This document discusses patents and strategies for patent success. It defines a patent, explains the US legal regime including what makes an invention novel and non-obvious. It emphasizes starting with a business and patent strategy, continually reevaluating, and managing intellectual property from invention disclosure through prosecution and after issuance. The key to success is having patentable technology that meets market demand and using intellectual property to support business goals.

2. “All About
Patents”
Thomas F. Lebens
Partner and Chair, Intellectual Property Practice Group
Sinsheimer Juhnke Lebens and McIvor, LLP
Managing Partner, West Coast Operations
Fitch, Even, Tabin and Flannery, GP

3. Overview
 Introduction
 What is a patent?
 What makes for success?
 Examples of “success”
 Success revisited
 Conclusions

4. What is a patent?
 Right to exclude others from making, using, or
selling what is claimed in an issued patent for 20
years from its earliest non-provisional filing date
 Was 17 years from issue date prior to 1995
 Plus, retroactive damage right, under limited
circumstances
 New in 2000

5. Legal Regime
 U.S. Constitution
 Federal Statute (U.S. Code)
 Federal Regulations
 Federal Administrative Procedures
 Case law

6. U.S. Constitution
 The U.S. Constitution
 Art. 1, Sec. 8, Cl. 8 “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.

7. Federal Statute
 Statutory subject matter (35 U.S.C. § 101)
 Anything under the sun made by a person
 Business Methods – State Street Bank case
 Useful (35 U.S.C. § 101)
 Novel (35 U.S.C. § 102)
 Narrowed in 2000 to include more “secret” prior art
 Non-obvious (35 U.S.C. § 103)
 Written description, enablement, best mode (35
U.S.C. § 112, first paragraph)

8. Federal Statute
 Statutory subject matter
 Product, device, apparatus, structure
 Method, process for using, or for making
 Article of manufacture
 Composition of matter

9. Federal Statute
 Useful
 No practical consideration need be given to the "utility"
requirement in relation to common mechanical or electrical
devices. However, some showing of utility may be necessary
when seeking patent protection for inventions whose "real
world" value may be difficult to gauge or substantiate, such as
chemical and pharmaceutical compounds. See, for
example, Brenner v. Manson, 383 U.S. 519 (1966), noting
that "[a] patent is not a hunting license. It is not a reward for
the search, but compensation for its successful conclusion.
„[A] patent system must be related to the world of commerce
rather than to the realm of philosophy. . . .‟" Id. (citations
omitted).

10. Federal Statute
 Novel
 No patent protection is available for:
 an invention known or used by others in the U.S. prior to the date of
invention by the Applicant.
 an invention patented or described in a printed publication anywhere
(U.S. or abroad) prior to the date of invention by the Applicant.
 an invention patented or described in a printed publication anywhere
(U.S. or abroad) more than one year prior to the U.S. filing date of
the patent application.
 an invention in public use in the U.S. more than one year prior to the
filing date of the patent application.
 an invention on sale in the U.S. more than one year prior to the filing
date of the patent application.

11. Federal Statute
 Non-obvious
 In general terms, an invention is not patentable
if, considering the prior art that existed at the time of
invention, the invention would have been obvious to a
person of ordinary skill in the art. Obviousness rejections are
common during patent prosecution; however, because such
rejections are somewhat subjective, they can often be
overcome through persuasive argument. Secondary
considerations of (1) commercial success; (2) long-felt need;
and/or (3) commercial acquiescence can factor into such
arguments. See Graham v. John Deere, 383 U.S. 1 (1966).

12. Federal Statute
 “112” requirements
 Written description sufficient to support claims
 Sufficient to enable one of ordinary skill in the art
to practice the invention without undue
experimentation
 Best mode of practicing the invention

13. So, what makes for a success?
 Statutory subject matter (35 U.S.C. § 101)
 Useful (35 U.S.C. § 101)
 Novel (35 U.S.C. § 102)
 Non-obvious (35 U.S.C. § 103)
 Written description, enablement, best mode (35
U.S.C. § 112, first paragraph)

14. Examples of “success”

15. Examples of “success”

16. Examples of “success”

17. Examples of “success”

18. Examples of “success”

19. Examples of “success”

20. Examples of “success”

21. Examples of “success”

22. Success Revisited
 Start with a plan
 Business Strategy
 Patent Strategy
 Invention disclosure
 Filtration of filings (management)
 Management during prosecution
 Management after issuance

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24. Intellectual Capital Management
 Know what you have (invention disclosure
program)
 Determine what you want to protect, and how
(filtration)
 Codify what you want to protect (patent)
 Reevaluate as you protect (before & after
issuance)
 Leverage what you protect (move & connect)

25. Invention Disclosure
 An “invention disclosure” is a document
containing a description of technology sought to
be patented
 “Invention” = legal term of art
 Most often, inventions will be thought of by the
inventor as the subject matter for the patent

26. Invention Disclosure
 Fundamentally every invention can be expressed
in terms of a minimum combination of elements
necessary to solve a problem
 The elements may be structural
 The elements may be functional

27. Invention Disclosure
 The invention lies in the novel and non-obvious
elements, and/or the novel and non-obvious
relationships between the elements
 Most invention disclosures describe several
“inventions”

28. Invention Disclosure
 Top 10 things to look for in an invention disclosure. . .
1. What are future applications for the product/process?
2. What does the next generation product look like? Last generation?
Other solutions?
3. What is the most profitable point in the supply chain?
4. Are there any disadvantages to the invention? Solutions?
5. What are the materials used?
6. What are the parameters for operating, and/or making?
7. What are the inputs and outputs, which ones are necessary?
8. Who are the customers? Who will they be? What do they want?
9. Who are the competitors? Who will they be?
10. Can the invention be a structure, method of using, method of
making, article of manufacture, AND composition of matter?

29. Filtration of Filings
 Patent review committee:
 Business leadership
 Marketing
 Legal
 Department advocate
 When business, marketing, and legal agree to
patent, proceed

30. What to look at?
 During filtration, look at . . .
•Timing •Geography
•Complexity •Who will infringe
•“Detectability”/ease •Standards
of avoidance •Business direction
•Royalty basis •Use by others

31. What to look at?
 Know what you need
 Acquire what you need
 Reactive
 Proactive
 Hunt internally
 Hunt externally
 Force the invention into existence
 Divest what you don‟t need

32. Management During Prosecution
 Reevaluate business objectives
 Reevaluate markets
 Reevaluate legal
 Filtration

33. Management After Issuance
 Reevaluate business objectives
 Reevaluate markets
 Reevaluate legal
 Filtration

34. Leverage!
 Knowledge assets should be treated like inventory –
kept moving
 Intellectual Capital Management is about
connection, not collection
 Strategies
 “Productize”
 Sell/Acquire
 In/Out license
 Debt/Equity
 Grow (JV, SP, JDA, etc.)

35. Conclusions
 The key to success is a mutually supportive base
of patentable technological solutions, market
demand, and business abilities
 The odds of success can be increased by
 Identifying what you have
 Strategically protecting what you have
 Leveraging what you have

36. “All About
Patents”
Thomas F. Lebens
Partner and Chair, Intellectual Property Practice Group
Sinsheimer Juhnke Lebens and McIvor, LLP
Managing Partner, West Coast Operations
Fitch, Even, Tabin and Flannery, GP