Mintz Levin. Not your standard practice.
Patents 101: Protecting Innovations
Michael Van Loy and James Cleary
Importance of Patents
• A patent grants the patent owner the right to
prevent others from making, using, selling,
offering to sell, or importing the protected
– Limited monopoly (up to 20 years from earliest
– Does not grant the right to practice the invention –
only to prevent others from doing so
Importance of Patents
• Competitive business advantage - “Speed bumps” & “Barriers”
• Revenue stream from licensing
• Access to others’ technology via cross-licenses
• Leverage - Patents are valuable as sword and shield
• Demonstrate viability and value to investors
• Ability to collect damages via litigation
– Reasonable royalty / lost profits / hybrid approach
– Enhanced Damages for willful infringement
What Makes an Invention Patentable?
• Statutory requirements
– Utility - (35 U.S.C. § 101) – Must be “useful” and non-abstract
– Novelty (35 U.S.C. § 102) – Must be new
– Inventiveness/Non-obviousness (35 U.S.C. § 103) – Must not be an
“obvious” modification of known approaches
– Sufficient, enabled description, including the “best” mode (35 U.S.C. § 112)
OK, So… Did We Invent Something Or Not?
• If in doubt, assume that you did
• Exploratory questions:
– “What do we do that gives us a competitive advantage?”
– “How do we maintain this competitive advantage?”
– “What barriers to entry can we create for potential competitors?”
– “What would a competitor want to copy?
– “What problems did we encounter and how did we solve them?”
• Look at the “core” technology, “interfaces” to the core
technology, ancillary aspects, consumables, and the like.
• Types of patents
– Utility patent (a.k.a. a “non-provisional” patent)
– Design (ornamentation – can cover aspects of a
unique user interface, etc.)
Contents of Patent Application
• Specification –
– Why is the invention needed/how is it useful?
– What is the invention/what does it do?
– How does it work?
– Useful for understanding and implementing the invention
Claims: Define Scope of Invention
• Validity vs. “Infringe-ability”
• Ideally, the claims include the smallest set of features necessary to
differentiate the invention relative to the prior art
• For software or computer-based inventions, the claims generally read
as a list of operations, process steps, etc.
Specification and Figures
• Good patents come from good disclosures
– The claims must be supported, explained, etc.
– Insufficient disclosure can weaken or even kill a patent or make it difficult to
secure an allowance
• Too much disclosure is almost enough
How Do We Get Started?
• Invention Disclosure Form
– Detailed technical description including flow chart and
system block diagrams
– What does it do?
– How does it do it?
• Identification of known prior art
– Duty of Candor - Obligation to disclose to USPTO
– What you are aware of since there is no obligation to
• Who are the inventors?
Before We File
• Inventors discuss the invention with an attorney
• Attorney prepares a draft of the application
• Inventors review the draft
• Follow-up discussion (if necessary)
• Inventors sign some paperwork:
– Assignment to the company
• Finalize and file the application
After Filing…now what?
• File Patent Application
• Receive an Office Action
– 12-48 months depending on technology
– Application is usually rejected, at least in part
• File Response to Office Action
– Argue patentability of originally submitted claims
– Amend claims and argue patentability of amended claims
• Iterate until patent is allowed / abandoned
• Patent issues
• Mark products
– Payment of royalties in exchange for not being sued for patent infringement
Public Disclosure Issues
• Public disclosure prior to filing can trigger loss of patent rights
• United States:
– 1-year grace period to file a U.S. patent application after disclosure:
• Publication: Paper, Slides, Web Site, Blogs, Marketing Literature
• Public Use: Testing without Clear Confidentiality
• Sale, and Offer for Sale
Public Disclosure Issues
• Rest of World
– Shorter Grace Period (Typically None) in which to file foreign patent
application after unprotected disclosure
– Disclosure without NDA = Immediate Loss of Patent Rights
• BEST TO FILE AN APPLICATION BEFORE A DISCLOSURE
• Good ideas are only valuable if adequately protected
• Patents can increase the value of the company
• There are ways to protect any innovation, but timing
– IP rights can easily be forfeited (Protect Before
• Work closely with IP counsel and management
– Do not hesitate to discuss new ideas with manager
– Fill out invention disclosure forms for consideration
Michael Van Loy
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