下午好     Constructing a Comprehensive Patent    Strategy to AvoidProblems Down the Road    APLI Summer 2005       (c) Todd ...
Two Types of ProblemsThings   you              Things     over can do                        which you something        ...
Things You Can Control Inventorship                Quality of File Public disclosure or         History – IDS  sale    ...
Things you cannot controlAnything not on the previous listAnything involving:  The  other side, the patent office,   th...
Inventorship Claims  define who is and who is not an  inventor The owner and the patent lawyer  control which claims get...
Publication or Sale University   inventions   “Publish   and Perish” Corporate    inventions   The marketing departmen...
Filing Date and Location   Provisional 111(b) vs. Regular 111(a)       Term vs. granted quicker       Coordination of g...
Quality of Specification/Data How much data is enough? Heisenberg Principle   Filing   date vs. claim scope Means Plus...
Quality of Claims,Types of Claims Narrow  vs. Medium vs. Broad Comprising vs. Consisting Essentially Compound vs. Formu...
Types of Patent Searches State  of the Art Search Freedom to Operate Search Patentability Search Invalidity Search Co...
Conducting a thorough search Talk to the inventor USPTO database Classes, Subclasses, and Examiners PCT search and opi...
Quality of File History –        Duty of Candor One   of the only things the applicant has  in his or her control is fili...
Quality of File History –      Minimize Estoppel Statements                D  of E limitations  made in file            ...
Examiner Interviews No  records = clean file history Examiners not available as witnesses Attorney is available as witn...
Unclaimed disclosure Anything disclosed          Dedicated to the  in the patent                public if not in claims ...
Maintenance/Annuity Fees Due   at:    3-3.5,   7-7.5 and   11-11.5 years Anyone  can pay Can be revived up to 2 year...
Competitive Surveillance Patent   Publications   18   month window, patent families Conferenceabstracts and posters Tr...
RECAP   Entire organization must be aware of patent    issues:       Inventorship, publication, sale, maintenance fees ...
Unconvinced? Possible   Outcomes:   Bullet-proof   patent  Market exclusivity or    Licensing   Weakened patent  Free...
Thank Youtodd@juneaupartners.com        (c) Todd Juneau 2005
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Patent strategy

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Patent strategy

  1. 1. 下午好 Constructing a Comprehensive Patent Strategy to AvoidProblems Down the Road APLI Summer 2005 (c) Todd Juneau 2005
  2. 2. Two Types of ProblemsThings you Things over can do which you something have no about control (c) Todd Juneau 2005
  3. 3. Things You Can Control Inventorship  Quality of File Public disclosure or History – IDS sale  Quality of File Filing Date History – Estoppel Filing Location  Payment of Quality of Maintenance Fees Specification  Monitoring of Market Scope of claims, type of claims (c) Todd Juneau 2005
  4. 4. Things you cannot controlAnything not on the previous listAnything involving: The other side, the patent office, the courts, politicians, currency, markets, your partners, etc. (c) Todd Juneau 2005
  5. 5. Inventorship Claims define who is and who is not an inventor The owner and the patent lawyer control which claims get examined, and which claims which issued (c) Todd Juneau 2005
  6. 6. Publication or Sale University inventions  “Publish and Perish” Corporate inventions  The marketing department vs. the legal department vs. the patent lawyers (c) Todd Juneau 2005
  7. 7. Filing Date and Location Provisional 111(b) vs. Regular 111(a)  Term vs. granted quicker  Coordination of grant date and product launch U.S. vs. PCT Direct Early Foreign Filing DE/AU Gebrauchsmuster (“utility model”  10 yrs, novelty, ltd. publication bar, grace period Design Patents (c) Todd Juneau 2005
  8. 8. Quality of Specification/Data How much data is enough? Heisenberg Principle  Filing date vs. claim scope Means Plus Function? Submission of Working Model? (c) Todd Juneau 2005
  9. 9. Quality of Claims,Types of Claims Narrow vs. Medium vs. Broad Comprising vs. Consisting Essentially Compound vs. Formulation vs. Method vs. Use vs. Process vs. Device vs. System Searching is major determinant of claim type and scope (c) Todd Juneau 2005
  10. 10. Types of Patent Searches State of the Art Search Freedom to Operate Search Patentability Search Invalidity Search Competitive Activity Search (c) Todd Juneau 2005
  11. 11. Conducting a thorough search Talk to the inventor USPTO database Classes, Subclasses, and Examiners PCT search and opinions International publications Searching “backwards” (c) Todd Juneau 2005
  12. 12. Quality of File History – Duty of Candor One of the only things the applicant has in his or her control is filing an IDS Burden of Proof benefit Materiality Benefit of redundant prior art Duty owed by everyone involved with prosecution (corporate officers?) Inequitable Conduct & Consequences (c) Todd Juneau 2005
  13. 13. Quality of File History – Minimize Estoppel Statements D of E limitations made in file by estoppel history to  Narrowing overcome Amendments vs. rejections Broadening Amendments vs. Doctrine of Mixed Equivalents Amendments (c) Todd Juneau 2005
  14. 14. Examiner Interviews No records = clean file history Examiners not available as witnesses Attorney is available as witness Conflict of Interest within Litigation firm (c) Todd Juneau 2005
  15. 15. Unclaimed disclosure Anything disclosed  Dedicated to the in the patent public if not in claims application  Freedom to Operate Originally claimed or  Designing Around even merely disclosed Restriction Requirements (c) Todd Juneau 2005
  16. 16. Maintenance/Annuity Fees Due at:  3-3.5,  7-7.5 and  11-11.5 years Anyone can pay Can be revived up to 2 years (c) Todd Juneau 2005
  17. 17. Competitive Surveillance Patent Publications  18 month window, patent families Conferenceabstracts and posters Trade Show flyers Company Websites  Project Development Advertising SEC Filings and Annual Reports  License and Agreement Terms (c) Todd Juneau 2005
  18. 18. RECAP Entire organization must be aware of patent issues:  Inventorship, publication, sale, maintenance fees Use Prosecution Best Practices  IDS filings  Estoppel  Unclaimed Subject Matter  Examiner Interviews (c) Todd Juneau 2005
  19. 19. Unconvinced? Possible Outcomes:  Bullet-proof patent  Market exclusivity or Licensing  Weakened patent  Freedom to Operate  Loss of patent  loss of market, loss of shareholder value (c) Todd Juneau 2005
  20. 20. Thank Youtodd@juneaupartners.com (c) Todd Juneau 2005

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