Patent Applications (18 months after filing date)  Search by: keyword, inventor, assignee, classification etc.  Outsource search to law firm or search firm  Interpret results (see Opinion)

Boston University Slideshow Title Goes Here 14 Steps in Obtaining a Patent  Submit invention disclosure  Review of patentability and marketability  File application  Prosecution  Initial office action -- restriction requirement  Response  Second office action  Response  (Interview with examiner)  Final office action  Notice of allowance  File divisional application  Parent patent issues  Foreign prosecution in parallel, 2-3 years delayed

Boston University Slideshow Title Goes Here 15 Timing & Costs  US only  2-3 years (maybe longer due to backlog)  Provisional application ($100-1,500)  Initial filing $5K-$20K (avg. $9-$11K)  Response to office actions $5K  Lifetime of patent $10-$30K  International  4-6 years  Initial filing PCT $10-$15K  National Filing fees $50-150K  Lifetime $100-$300K  Depends on the number of countries named

Boston University Slideshow Title Goes Here Freedom to Operate  Can I practice my invention without the need to license other patented inventions?  Requires a more expansive (and expensive) search  Need to consider complementary technologies  Work around considerations  How the product will be delivered

Boston University Slideshow Title Goes Here Recap Idea Invention Patent Product Market

Questions?