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SKGF_Presentation_The Gate Intellectual Property Groundwork_2004

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  • 1. Out of the Gate Nanotechnology Intellectual Property Groundwork Donald J. Featherstone Director Sterne, Kessler, Goldstein & Fox donf@skgf.com Michael D. Specht Attorney Sterne, Kessler, Goldstein & Fox mspecht@skgf.com Presented at: International Engineering Consortium NanoEngineering World Forum June 23, 2003 - Marlborough, MA © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C.
  • 2. What is Intellectual Property? “Intellectual property” refers to creations of the human mind that are protected by state and federal law in a fashion similar to real property. Both federal and state laws create intellectual property rights that include: l Patents l Copyrights l Trademarks l Trade Secrets 1 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 1
  • 3. U.S. Patent Rights l A patent is a grant by the United States federal government that entitles the owner (e.g., an individual inventor or company) to exclude others from: – Making, using, selling, offering to sell or importing into the United States an invention. – A domestic patent only provides these exclusive rights in the United States. – Right to practice invention NOT automatic, because of others’ prior patent rights. – Term of a patent is 20 years from the earliest filing date of the application. 2 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 2
  • 4. Trade Secrets l Secret information – Reasonable means of protection (visitors/vendors) – Commercial advantage l Independent development/reverse engineering l Do not coexist with patents l Employee agreements and NDAs l Others’ secrets - unsolicited ideas 3 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 3
  • 5. Trade Secrets vs. Patents Trade Secrets Patents Indefinite duration as long as 20 Years from earliest Filing Date maintained secret Must Formally Apply with USPTO Automatic Protection (2 - 3 year process) Exclusive Rights Include: Exclusive Rights Include: Reproducing, distributing, Excluding Others from Making, displaying, transmitting, and Using, Selling, Offering to Sell, preparing derivations and Importing Protects Against Stealing and Protects Functionality, Operation, Copying of Proprietary, Trade Structure Secret Information Even if Independently Created Can Can be Reverse Engineered be Designed Around Laws principally vary by State Laws principally at Federal level 4 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 4
  • 6. Patent Requirements l A patent is granted to the first inventor of an invention (process/method, machine, article of manufacture, or chemical compound) that is: – Useful – Novel – Nonobvious – Sufficiently described l New and useful improvements are also patentable. l “Anything under the sun made by man” is patentable, including software and business methods. 5 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 5
  • 7. Two Types of Utility Applications l Provisional – Not examined and does not provide exclusive right – One-year life – Must meet same legal disclosure requirements as provisional to create priority date for non-provisional l Non-provisional – Examined and can provide exclusive right if issued as a patent – To obtain priority date of provisional, must file within one year of provisional 6 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 6
  • 8. From Idea to Patent Conception Reduction to Practice Application Development Prosecution Divisionals Continuations U.S. Publication Foreign Filing 7 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 7
  • 9. Conception From Idea to Patent l Facts – Conceiving of an idea for an invention. – Critical date in “first to invent” system. – Used to determine who invented first, and therefore who has a right to patent (interference). l Nano Issues – More important than usual. Huge influx of research monies and industry participants jockeying for IP. 8 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 8
  • 10. Conception From Idea to Patent l Nano Opportunities and Approaches – Clearly document idea and date of conception with corroboration. – Be diligent to avoid loss of rights. – Consider filing provisional application. 9 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 9
  • 11. Reduction to Practice From Idea to Patent l Facts – Verification that invention works, either actual or constructive. l Nano Issues – What does it take to confirm that invention has been reduced to practice? – Is the science predictable? What is the tradeoff between predictability and obviousness? l Nano Opportunities and Approaches – Error on the side of explaining more, rather than less. – Provide detailed testing and simulation results, when appropriate. 10 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 10
  • 12. Application Development From Idea to Patent l Facts –Interactive process between inventor(s) and patent attorney to describe and claim the invention. • Text and figures must enable one skilled in the art to make and use invention without undue experimentation. • Must set forth best mode for carrying-out the claims. l Nano Issues – Ideas are incomplete, generally. – Managing the patent attorney in a “new technology.” – Breadth and number of claims. 11 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 11
  • 13. Application Development From Idea to Patent l Nano Opportunities and Approaches – Invest the time and effort to educate your patent attorney. – Inventors must take time to carefully review applications. – Generally, many claims with varying breadth. 12 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 12
  • 14. Claim Opportunities l New nano scale devices and materials l New methods of manufacturing l New nano-enabled functionality and methods of use l Improvements of devices, materials and methods l Integration of new or improved nano materials into micro or macro systems 13 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 13
  • 15. Prosecution From Idea to Patent Divisionals Continuations l Facts – Interactive process between patent office and inventor to agree on allowable claims. – Process can take multiple years. Continuations and divisionals even longer. l Nano Issues – Business as usual at the USPTO. – Keeping tabs on your invention (ownership, inventorship) – Knowing what’s important to claim. – Loss of rights (one-year domestic grace period). 14 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 14
  • 16. Prosecution From Idea to Patent Divisionals Continuations l Nano Opportunities and Approaches – Review of published applications. – First to invent battles (“interferences”). – Leverage PTO process to optimize claim coverage. 15 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 15
  • 17. Duty of Disclosure l Duty on applicants, attorneys and anyone substantively involved in the patent application process to disclose all “material” information that they are aware of to the Patent Office. l No duty to search l Duty continues until issuance l Failure to comply may render patent unenforceable. 16 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 16
  • 18. Ownership l Employment Agreements. – Past – Present l Assignment Agreements. l Technology Transfer Issues. l “Know what you own. Own what you know.” 17 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 17