guide in preparing documents for applying for patent

1. © 2010 Woodcock Washburn LLP
Patents and Technology Protection
“Everything You Wanted to Know About IP –
But Were Afraid to Ask”
University of Hawai’i
October 20, 2010
Disclaimer: Woodcock Washburn LLP is not providing
legal advice, but is only providing information through this
presentation.
Jeffrey H. Rosedale, Ph.D, J.D.

2. © 2007 Woodcock Washburn LLP
Who is this?
Shane Victorino,
Center Fielder,
Philadelphia Phillies
“The Flyin’ Hawaiian”

3. © 2007 Woodcock Washburn LLP
IP is important!
 Legally-protected competitive advantage over
your competition
 Important at all times; even during recessions
– Recessions can be good time to start a business
 IP-driven companies started during recessions:
– Procter & Gamble
– Disney
– Johnson & Johnson
– Microsoft

4. © 2007 Woodcock Washburn LLP
The Four “Flavors” of IP
Trademarks
Identify source of goods
Copyrights
Protect works of authorship
Trade Secrets
Protect processes,
information
Patents
Protect processes,
compositions, devices
*

5. © 2007 Woodcock Washburn LLP
What You Need to Know About Patents
 What legal rights do patents provide (and
not provide)? Who owns these rights?
 What types of inventions are patentable?
 What are the legal requirements for
patentability? What problems can arise?
 What is the process for patenting an
invention? Who is an inventor?
 Why are the claims so important?

6. © 2007 Woodcock Washburn LLP
What is a Patent?
A PATENT IS A BUSINESS TOOL.
In Academia: patents spur interest in
turning research results into
products that benefit the public.

7. © 2007 Woodcock Washburn LLP
Patent Examples
Animal Ear Protector

8. © 2007 Woodcock Washburn LLP
Wearable Pet Enclosure

9. © 2007 Woodcock Washburn LLP
Toy Bar Soap Slide

10. © 2007 Woodcock Washburn LLP
High Five Simulator

11. © 2007 Woodcock Washburn LLP
A Notable University Patent

12. © 2007 Woodcock Washburn LLP

13. © 2007 Woodcock Washburn LLP

14. © 2007 Woodcock Washburn LLP
Patents Provide an Exclusive Property Right
- A patent DOES NOT
confer to the owner the
right to practice the
claimed invention!
- A patent IS NOT a
“Seal of Approval of
Excellence in
Technology” from the
U.S. Patent and
Trademark Office!

15. © 2007 Woodcock Washburn LLP
A Patent is “A Contract with Society”
 Inventor gives to society:
– A written description of his/her invention
that sufficiently teaches “one of ordinary
skill in the art” how to make and use the
claimed invention, and that sets forth
the “best mode” at the time of filing the
patent application.
 Inventor gets from society:
– About a 20 year monopoly from the filing
date to exclude others from practicing
the claimed invention.

16. © 2007 Woodcock Washburn LLP
The “CLAIMS” are key…
Claims – provide the metes and bounds of the
right that the patent confers to exclude others
from “trespassing” on the invention:
The Claimed
Invention

17. © 2007 Woodcock Washburn LLP
Claim Terminology
 “comprising”
– is synonymous with “including”,
“containing”, or “characterized by”
– is inclusive or open-ended and does
not exclude additional, unrecited
elements or method steps

18. © 2007 Woodcock Washburn LLP
Claim Analysis
Example claim:
1. A cutting device, comprising:
a metal blade having a cutting edge, and
a handle attached to the metal blade.
ANALYSIS: Any cutting device that has a metal blade
having a cutting edge, and a handle attached to
the metal blade will infringe the claim.
DO THESE INFRINGE?
? ? ? ?
Yes Yes Yes No

19. © 2007 Woodcock Washburn LLP
A Variety of Patentable Inventions
 Machines &
Devices
 Processes
 Articles of
manufacture
 Compositions of
matter

20. © 2007 Woodcock Washburn LLP
 Note especially…
– Improvements to known technologies
– New combinations of known
technologies
– New uses of known technologies
– … are all patentable!

21. © 2007 Woodcock Washburn LLP
What is not patentable?
• Laws of nature
• Natural phenomena
• Abstract ideas
• Humans

22. © 2007 Woodcock Washburn LLP
Requirements for Patentability
(Important!)
 Utility – it must be useful
 Novelty – it must be new *
 Non-obviousness – it can’t be a mere
variation of what was done before
 Enabling Description -- application must:
– fully disclose invention (including “best mode”
contemplated at time of filing); and
– allow a person having ordinary skill in the art to
make and use the invention
Search patents,
publications, public
uses (news, internet,
USPTO website, etc.)

23. © 2007 Woodcock Washburn LLP
Example - Patenting Your Invention
time
Lee Taylor, et al., UH
OTTED

24. © 2007 Woodcock Washburn LLP
Who is an inventor?
An “inventor” is simply a person who
contributed to the intellectual conception
of the claimed invention.
Who is not an inventor?
- workers who merely do what is asked and report
requested information to others
- managers who merely suggest a goal to achieve,
but not how to achieve it
Inventorship ≠ Authorship

25. © 2007 Woodcock Washburn LLP
Your Publication Can Void Your Patent
Publish or present your
invention after filing a
patent application.
“Publishing” = “any public
disclosure”
For a U.S. patent – a one year
grace period to file a patent
application
For international patents –
typically, no patent for that
which was disclosed!

26. © 2007 Woodcock Washburn LLP
Your Actions Can Void Your Patent
Avoid selling, offering for
sale, or using the
invention in public.
For a U.S. patent – a one
year grace period to file a
patent application
For international patents –
typically, no patent for
that which was disclosed

27. © 2007 Woodcock Washburn LLP
Document how and when you
made your invention
Inventors should keep
notebooks – numbered
pages, signed, dated and
witnessed - to document
their work.
Why?
 “First to invent wins the
patent” rule in the U.S.
(v. “first to file”
elsewhere)

28. © 2007 Woodcock Washburn LLP
Keep Abreast of Relevant Literature in
Your Field
Do literature and
patent searches
Identify the “closest
prior art” to your
invention
Give key prior art
references to your
patent attorney to
analyze and submit to
Patent Office
http://www.cisl.ucar.edu/news/02/foto
week/1025.move1.jpg

29. © 2007 Woodcock Washburn LLP
 Draft a patent application (use a patent
attorney)
– describe how to make and use the claimed
invention
– disclose your “best mode”
– File it with the U.S. Patent and
Trademark Office
Obtaining Patents

30. © 2007 Woodcock Washburn LLP
http://www.uspto.gov/
U.S. PATENT AND
TRADEMARK OFFICE

31. © 2007 Woodcock Washburn LLP
“priority date”
20 Oct 2010
file U.S. patent
application
Typical Patent Application Timeline
one year from priority date –
file optional “international”
patent application(s)
“filing date”
20 Oct 2011
“publication date”
20 April 2012
time
1.5 years from
priority date –
publication of
patent
application
Examination of the Patent
Application and Claims Begins
by a U.S. Patent Examiner
Examination Continues
Your Article Publishes

32. © 2007 Woodcock Washburn LLP
Patentability v. Infringement of a
Patent Claim
Patent
Application
Priority Date
20 Oct 2010
Future products
infringe the claim
time
Prior Art (publications and
products) discloses the claim
Claim: A cutting device, comprising:
a metal blade having a cutting edge,
and
a handle attached to the metal blade.
Patent application for “Cutting Device”

33. © 2007 Woodcock Washburn LLP
Patent Caveats
 Co-inventors
 Obligations to Assign
Patent Rights
 Written Agreements
… MTAs, NDAs, CDAs
http://www.revolutionarycreation
s.com/duel_of_the_geeks.jpg

34. © 2007 Woodcock Washburn LLP
Pop Quiz – What You Need to Know
Question:
1. What is a patent?
2. What is patentable?
3. What type of legal right
do patents provide?
4. What are the
requirements for
patentability?
5. Who is an inventor?
6. Why obtain a patent?
Answer:
1. A business tool.
2. Almost anything.
3. Exclusive -- “no
trespassing”.
4. New, useful, non-obvious,
disclose how to make
and use, best mode.
5. Intellectual contributor to
the claims.
6. A business tool.

35. © 2007 Woodcock Washburn LLP
Go Phillies!
Mahalo!
Any questions?
Jeff Rosedale, 215-564-8969 (w), jrosedale@woodcock.com