1. 1 UNIVERSITY OF PENNSYLVANIA ESE Senior Design Lecture The America Invents Act (AIA) and Engineering Notebooks Engineering Notebooks September 22 2014 William H. Murray, Esq William H. Murray, Esq irishbillmurray@comcast.net irishbillmurray@comcast.net

2. 2 What Is Protectable Intellectual Property? Product of human intellect that is: Unique Unique Unobvious Unobvious Has value Has value

3. 3 Basic Forms of Protection of Intellectual Property Patent Patent Term – 20 years from effective filing date Term – 20 years from effective filing date Trademark Trademark Term – 10 years plus 10 year renewals Term – 10 years plus 10 year renewals Copyright Copyright Terms – Terms – Named author - 70 years after death Named author - 70 years after death Anonymous work – 120 years after creation Anonymous work – 120 years after creation Corporate author – 95 years after creation Corporate author – 95 years after creation Trade Secret Trade Secret Term – indefinite as long as secrecy is maintained Term – indefinite as long as secrecy is maintained

4. 4 Patent Protection Patent owners granted the right under U. S. patent law (35 USC) to exclude others from Patent owners granted the right under U. S. patent law (35 USC) to exclude others from making making selling or offering to sell selling or offering to sell using using importing into the US importing into the US the patented invention

5. 5 Patent Protection (cont) The grant is the right to exclude only. The grant is the right to exclude only. Not the right to practice the patented invention Not the right to practice the patented invention Example: Patents on improvements to the patented invention of another Example: Patents on improvements to the patented invention of another Has exclusive rights to improvement but cannot practice the combination of the basic invention and the improvement without permission of owner of patent on the basic invention Has exclusive rights to improvement but cannot practice the combination of the basic invention and the improvement without permission of owner of patent on the basic invention

6. 6 Foreign Patent Protection The grant conveyed by a United States patent is the right to exclude others from making, using and selling only in the US. The grant conveyed by a United States patent is the right to exclude others from making, using and selling only in the US. One must apply for patent protection in those foreign countries where such protection is desired. One must apply for patent protection in those foreign countries where such protection is desired. Patent protection cannot be obtained in most foreign countries if the invention has been publicly disclosed or used before the earliest patent application filing date. Patent protection cannot be obtained in most foreign countries if the invention has been publicly disclosed or used before the earliest patent application filing date. Foreign patent applications must be filed within 12 months of the US filing date in order to obtain benefit of the earlier US filing date. Foreign patent applications must be filed within 12 months of the US filing date in order to obtain benefit of the earlier US filing date.

7. 7 US Patent Process Overview Initiated by filing a patent application, either provisional or formal Initiated by filing a patent application, either provisional or formal the provisional application must be converted to a formal application within 12 months of filing to prevent it from becoming abandoned the provisional application must be converted to a formal application within 12 months of filing to prevent it from becoming abandoned The formal application is examined by a PTO examiner, familiar with the art to which the claimed invention pertains, for compliance with the patent laws The formal application is examined by a PTO examiner, familiar with the art to which the claimed invention pertains, for compliance with the patent laws If compliant, the application issues as a patent If compliant, the application issues as a patent

8. 8 US Patent Process Basic Documents Provisional Patent Application Provisional Patent Application Patent Application Patent Application Patent Patent

9. 9 Provisional Patent Application Provisional Patent Applications 35 USC §111(b) Provisional Patent Applications 35 USC §111(b) Requires a specification and drawing but does not require claims. Requires a specification and drawing but does not require claims. The specification must meet the disclosure requirements – a clear and concise written description of the invention sufficient to enable one skilled in the art to make and use same (§112(a)) – but need not be in a formal patent application style The specification must meet the disclosure requirements – a clear and concise written description of the invention sufficient to enable one skilled in the art to make and use same (§112(a)) – but need not be in a formal patent application style If drawings are necessary to understand the invention, they may be informal If drawings are necessary to understand the invention, they may be informal Note - Will become abandoned 12 months after filing if not converted to a formal application 35 USC §111(b)(5) Note - Will become abandoned 12 months after filing if not converted to a formal application 35 USC §111(b)(5)

10. 10 Patent Application Formal Patent Applications Formal Patent Applications Requires a specification, drawing and claims. Requires a specification, drawing and claims. Specification – must contain a clear and concise written description of the invention sufficient to enable one skilled in the art to make and use Specification – must contain a clear and concise written description of the invention sufficient to enable one skilled in the art to make and use same – 35 USC §112(a) Claims – one or more at the conclusion of the specification which particularly point out and distinctly claim the invention – 35 USC §112(b) Claims – one or more at the conclusion of the specification which particularly point out and distinctly claim the invention – 35 USC §112(b) Drawings - required if necessary to understand the invention – 35 USC §113 Drawings - required if necessary to understand the invention – 35 USC §113

11. 11 Patent Contains – Contains – short title of the invention claimed, short title of the invention claimed, the specification and drawing, and the specification and drawing, and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale, or selling throughout the United States, or importing into the United States, products made by that process – 35 USC §154 a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale, or selling throughout the United States, or importing into the United States, products made by that process – 35 USC §154

12. 12 What’s Up With AIA? Implements the conversion of the U.S. patent system from a “ first-to-invent ” to “ first inventor to file ” Implements the conversion of the U.S. patent system from a “ first-to-invent ” to “ first inventor to file ” the new regime is contained in Title 35 of the United States Code section 102 (35 USC 102) the new regime is contained in Title 35 of the United States Code section 102 (35 USC 102) spells out what is prior art to an invention in new 35 USC 102(a) spells out what is prior art to an invention in new 35 USC 102(a) provides exceptions to new 35 USC 102(a) in new 35 USC 102(b) provides exceptions to new 35 USC 102(a) in new 35 USC 102(b)

13. 13 35 USC §102(a) Prior Art 35 USC §102(a) Prior Art A person shall be entitled to a patent unless — (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in an issued patent or a published patent application which names another inventor and was effectively filed before the effective filing date of the claimed invention

14. 14 35 USC §102(b)(1) Exceptions - Grace Period 35 USC §102(b)(1) Exceptions - Grace Period 35 USC §102(b) defines exceptions to the prior art which includes a grace period - 35 USC §102(b)(1) 35 USC §102(b) defines exceptions to the prior art which includes a grace period - 35 USC §102(b)(1) The grace period applies to the public disclosure of an invention within one year prior to the effective filing date of the application disclosing and claiming that invention, but only if the disclosure was by an inventor or one who derived the invention from an inventor The grace period applies to the public disclosure of an invention within one year prior to the effective filing date of the application disclosing and claiming that invention, but only if the disclosure was by an inventor or one who derived the invention from an inventor No longer can an inventor antedate a disclosure by another within one year of the effective filing date, unless that disclosure was obtained from the inventor (no swearing behind another ’ s publication) No longer can an inventor antedate a disclosure by another within one year of the effective filing date, unless that disclosure was obtained from the inventor (no swearing behind another ’ s publication)

15. 15 Effect of Grace Period On Prior Art First Example A invents X and immediately publishes A invents X and immediately publishes thereafter, B independently publishes subject matter of invention X thereafter, B independently publishes subject matter of invention X Within one year of A ’ s publication of invention X, A files patent application claiming X Within one year of A ’ s publication of invention X, A files patent application claiming XRESULT?

16. 16 Result B ’ s publication is not prior art even though published before A filed application because A made the first public disclosure no earlier than one year prior to filing the application – 35 USC §102(b)(1)(B) B ’ s publication is not prior art even though published before A filed application because A made the first public disclosure no earlier than one year prior to filing the application – 35 USC §102(b)(1)(B)

17. 17 Effect of Grace Period On Prior Art Second Example A invents X and communicates X to B as part of a collaboration A invents X and communicates X to B as part of a collaboration thereafter B, a non-inventor, publishes the subject matter of X thereafter B, a non-inventor, publishes the subject matter of X Within one year of B ’ s publication of invention X, A files patent application claiming X Within one year of B ’ s publication of invention X, A files patent application claiming XRESULT?

18. 18 Result Assuming X is patentable, A is entitled to the patent if A can establish inventorship and communication of X to B - 35 USC §102(b)(1)(A) Assuming X is patentable, A is entitled to the patent if A can establish inventorship and communication of X to B - 35 USC §102(b)(1)(A)

19. 19 Grace Period And Defensive Publications Grace Period And Defensive Publications An inventor ’ s disclosure within the one year grace period eliminates from prior art any subsequent disclosures of the same invention by another occurring after an inventor ’ s disclosure but before that inventor files a patent application. An inventor ’ s disclosure within the one year grace period eliminates from prior art any subsequent disclosures of the same invention by another occurring after an inventor ’ s disclosure but before that inventor files a patent application. Early public disclosure by the inventor can be used to protect the patentability of an invention while an application is being prepared – but such a strategy results in surrendering most foreign rights. Early public disclosure by the inventor can be used to protect the patentability of an invention while an application is being prepared – but such a strategy results in surrendering most foreign rights. Note - a better strategy would be to file a provisional patent application Note - a better strategy would be to file a provisional patent application

20. 20 Grace Period Summary Disclosures during the grace period of the invention by the inventor, or by a third party that derived the invention from the inventor, will not be considered prior art Disclosures during the grace period of the invention by the inventor, or by a third party that derived the invention from the inventor, will not be considered prior art

21. 21 Derivation Effect of Derivation on Prior Art – Effect of Derivation on Prior Art – disclosures appearing in applications and patents shall not be considered prior art if the subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor (§102(b)(2)(A)).

22. 22 Derivation (cont) Effect of Derivation on Patent Rights – Effect of Derivation on Patent Rights – the first filer is not entitled to any claims in either a patent application or issued patent which are directed to an invention shown to have been derived from a later filer (§291 “ Derived Patents ” and §135(d) “ Derivation Proceedings, Effect of Final Decision ” ).

23. 23 Derivation (cont) There are three requirements necessary to establish derivation - There are three requirements necessary to establish derivation - First - a prior, complete conception of the claimed subject matter, and First - a prior, complete conception of the claimed subject matter, and Second - communication of the complete concept to the party charged with derivation Second - communication of the complete concept to the party charged with derivation Third – the prior application was filed without authorization. Third – the prior application was filed without authorization.

24. 24 Inventors Who Is An Inventor? Who Is An Inventor? One who contributes to the conception of the subject matter of the claimed invention. One who contributes to the conception of the subject matter of the claimed invention. Conception is the formation of a definite and permanent idea of the complete and operative invention. Conception is the formation of a definite and permanent idea of the complete and operative invention. The idea must be sufficiently detailed that the inventor could describe all of the elements of the invention in a manner that would permit one of ordinary skill to understand and then reduce the invention to practice without undue experimentation The idea must be sufficiently detailed that the inventor could describe all of the elements of the invention in a manner that would permit one of ordinary skill to understand and then reduce the invention to practice without undue experimentation

25. 25 Joint Inventors A joint inventor is one whose contribution to the conception of the claimed invention is not insignificant in quality, when that contribution is measured against the dimension of the full invention. A joint inventor is one whose contribution to the conception of the claimed invention is not insignificant in quality, when that contribution is measured against the dimension of the full invention. The principle of joint inventorship contemplates some form of collaboration or concerted effort between inventors. The principle of joint inventorship contemplates some form of collaboration or concerted effort between inventors. Joint inventorship can be based upon contribution to a single claim. Joint inventorship can be based upon contribution to a single claim.

26. 26 Conception Rules of Conception Rules of Conception To show conception, an inventor must present proof showing recognition or knowledge of each feature of the count and communicated to a corroborating witness in sufficient detail to enable one of skill in the art to replicate the invention. To show conception, an inventor must present proof showing recognition or knowledge of each feature of the count and communicated to a corroborating witness in sufficient detail to enable one of skill in the art to replicate the invention. Conception does not occur until the inventive idea is crystallized in all of its essential attributes and becomes so clearly defined in the mind of the inventor as to be capable of being converted to reality and reduced to practice by the inventor or by one skilled in the art Conception does not occur until the inventive idea is crystallized in all of its essential attributes and becomes so clearly defined in the mind of the inventor as to be capable of being converted to reality and reduced to practice by the inventor or by one skilled in the art Engineering notebooks, which contain contemporaneous entries of the work performed, are an important form of proof of conception and the date on which conception was achieved Engineering notebooks, which contain contemporaneous entries of the work performed, are an important form of proof of conception and the date on which conception was achieved

27. 27 Conception (cont) Corroboration Corroboration proof of complete conception cannot be established with the prior inventor ’ s testimony alone; such proof requires corroboration with contemporaneous evidence proof of complete conception cannot be established with the prior inventor ’ s testimony alone; such proof requires corroboration with contemporaneous evidence One must present corroborating evidence of a complete conception of the claimed subject matter One must present corroborating evidence of a complete conception of the claimed subject matter Adequate corroborative evidence includes physical, documentary or circumstantial evidence, or reliable testimony from individuals other than the alleged inventor or an interested party. Adequate corroborative evidence includes physical, documentary or circumstantial evidence, or reliable testimony from individuals other than the alleged inventor or an interested party. An important form of the required corroboration is typically provided by engineering notebooks which contain contemporaneous entries of the work performed. An important form of the required corroboration is typically provided by engineering notebooks which contain contemporaneous entries of the work performed.

28. 28 Engineering Notebooks Provide a permanent, chronological record of research which Provide a permanent, chronological record of research which documents what was done during the course of a task or project documents what was done during the course of a task or project establishes what inventions were made, when and by whom establishes what inventions were made, when and by whom can provide credible evidence of inventorship when properly corroborated can provide credible evidence of inventorship when properly corroborated Important when issues of derivation arise Important when issues of derivation arise

29. 29 Engineering Notebooks Best Practices Preferably bound with numbered pages. Preferably bound with numbered pages. Should be kept by everyone whose work involves innovation and creativity. Should be kept by everyone whose work involves innovation and creativity. Entries should be made contemporaneously as the work is performed and maintained in chronological order. Entries should be made contemporaneously as the work is performed and maintained in chronological order. Each page should be signed and dated by the inventor and should be signed by a witness who understands the entries. Each page should be signed and dated by the inventor and should be signed by a witness who understands the entries. Thus, each page of the laboratory notebook preferably contains the following notation in addition to the signature of the person performing the work and the date the entry was made: Thus, each page of the laboratory notebook preferably contains the following notation in addition to the signature of the person performing the work and the date the entry was made: “ Witnessed and understood by: “ Witnessed and understood by: _____________________ Date: _________ ” _____________________ Date: _________ ”

30. 30 Engineering Notebooks Best Practices (cont) Engineering Notebook Entries Engineering Notebook Entries Identify task or project Identify task or project Record everything related to that task or project Record everything related to that task or project Entries should be as descriptive as possible including sketches if required to provide a detailed understanding of the entry Entries should be as descriptive as possible including sketches if required to provide a detailed understanding of the entry All entries should be dated, legible, factual information and data, both qualitative and quantitative All entries should be dated, legible, factual information and data, both qualitative and quantitative

31. 31 Engineering Notebooks Best Practices (cont) CAUTION CAUTION Never erase entries – place a line through an entry to be deleted, leaving the underlying material legible Never erase entries – place a line through an entry to be deleted, leaving the underlying material legible Never remove pages Never remove pages Never leave a page totally blank Never leave a page totally blank

32. 32 Engineering Notebooks Best Practices (cont) Best Practices Checklist Best Practices Checklist Make entries legibly and in permanent form Make entries legibly and in permanent form Date entries Date entries Do not erase or otherwise change entries Do not erase or otherwise change entries Use consecutive pages Use consecutive pages Do not remove pages Do not remove pages Avoid blank pages Avoid blank pages Identify task or project Identify task or project Include and explain sketches, diagrams, etc Include and explain sketches, diagrams, etc Permanently attach and identify photos, charts, etc Permanently attach and identify photos, charts, etc Have entries frequently witnessed Have entries frequently witnessed

33. 33 DON’T FORGET Engineering Notebooks Engineering Notebooks Why Are They Important? Why Are They Important? Can be used to provide credible evidence of date of conception Can be used to provide credible evidence of date of conception Can be extremely important if an allegation of derivation is made Can be extremely important if an allegation of derivation is made chronological detailed factual entries can be used later to provide the date of invention chronological detailed factual entries can be used later to provide the date of invention witnesses can later provide corroborating testimony witnesses can later provide corroborating testimony Can be used as the basis for filing a provisional patent application. Can be used as the basis for filing a provisional patent application.

34. 34 DON’T FORGET (cont) Provisional Patent Applications §111(b) Provisional Patent Applications §111(b) Why Are They Important? Why Are They Important? Considering the informal nature of a provisional patent application, a copy of pertinent pages of a well kept engineering notebook can be used as the basis for the required specification and drawing. Considering the informal nature of a provisional patent application, a copy of pertinent pages of a well kept engineering notebook can be used as the basis for the required specification and drawing. Benefit – because of its informal nature, a provisional patent application can be prepared and filed very quickly, especially if notebook entries are used. Benefit – because of its informal nature, a provisional patent application can be prepared and filed very quickly, especially if notebook entries are used. Caveat – to preserve its early filing date, the provisional application must be converted to a non-provisional application within 12 months (§111(b)(5)). Caveat – to preserve its early filing date, the provisional application must be converted to a non-provisional application within 12 months (§111(b)(5)).

35. 35 DON’T FORGET (cont) Avoid public disclosure of invention before patent application is filed. Avoid public disclosure of invention before patent application is filed. Why Is This Important? Why Is This Important? Although there is a one year grace period in the United States for filing a patent application after a public disclosure is made, there is no grace period in the other major industrialized countries of the world – as a result, important world-wide rights could be lost Although there is a one year grace period in the United States for filing a patent application after a public disclosure is made, there is no grace period in the other major industrialized countries of the world – as a result, important world-wide rights could be lost

36. 36 Electronic Engineering Notebooks The courts have long recognized that traditional, hard bound paper engineering notebooks can be the source of reliable, credible documentary evidence. However, as with most technology, the law lags advances, even those readily understood and accepted by the scientific community. For example: The courts have long recognized that traditional, hard bound paper engineering notebooks can be the source of reliable, credible documentary evidence. However, as with most technology, the law lags advances, even those readily understood and accepted by the scientific community. For example: results of breathalyzers finally deemed sufficiently reliable as a reliable indicator of intoxication results of breathalyzers finally deemed sufficiently reliable as a reliable indicator of intoxication On the other hand lie detector results are still deemed inadmissible in a number of jurisdictions On the other hand lie detector results are still deemed inadmissible in a number of jurisdictions Electronic records are gaining recognition as reliable documentary evidence. However, in an abundance of caution, it is highly advisable that invention records also be kept in conventional notebook form, which has traditionally been admitted into evidence. Electronic records are gaining recognition as reliable documentary evidence. However, in an abundance of caution, it is highly advisable that invention records also be kept in conventional notebook form, which has traditionally been admitted into evidence.

37. 37 QUESTIONS ?