1. What You Didn’t Know That You Didn’t Know About Patents
Eric Myers

2. Patents: In the news Just last week…

3. What we’ll cover What is a patent? Why would you want a patent?
What do you need to do to get a patent?
How do you avoid infringement?
What’s new in the patent world?

4. What is a patent? An exclusive right for an inventor
Constitution: “[t]o promote the progress of … useful arts …”
“Exclusive” right: The right to exclude others from doing something
Making, using, selling, offering to sell
Limited time
A trade-off for disclosing your invention

5. What is a patent NOT? E = m c2 NOT the right to do something
Example: need FDA approval for food or drugs
NOT protection for an abstract idea, law of nature, or natural phenomenon
E = m c2
PV = nRT

6. Why would you want a patent?
Stop other people from using the invention (competitive advantage)
Get other people to pay for using the invention (licensing)
Sell the patent to someone else
Impress other people (investors, customers)
Marking your product

7. Why would you want a patent?
Due diligence may be important for selling or buying patents or patent applications
Check for issues
Validity
Scope of coverage
Often in context of acquisition
ent
Pat

8. Three types of patents Utility: what most people think of, our focus
“useful process, machine, manufacture, or composition of matter”
Design
“ornamental design for an article of manufacture”
Plant
“asexually reproduce[d] … variety of plant”

9. Three types of patents: Duration
Utility and Plant: 20 years from first U.S. filing
Design: 15 years from grant (new applications)

10. How is a patent different from a copyright?
Copyright protects “original works of authorship” fixed in a tangible form
Examples: books, recorded music, plays, paintings, sculptures, photographs, movies, architecture

11. How is a patent different from a copyright?
Patent (Utility)
Duration: 20 years from effective U.S. filing (possible adjustments or limitations)
Examination process for novelty, nonobviousness, etc.
Patents examined by U.S. Patent and Trademark Office
Copyright
Duration: depends on who made it and for whom (e.g.: life of author + 70 years)
Applicable once fixed in tangible form; registration to go after infringer
Copyright Office is part of Library of Congress

12. How is a patent different from a trademark?
A trademark is word, phrase, symbol, or design that identifies and distinguishes a commercial source
Examples: brand names, slogans, logos

13. How is a patent different from a trademark?
Patent (Utility)
Federal protection
Duration: 20 years from effective U.S. filing (possible adjustments or limitations)
Trademark
Mix of federal and state protection laws
Duration: as long as it’s in use in commerce TM

14. Are there other types of intellectual property?
Trade Secrets
Plant Variety Protection
“sexually reproduced or tuber propagated plant variety”
In other countries:
Utility Models
Geographical Indications

15. What do you need to do to get a patent?
Invent something!
Must be new
Cannot be obvious
Describe it
Enable people to use it
Apply

16. Invent something Novel (New)
Define invention in a way that does not encompass anything old
Most novelty problems arise from description of something older (“prior art”)

17. Invent something Novel (New)
For lack of novelty over prior art:
All elements need to be there
Must be arranged in the same way
Same terminology not required

18. Invent something Not Obvious
Yes, this is a legal term – but subject to a lot of developed law
Factual backdrop required
Determine scope and content of prior art
Ascertain differences between prior art and invention
Resolve level of “ordinary skill in the art”

19. Invent something Not Obvious
For the differences
Must have motivation to modify
Must have reasonable expectation of success
Can involve multiple pieces of prior art
Cannot rely on hindsight

20. Invent something Not Obvious
Opportunity to overcome basic obviousness case with “secondary considerations”
Examples: unexpected results, commercial success, long-felt need

21. Describe invention
Someone in the field should understand that you had the invention in your possession. For example:
Describe working examples
Include drawings
Mention relevant identifying characteristics

22. Enable people to make and use the invention
Someone in the field should be able to make and use it
Should not require undue experimentation

23. Applying for a patent Determine who will do it Draft application
On your own, or with attorney/agent?
If application is in the name of a company, must be an attorney/agent
Draft application
Submit to USPTO
Consider applying in other countries, too

24. Applying for a patent: Examination
Pendency
Backlog: 546,000 unexamined applications (down from 720,000 in 2011)
15-16 months on average until examination
Office actions
Rejections and other types
Non-final versus final

25. Applying for a patent: Examination and Appeal
Interviews
In-person, phone, video conference
Opportunity to advance examination
Appeal
Within the Patent Office
Beyond the Patent Office

26. How do I avoid infringing someone else’s patent?
Identify patents
Patents/applications you already know of
Searching for other patents/applications
Determine what the patent covers
Attorney could help
Compare with your product or process to the coverage of the patent

27. What’s new in the patent world?
Patentable subject matter
Software, business methods
Diagnosis methods
Challenges to validity of others’ patents though Patent Office procedures
Patent “Exhaustion” and International Sale

28. Wrap-up Patents: an exclusive IP right Patent application process
Avoiding infringement
Patent law continues to evolve

29. Thank you