1. CONFIDENTIAL PATENTS What You Need To Know Robert Benson Office of Technology Development Harvard University Brandeis University – October 20, 2005

2. CONFIDENTIAL Patents – what you need to know What a patent is and what it isn’t What legal rights they provide Why they are important What makes an invention patentable What you need to know to protect your patent rights Patenting Process

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5. A patent is a legal document that, for a certain time, provides the owner the right to prevent others from making, using, selling or importing the claimed invention

6. CONFIDENTIAL Claim 1 of Lieber US Patent 6,781,166 An article comprising: An electrical crossbar array comprising at least two crossed wires, at least one of which is a nanoscopic wire, wherein the at least two wires are in contact with each other.

7. CONFIDENTIAL A patent is not a monopoly It is the right to exclude others from the claimed invention Other dominating patents may prevent you from practicing your own invention – for example carbon nanotubes are patented by others Patents don’t last forever – typically (with exceptions) they last 20 years from the filing date of the first regular patent filing

8. CONFIDENTIAL Patents are important to companies because they limit competition for a time and thereby encourage investment to develop the invention into a marketable product

9. CONFIDENTIAL Example: Nantero A Woburn startup and exclusive licensee of this Lieber patent that is developing a non- volatile universal computer memory based on carbon nanotubes

10. CONFIDENTIAL The Nantero example shows why it is so important for universities to patent their inventions – it would have been unlikely that Nantero would have started without the licensed Lieber patent offering security to the initial investors

11. CONFIDENTIAL What makes an invention patentable?

12. CONFIDENTIAL The claimed invention must: a) be within a certain class of invention b) be novel & unobvious in view of prior art c) be described and enabled by the specification – you must teach the world how to make and use your invention, including the best way you know d) the invention must have a practical use

13. CONFIDENTIAL Patentable Classes of Invention a)Compositions of Matter b)Articles of manufacture c)Methods d)Improvements to the above

14. CONFIDENTIAL Prior Art The totality of what is publicly known the day before you file your patent application

15. CONFIDENTIAL Practically, this means: Journal articles – published or on web Published patents and patent applications Abstracts and Poster Sessions – published, on web or presented Talks at public meetings

16. CONFIDENTIAL Novelty: Prior art describes your claimed invention Obviousness: prior art suggests your invention and its likely success

17. CONFIDENTIAL Written Description, Enablement and Best Mode The patent specification must: a) describe what the invention is - written description b) how to make and to use the invention – enablement c) including the best ways you know - best mode The broader the enablement the broader the claims

18. CONFIDENTIAL Claim 1 of Lieber US Patent 6,781,166 An article comprising: An electrical crossbar array comprising at least two crossed wires, at least one of which is a nanoscopic wire, wherein the at least two wires are in contact with each other.

19. CONFIDENTIAL “While nanotubes, and in particular carbon nanotubes, are preferred for use in the invention, any nanoscopic-scale wires can be used, including nanoscopic wires such as nanorods, nanowires, organic and inorganic conductive and semiconducting polymers, and the like.” Written Description, Enablement and Best Mode

20. CONFIDENTIAL Utility Requirement The claimed invention must have a practical, immediate and specific utility

21. CONFIDENTIAL In Re Fisher Just decided by the patent appeals court, ESTs, Expressed Sequence Tags, generally do not have a patentable utility

22. CONFIDENTIAL Prior art in more detail For Universities prior art from other parties and from their own disclosures before filing are the biggest obstacles to getting strong patents

23. CONFIDENTIAL Provisional Patent Application Serial No. 60/142,216, filed Jul. 2, 1999. Rueckes, Thomas et al., "Carbon Nanotube- Based Nonvolatile Random Access Memory for Molecular Computing," Jul. 7, 2000, Science, vol. 289, pp. 94-97.

24. CONFIDENTIAL Effect of your own public disclosure of your invention before filing a patent application is different in the US and most foreign countries

25. CONFIDENTIAL In the US – a one year grace period allows you to file a year after the disclosure and your public disclosures will not be considered prior art

26. CONFIDENTIAL In most foreign jurisdictions – If you fail to file prior to disclosure, you lose the right to get a patent. This includes Europe, China, and Korea

27. CONFIDENTIAL Lesson 1: Report your inventions early so they can be filed before disclosure

28. CONFIDENTIAL When should you report your invention? Ideal: As soon as think you have discovered something important (even if more experiments may need to be done) Adequate: At same time manuscript is sent to journal or abstract is sent to conference organizers

29. CONFIDENTIAL When should you report your invention? Possible: Day before disclosure if invention is in written form (ROI or manuscript) Minimal: Before a year has passed since public disclosure – can get valuable US rights

30. CONFIDENTIAL Secret prior art: Other parties’ patent applications claiming same invention as your invention

31. CONFIDENTIAL What happens if two parties file patent applications on the same invention? Only one gets a patent, the other doesn’t.

32. CONFIDENTIAL In most foreign jurisdictions: the party that files first wins “first-to-file” includes Europe, China, Japan

33. CONFIDENTIAL In the US an interference proceeding at the US Patent Office determines who was the first inventor “first-to-invent”

34. CONFIDENTIAL How to protect your patent rights: #1 report your inventions as early as possible so they can be filed as early as possible to beat out competitors in first-to-file countries #2 Document your work in bound notebooks, describe your work and its significance and date the pages so you can win an interference in the US

35. CONFIDENTIAL Patenting Process File provisional patent application in USPTO At one year: file PCT International Patent Application which gives right to file in all industrial countries later (except Taiwan) At two and one half years: file in individual patent offices around the world: US, Europe, China etc.

36. CONFIDENTIAL Typical Patenting Path File Initial Patent Application File National Phase Application (US, Korea, Europe, etc.) 0 yrs 1 yr File PCT International Application 2 ½ yrs Prosecution Patents!

37. CONFIDENTIAL Types of Patent applications US Provisional application Regular or Utility US application PCT International Patent Application National Phase filings – regular filings in foreign patent offices European patent application – EU wide patent application – still requires eventually filing in individual EU countries

38. CONFIDENTIAL Reconciling the fundamental academic value of open communications and public disclosure of advances with the global patent system

39. CONFIDENTIAL Initial Discovery File first Patent Application Disclose Initial Discovery Further Discovery File 2 nd Patent Application adding further discovery Disclose Further Discovery More Discovery File PCT International Application Combining all discoveries It can be done : First Year of the Patenting Process 0 yrs 1 yr

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