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411 on Patents 101


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Patents Presentation for NCET2 w/ Henry Wixon-Chief Counsel at US-DOC-NIST

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411 on Patents 101

  1. 1. What is Intellectual Property Law ? “Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.” –WIPO
  2. 2. US Legal Basis for IP Rights U.S Constitution The Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. (Art. 1, Sec. 8, Clause 8) Laws, Regulations & Guidance  Federal Law: 35 U.S.C. § 100 et seq.  Regulations: 37 C.F.R. Chapter I, Subchapter A  US PTO Manual of Patent Examining Procedure (MPEP) [] 3
  3. 3. Why is it Important to Protect your Intellectual Property ?  Ability to protect core ideas  Limited term monopoly  Provides a protected competitive advantage  Opportunity to recoup costs on necessary R&D  Defend one’s ideas from infringement  Commercialize your invention successfully no more “Grant Proposals”!
  4. 4. Types of IP Trade Secret  “Secret Sauce” Copyright  “Artistic expression in the way something looks or sounds” Patent  “Protects the embodiment or method of an idea” Trademark  “Branding” DO NOT USE THESE TERMS INTERCHANGEABLY!
  5. 5. Patents—SummaryWhat may be protected Process, machine, manufacture or composition of material; plants; designsProtection provided May prevent others from making, using, selling, offering for sale and importingHow to obtain Application process through US Patent & Trademark OfficeprotectionDuration Utility/Plant—20 years from filing Design—14 years from filingEnforcement Infringement suit in Federal Court Flow Diagram from the USPTO on the Process 6
  6. 6. Patents What is a patent?  Often considered a contract between government and an inventor  A limited and temporary monopoly granted by the government in return for a full disclosure by the inventor of the details of his or her invention 7
  7. 7. Patents Limited Monopoly in Exchange for Disclosure  The inventor discloses the invention in sufficient detail to teach a person skilled in the same field of art how to make and practice the invention.  The expectation is that, in view of the teaching, people will then build upon this invention to create improvements and other new inventions.  The monopoly is limited to 20 years from the date the patent application was filed (Utility/Plant). 8
  8. 8. Patents: Specific RightsA patent affords the owner the right to excludeothers from making, using, offering to sell,selling, or importing the claimed invention (35U.S.C. §271).A patent does not give the owner an affirmativeright to make, use, offer to sell, sell, or importthe claimed invention. 9
  9. 9. Patents (Cont’d.)What may be patented?  Utility Patent  Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof (35 U.S.C. §101)  Note: A “Utility Patent” in Europe means something else and is a lesser type of patent.  Plant Patent  Any new and distinct, invented or discovered asexually reproduced plants (35 U.S.C. §161)  Design Patent  Any new, original, and ornamental design for an article of manufacture (35 U.S.C. §171) 10
  10. 10. Requirements to Obtain a Patent Utility Novelty Non-obviousness Disclosure 11
  11. 11. Patent Applications Provisional Patent Application  Placeholder-1 year from date of filing  Claims are not required, and application is not examined  Automatically abandoned at one year, and priority date is forever lost, unless it is converted or priority is claimed in a utility application  Missing Parts Pilot Program (Extends Prov to 2Yrs) Utility Application  Claims required and inventorship determined;  Application subject to substantive examination; and  Patent may issue 12
  12. 12. Typical Patent Application Process Provisional Non-Provisional-Examiner Reviews Case Non-Final Rejection Claim Amendment by Filer Allowance or Final Rejection If Allowed-Done but if FR then an After-Final Typically Occurs If AF-Rejected then RCE, Abandonment, or Appeal to BPAI If case goes BPAI route can eventually go CAFC and then SCOTUS
  13. 13. Utility Patent: Statutory Subject Matter Title 35 U.S.C. §101 Inventions Patentable Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 14
  14. 14. Utility Patent: Statutory Subject Matter  Process  Defined as a process, act, or method, and primarily includes industrial or technical processes  Includes a new use of a previously known process, machine, manufacture, composition of matter, or material  Machine  Manufacture  Articles that are made; includes all manufactured articles  Composition of Matter  Chemical compositions: may include mixtures of ingredients as well as new chemical compounds 15
  15. 15. Utility Patent: Statutory Subject MatterMatters not subject to patent protection  Laws of nature  Physical phenomena  Abstract ideas  Inventions solely used for nuclear or atomic weapons  Perpetual Motion Machines Can’t be Patented! 16
  16. 16. A Single “Invention” Can SpanMore Than One Statutory Category Example 1: Chemical Invention  Composition of Matter  New chemical compound  Pharmaceutical formulation  Process  Method of making the chemical compound  Method of using the chemical compound for specific purpose Example 2: Mechanical Invention  Machine  Computer-based apparatus for processing data  Process  Method for processing data 17
  17. 17. Utility Patents: Disclosure Parts of the Application:  Specification  Drawings  Claims 18
  18. 18. Utility Patent: DisclosureSpecification: A written description of the invention; The manner and process of making and using it; Sufficient to enable a skilled worker to make and use it; Including the best mode of practicing it. 19
  19. 19. Utility Patent: Claims Must point out and distinctly claim what applicant regards as the invention Defines and delimits the scope of the exclusive right A very important part of the application 20
  20. 20. Patents: Novelty “A person shall be entitled to a patent unless” -  PTOs burden to show invention is not patentable;  Applicant has uncompromising duty of candor to disclose material information;  PTO performs independent art search;  Rejection(s) must be supported by a proper prima facie case.  Burden shifts back to applicant to prove, e.g.,  Evidence is not prior art;  Evidence is insufficient to support a prima facie case;  Evidence does not disclose operable embodiment(s). 21
  21. 21. Patents: Nonobvious Subject Matter Invention is not identically disclosed in the art (novelty); But differences between prior art and the invention "would have been obvious at the time the invention was made to a person having ordinary skill in the art...." --35 U.S.C. §103 22
  22. 22. Patent: InfringementInfringement of a Patent  Claims delimit the exclusive right  Literal infringement  The literal language of a claim reads on the accused product/process  Every limitation of a claim is met  Doctrine of Equivalents (DOE)  The DOE can expand exclusive rights beyond the literal language of the claim  Limitations: Prior art & Prosecution History 23
  23. 23. Prior Art & International Protection People will forever keep on “reinventing the wheel” Know your technology’s competitive landscape Just because you have a patent does not mean your IP is protected US Patent is good only in the US PCT Applications provide an opportunity to file your patent protection globally with other country’s IP offices Hard to enforce adequate protection overseas without procuring Patents in foreign countries.  Unless you are a MNC or buddies with the USTR Rep
  24. 24. The America Invents Act Signed into law by President Obama September 16, 2011 As noted by USPTO Director David Kappos, the AIA is “the most comprehensive overhaul to our nations patent system since 1836.” 25
  25. 25. The America Invents Act Key Elements Fast track option for Patent Processing within 12 Months: Instead of an average wait time of almost three years, the PTO will be able to offer startups growing companies an opportunity to have important patents reviewed in one-third the time – with a new fast track option that has a guaranteed 12-month turnaround.  Patent ownership is a critical factor venture capital companies consider when investing in entrepreneurs hoping to grow their business. Reducing the patent backlog: Additional resources provided in the law will allow the PTO to continue to combat the backlog of nearly 700,000 patent applications and will significantly reduce wait times. Reducing litigation: The PTO will offer entrepreneurs new ways to avoid litigation regarding patent validity, at costs significantly less expensive than going to court. Increasing patent quality: The law gives the PTO additional tools and resources to further improve patent quality, and allows patent challenges to be resolved in-house through expedited post-grant processes. Harmonizing American Patent Law: The new law harmonizes the American patent process with the rest of the world to make it more efficient and predictable, and make it easier for 26 entrepreneurs to simultaneously market products in the U.S. and export abroad.  The PTO has
  26. 26. The America Invents Act “First Inventor to File” The effective date for the First Inventor to File provision of AIA is March 16, 2013. An application filed before that date would not be subject to the first-inventor-to- file provisions.  That application would be treated under the first-to-invent provisions of the law in effect on September 15, 2011. Even after “First Inventor to File” takes effect, only inventors are entitled to a patent.  Someone who copies another’s idea cannot be the inventor. Someone who copies another’s idea and files a patent application on the subject matter before the true inventor does so would not be entitled to a patent. Regardless of whether an application is filed before or after the “First Inventor to File” provisions take effect on March 16, 2013, disclosure one month prior to a filing date is not prior art to the claimed invention by virtue of a one year grace period. 27
  27. 27. The America Invents Act “Best Mode” The effective date for the Best Mode provision of the AIA was September 16, 2011. Under the AIA’s amendment to 35 U.S.C. 282(a)(3), concerning Best Mode, the failure to disclose the best mode shall no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.  AIA’s amendment to 35 U.S.C. 282(a)(3) is applicable only in patent validity or infringement proceedings, and does not change current patent examination practice regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112, as set forth in the Manual of Patent Examination Procedure (MPEP) § 2165. 28
  28. 28. The America Invents Act “Derivation Proceeding” The effective date of the “Derivation Provision” under the AIA is September 16, 2012. A “Derivation Proceeding” under the AIA requires filing a petition. A petitioner must claim the same or substantially the same invention as the earlier application’s claimed invention.  The petition must be supported by “substantial evidence” that the earlier claimed invention was derived from petitioner, and filed without authorization.  An applicant for patent may file a petition for a derivation proceeding.  The petition must be filed within one year of first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. 29
  29. 29. The America Invents Act “Inter Partes Reexamination” The effective date of the inter partes reexamination provisions was September 16, 2011. Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination.  Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request.  The standard for ex parte reexamination remains unchanged. The pre-AIA Substantial New Question of patentability (SNQ) standard is applicable in determining whether a request for inter partes reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to September 16, 2011.  Inter partes review replaces inter partes reexamination as an avenue for a third party’s patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012. Inter partes reexaminations pending on that date will not be converted into inter partes review proceedings.  Any request for inter partes reexamination filed on or after September 16, 2012, will not be granted.    30
  30. 30. The America Invents Act “Inter Partes Review” The inter partes Review process will be effective September 16, 2012. Under the new inter partes Review process, a petitioner may request to cancel as unpatentable 1 or more claims of a patent based on §§ 102, 103 using patents or printed publications.  A person who (a) is not the owner of the patent and (b) has not previously filed a civil action challenging the validity of a claim of the patent may file, accompanied by payment of the required fee, a petition to institute an inter partes Review of the patent.  The petition must demonstrate a reasonable likelihood that the petitioner will prevail on at least one claim challenged.  The petition cannot be filed until after the later of: 1) 9 months after the grant of a patent or issuance of a reissue of a patent, or 2) the date of termination of any post grant review of the patent. 31
  31. 31. The America Invents Act “Post Grant Review” The effective date of the provisions for Post Grant Review is September 16, 2012. Under the Post Grant Review process, a petitioner may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity), i.e., §§ 101, 102, 103, 112 (except best mode).  A Post Grant Review is generally limited to patents issuing from an application filed under the first- inventor-to file system. A person who (a) is not the owner of the patent and (b) has not previously filed a civil action challenging the validity of a claim of the patent may file, accompanied by payment of the required fee, a petition to institute a Post Grant Review of the patent.  The petition must demonstrate that it is more likely than not that the petitioner will prevail on at least one claim challenged or raises a novel question that is important to other patents or publications.  The petition may be filed only within 9 months after the grant of a patent or issuance of a reissue patent. 32
  32. 32. The America Invents Act“Prioritized Examination (Track 1)”  The effective date of prioritized examination was September 26, 2011.  Prioritized Examination is a procedure for expedited review of a patent application for an additional fee.  The Office’s goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.   Nonprovisional utility and plant patent applications with no more than 4 independent claims, 30 total claims, and no multiple dependent claims filed on or after September 26, 2011 are eligible for Prioritized Examination (Track I).   Requests for Prioritized Examination of utility patent applications must be filed using EFS- Web.  Requests for Prioritized Examination of plant patent applications must be filed in paper.  For both utility and plant patent applications, it is strongly recommended that applicants use Form PTO/SB/424 to request prioritized examination, but the form is not required.   Fees include, but are not limited to a Track I prioritized examination fee of $4800.00 ($2400.00 for small entities). 33
  33. 33. The America Invents Act “Micro-Entity Discount” Often 75% discount Institutes of higher education are automatic Or  – No more than 4 previous U.S. non-provisional patent applications  – Gross income not exceeding 3x the median income “has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to” a non-micro entity. 34
  34. 34. The America Invents Act“Tax Strategies, Business Methods” The AIA makes important changes affecting applications with claims directed to “Tax Strategies” and certain “Business Methods,” including a “Transitional Program” for “Covered Business Method Patents.” If your invention, application or issued patent involves these types of claims, consultation with patent counsel is suggested. 35
  35. 35. Patents: Novelty – Pre-AIA A person shall be entitled to a patent unless -  The invention was known or used by another, or patented or published before invention by applicant;  It was patented or published anywhere, or publicly used or on sale in this country >1 year before filing the application;  It was abandoned by the applicant; or  It was patented by applicant in a foreign country prior to application in the U.S. on an application filed more than 12 months before filing in the U.S.  Applicant did not invent it (derivation) 36
  36. 36. Patents: Novelty – Post-AIAA person shall be entitled to a patent unless“(1) the claimed invention was patented, described in a printed publication,or in public use, on sale, or otherwise available to the public before theeffective filing date of the claimed invention; or(2) the claimed invention was described in a patent issued under section151, or in an application for patent published or deemed published undersection 122(b), in which the patent or application, as the case may be, namesanother inventor and was effectively filed before the effective filing date ofthe claimed invention.” 37
  37. 37. Patents: Novelty – Post-AIA‘‘(b) EXCEPTIONS.—‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVEFILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year orless before the effective filing date of a claimed invention shall not be prior art to theclaimed invention under subsection (a)(1) if—  ‘‘(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or  ‘‘(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” 38
  38. 38. Patents: Novelty – Post-AIA‘‘(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—‘‘(A) the subject matter disclosed was obtained directly or indirectly from theinventor or a joint inventor;‘‘(B) the subject matter disclosed had, before such subject matter was effectively filedunder subsection (a)(2), been publicly disclosed by the inventor or a joint inventor oranother who obtained the subject matter disclosed directly or indirectly from theinventor or a joint inventor; or‘‘(C) the subject matter disclosed and the claimed invention, not later than theeffective filing date of the claimed invention, were owned by the same person orsubject to an obligation of assignment to the same person.” 39
  39. 39. Patents: CREATE Act incorporated into AIA Limited safe harbor from obviousness for collaborators from different institutions;  Invoked upon §103(a) rejection  Available only if:  A Joint Research Agreement (JRA) was in effect at time of invention;  Prior art and invention both made by parties to JRA;  Invention resulted from activities within scope of JRA;  Amend application to identify parties to JRA  For any collaborative effort, e.g., MTA, NDA, CRADA ... 40
  40. 40. Utility Patent: PriorityRecordkeeping – Still Important After American Invents Act!  Changes “First to Invent!”  US patents will no longer be available for a first inventor if a second inventor files first  Ways of proving derivation:  Permanent record, e.g., laboratory notebook  Dated  Witnessed 41
  41. 41. The America Invents ActLearn More at PTO AIA Web Pages  PTO has set up a web page devoted to AIA that is being frequently updated:  Look for multiple Notices of Proposed Rule Making from the PTO over the next year as it implements the AIA, with short comment periods and no extensions. The PTO is encouraging stakeholders not to wait for a specific Notice to submit comments. 42
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