SWE IP Presentation_V4 (1).PPTX

Patents:An Introduction for Inventors

Outline• Introduction to Patents

– What is a Patent?– How Does a Patent Add Value?– Parts of a Patent– Claims: The Most Important Part of a Patent!

• What Inventors Need to Know– Patent Inventorship– Patent Ownership– How to Get a Patent– When to Apply for a Patent– Patents and Publications– Good Inventor Practices

What is a Patent? A Legal Contract/Document

• A patent is generally understood as a legal contract between the Applicant and the Government

• In return for the right to temporarily exclude others from practicing the invention (making, using , selling, etc.), the patent must satisfy certain disclosure requirements

• A patent is a piece of property: It can be bought, sold, traded, leased, etc.

What is a Patent? A Right to Exclude

• A patent conveys no rights for you to do anything.

• A patent merely gives you the right to stop others from practicing your invention.

• Even if you own a patent, your products may infringe the patent of another.

What is a Patent? A Limited Monopoly

• Utility Patents expire 20 years from earliest parent filing date at the Patent Office– NOT from the date patents are granted/issued!

• When a patent expires, anyone can practice the patented invention

Different Types of Patents

Utility Patents• The Stereotypical

Patent• Protect Functional

(“Useful”) Aspects

Design Patents• Protect Non-

Functional Ornamental Aspects

Plant Patents• Protect Asexual

Plant Varieties

Patents are a Form of Intellectual Property (“IP”) Protection

• IP is something that is a Creation of the Mind

• IP Protections provide an incentive to create– Usually exclusive monopolies on the creation– Provide legal avenues to monetize, protect creations

• IP Protections involve a social trade-off– Exclusive monopolies usually temporary– Some protections lapse if not diligently enforced

• Different types of IP receive different protections

Utility Patents• Functional Aspects

Copyrights• Expressions

Design Patents, Trade Dress• Ornamental Aspects

Trademarks• Identifications

Trade Secrets• Know-How

Major Types of IP Protection

Different IP Protections May Protect Different Aspects of a Creation

Hypothetical Case: • Jordan creates a handheld fission generator that

can power a home, markets it as NukaCell,– Utility patents protect functional aspects of NukaCell– Copyrights protect the software code used by NukaCell

• but utility patents protect the functions implemented by executing the code

– Trademarks protect the use of the term “NukaCell”– Trade Secrets protect secret practices to build NukaCell– Design Patents , Trade Dress, and Copyrights protect

the ornamental appearance of NukaCell

What Can Be Patented

•Machines

•Articles of Manufacture

•Compositions of Matter

•Processes

• Any Improvement of the Above

What Cannot Be Patented

• Laws of Nature– Electromagnetism

• Natural Phenomena– Naturally occurring substances

• Abstract Ideas– Fundamental economic practices

– Mathematical Relationships/Formulas

– Software that simply implements one of the above

What Makes an Invention Patentable

Utility

Not ObviousNovel

Useful function

More than an obvious variation of prior art

Different from prior art

PATENTABLE!

A Patent Must be Novel

• Example 1:– The NukaCell includes elements A, B, C– An old AtomiCell includes elements A, B, C, D– No Patent for NukaCell!

• Example 2:– The NukaCell includes elements A, B, C– An old AtomiCell includes elements A, B, D– Patent for NukaCell!

A Patent Must NOT be Obvious• Example 1:– The NukaCell includes elements A, B, C– An old AtomiCell includes elements A, B, D, E– An old article says it is better to use C than E– No Patent for NukaCell!

• Example 2:– The NukaCell includes elements A, B, C– An old AtomiCell includes elements A, B, D, E– The only old description of C is an article saying that

using C and B together would be disastrous– Patent for NukaCell!

Where is a Patent Applicable?• Generally – The country granting the patent

– Jordan only patents NukaCell in US– Riley makes, sells NukaCell in Germany, does not export to

US– Jordan may be out of luck!

• Multiple Countries – Multiple Patents– To protect NukaCell in multiple countries, Jordan may need

to file patents in each country!

• International protection of an invention may be costly!– Application Fees– Translation Costs– Different countries have different patent laws

• May need separate legal counsel for each country

How Does a Patent Add Value?• Eliminate Competition

– A patent gives the patentee the right to exclude others from making, using, selling or offering for sale the patented invention within the U.S., or importing the patented invention into the U.S.

• Increase Market Share

• Revenue - Monetize your Invention– Licensing the patent– Selling the patent– Royalty Payments for patent use– Patent Infringement Penalties

• Boosting your marketing profile– A business based on the invention may be more attractive to investors,

venture capitalists, and customers if the invention is patented– Individual Prestige - Hiring, Promotions

Are Patents Worthwhile?• The value of a patent for an invention may vary based on the industry,

technology space of the invention:– Useful Lifespan

o How quickly does the invention become obsolete?– Exclusionary Power

o How easy is it to “work around” the invention?– Enforceability

o How easy is it to detect invention in competitors?

• Patents are not cheap. Patents are also difficult to obtain quickly (doing so is even less cheap).– Patent Office Fees– Legal Counsel Costs– ~$10,000 - $30,000 over 5 years

• But even a single patent may be incredibly valuable!– Spending $20,000 for a patent may be worthwhile if the patent is worth

$2,000,000

Parts of a Patent• Bibliographic and abstract

information on the first page, followed by drawings, description, and claims

• The description typically includes several sections:– Background – the field of

technology and a description of the existing art

– Summary – restates the important aspects of the description in short form

– Brief Description of the Drawings

– Detailed Description – describes, in detail and with examples, how to make and use the invention, with reference to the drawings

Example Patent Drawings U.S. Patent No. 8,984,188

Claims:The Most Important Part of a Patent!• Claims define the bounds of

your protected invention.

• Claims define what someone must do to infringe the patent.

• A claim is drafted as a single sentence.

• Claims are drafted for legal effect, NOT readability.

• Hybrid Techo-Legal Language

Example ClaimsU.S. Patent No. 5,960,411

Example ClaimsU.S. Patent No. 8,965,030

Example Claims U.S. Patent No. 8,984,188

Claims:The Most Important Part of a Patent!

• Claims may recite just the most critical elements of the invention– NukaCell includes elements A, B, C, D, E– Element A is the critical element that makes

NukaCell work– NukaCell Patent claims “a device comprising: A”

• A creation must include all elements of a patent claim to infringe on the patent– NukaCell includes A, B, C, D, E– NukaCell Patent claims a device with “A and B”– NeutroCell includes B, C, D, E • Does NOT infringe

– EnerPack includes A, B, F, G, H• Infringes

Claims:The Most Important Part of a Patent!

Inventorship: Who is an Inventor?

• Someone who contributed to conceiving of the invention– Jordan comes up with idea of NukaCell,

conceives element A– Riley conceives of combining A with B to make

NukaCell work– Jordan and Riley may both be inventors of

NukaCell

Inventorship: Reducing the invention to Practice is NOT Inventing!

• Jordan conceives of NukaCell that includes A, B

• Riley builds NukaCell according to Jordan’s instructions, so that NukaCell includes A, B– Riley is not an inventor

• Riley builds NukaCell and determines that adding element C makes NukaCell work when it includes A, B, C– Jordan and Riley may both be inventors

Inventorship: Inventors are Defined by the Claims• Jordan conceives of elements A, B

• Riley conceives of adding C

• Elliot conceives of adding D

• NukaCell patent claims elements A, B, C– Jordan, Riley are inventors– Elliot is not an inventor

• NukaCell patent claim amended to claim A, B, C, D– Jordan, Riley, Elliot are inventors

• NukaCell patent claim amended to claim A, B, D– Jordan, Elliot are inventors– Riley is not an inventor

Inventorship: Incorrect Inventorship Can Destroy a Patent!

• The Listed Inventors on a Patent Must Reflect the Correct Inventors of the Invention IN THE CLAIMS– Not research assistants who just followed

inventor instructions– Not the lab manager who simply manages

• If Inventorship is not correct, a patent may be invalidated

Patent Ownership: Who is a Patent Owner?

• Inventorship and Ownership are Not the Same Thing!

• Ownership is initially vested equally among the inventors– Jordan conceives 99% of NukaCell invention– Riley conceives 1% of NukaCell invention– Jordan and Riley own NukaCell Patent 100% each

equally

• Ownership may be divided differently according to assignment agreements

• Inventors may have a duty to assign ownership to someone else– Employees may have a signed agreement to assign

work-related inventions to employer

– Fellowships may require assignment of patent ownership to another entity

– Research Grants may require assignments

– The U.S. Government may have ownership depending on how the invention was created

Patent Ownership: Who is a Patent Owner?

How to Get a Patent

Invent •Must be sufficiently conceived that a skilled person in the art could practice the invention using your disclosure•Sometimes having the idea isn’t enough!

Document •Document the invention (DO NOT PUBLISH!)

File •Draft and File a patent application for the invention

Prosecute •Convince the patent office to grant you a patent for the invention•Timeline -- 2-5 years (could be much longer)

When to Apply for a Patent:IMMEDIATELY

• File for a patent immediately (ASAP)– In the US, the patent for an invention goes to the

first inventor to file the application for it, NOT the first inventor to have invented it

• If you don’t file immediately, you may not be able to get a patent, ever– For US - within one year of publication, public use,

offer to sell– Other Countries - must file before publication,

public use, offer to sell

When to Apply for a Patent:Speed is Of the Essence!

• 1/1/16 – Jordan invents NukaCell

• 2/1/16 – Riley invents NukaCell

• 3/1/16 – Riley files NukaCell patent application

• 3/2/16 – Jordan files NukaCell patent application

• Riley gets the patent– Jordan is out of luck!

• Your own publications may disqualify your US Patent Applications– Patents can be disqualified by publications filed more

than one year before patent filing date

• Your own publications WILL disqualify many International Patent Applications!

• Publication Examples– Peer-Reviewed Journal Articles– Dissertations– Verbal Conference Presentations– Conference Posters

File for a Patent Before You Publish!


• 2/1/16 – Jordan publishes invention in journal


• Application rejected based on the publication– Jordan is out of luck!



• 2/1/16 – Jordan publishes invention in journal

• 5/1/16 – Riley reads Jordan’s publication, writes own article about invention


• Jordan’s publication doesn’t disqualify Jordan’s patent application

• Riley’s publication might disqualify Jordan’s patent application– Jordan must prove that Riley’s publication was a result of Riley

learning the invention from Jordan


• Your publications may hurt your patent, EVEN IF PUBLISHED LESS THAN ONE YEAR BEFORE THE PATENT FILING DATE

• Publishing the invention with authors different from the inventors may be dangerous for your patent’s health– Patent Office may treat the publication as prior art– Opens the patent to inventorship scrutiny– May invalidate the patent during litigation



• 1/1/16 – Jordan invents NukaCell while directing student assistant Riley

• 6/1/16 – Jordan and Riley co-author journal article disclosing NukaCell

• 12/31/16 – Jordan files NukaCell patent application as sole inventor

• The publication may disqualify a patent if Riley’s presence in the article is not explained!

• Provisional Applications can secure filing date for invention without drafting full patent application

• Provisional Applications can be anything behind a cover sheet

• Easy Method – File publication as Provisional Application before publishing– Add at least one claim!

Provisional Patent Applications

• Provisional Applications secure Filing Date for Later-filed Non-Provisional Patent Application– But ONLY for what is covered by the provisional

application!

• Provisional Applications expire after one year– Must convert into Non-Provisional Application before

expiration date to keep the provisional filing date!



• 2/1/16 – Jordan files provisional NukaCell patent application• 2/2/16 – Jordan publishes article about NukaCell

• 5/1/16 – Riley independently invents NukaCell • 5/2/16 – Riley publishes own article about NukaCell• 5/3/16 – Riley files non-provisional NukaCell patent

application

• 6/1/16 – Jordan files non-provisional NukaCell patent application, claiming priority to the provisional application

• Neither Jordan’s publication nor Riley’s publication nor Riley’s patent application disqualify Jordan’s NukaCell patent

Inventor Good Practices

• Document the Invention – Early and Often

• If you owe a duty of assignment, provide documentation to responsible parties ASAP– Manager/Supervisor– Technology Transfer Office– Legal Department

• If you don’t owe a duty to anyone, file for patent BEFORE publicly disclosing invention!

Inventor Good PracticesMaintaining Invention Records

• Records can be invaluable for preparing a good patent

• Records may be important to determine Inventorship

• Records can disqualify certain prior art


• Record idea/developments– inventor notebook entry– printout kept in folder/binder– computer records (a little troublesome)

• Sign and date entries by inventor(s).

• Sign and date entries by witness who attests “Have read and understood the subject matter.”


•Each entry should include:– Purpose of the work undertaken– Projects/Research/Grants to which the invention relates– When invention was made– How invention was made– What resources were used to make the invention– Practical uses of the invention– Advantages and value of the invention over the present

state of the art – Those who contributed to the invention (i.e., the

inventors) and individual contributions– How invention could be identified in practice


• Each entry should NOT include– opinions on patentability of invention– expression of additional effort to complete or

commercialize invention– negative comments, comments reflecting

uncertainty, etc.

Please feel free to contact us.Michael D. GambleHarness, Dickey & Pierce, P.L.C.11730 Plaza America DriveReston, VA 20190Phone Number: 703-668-8025Email: [email protected]

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