Introduction to IP - Part 2: Some Basics of U.S. Patents

Introduction to IP - Part 2: Some Basics of U.S. Patents

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  knobbe.com Boris Zelkind &Tom Cowan October 18, 2016 Introduction to IP – Part 2: Some Basics of U.S. Patents
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  2© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. • Market Exclusivity – Key patents may enable you to be exclusive provider of new type of product or service, and to maintain competitive edge • Company Value – Patents are an asset; enhance the value of a company; can charge premium for patented items • Revenue – Patents may be licensed to others to derive revenue and/or obtain access to technology of others • Legal Protection – Strong patent portfolio deters other patent holders from suing you • Attracts Investors – Provides incentive for venture capitalists to invest in or buy a company Why get Patents?
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  3© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Basic Legal Requirements for U.S. Patents • Must be: – (1) useful, – (2) novel, and – (3) non-obvious • Quid pro quo – Obtain “legal monopoly” – Must disclose how to practice the invention
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  4© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. What rights does a U.S. patent grant? • Gives the patent owner the right to exclude others from practicing the patent (20 years) • Does NOT provide the right to practice invention Rights you may think a patent provides (right to do whatever you want inside fence) Rights a patent actually provides (right to exclude others from trespassing)
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  5© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Types of U.S. Patents • Utility – most common type • Design – look and feel • Plant Utility Patent No. 4,656,917 Design Patent No. D593,087 Plant Patent No. 1
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  6© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. U.S. Utility Patent Document What is claimed is: 1. A Phone with Lifetime Charge, comprising: a three-ended spring; a vibratory encryption chip; and a xenon polyethelene coating. Drawings “Claims” “Specification” Written Description
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  7Confidential and ProprietaryInformation – Do Not Distribute What to Patent? MEDM.000GEN • Patents protect aspects of inventions • Some factors to consider: Invention Idea No. 123 Sample Factors Competitor Activity / Blocking Ability Revenue Driver Potential Patentability Difficult to Prove Infringement Technology Complexity Obtain feedback from marketing Obtain feedback from IP attorneys Obtain feedback from tech. dev.
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  8© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Spectrum of Eligible Subject Matter Improve Function of the Computer Itself Fundamental Economic Practices; also: diagnostic tests, DNA Effect an improvement in any other technology Effect an improvement in a non-technical field • Eligibility = threshold requirement for a patent • Eligible for a patent: processes, machines, manufactures, or compositions of matter • Not eligible: abstract ideas, laws of nature, natural phenomena • Recent scrutiny of eligibility: Biotech, Software & Business Methods LESS ELIGIBLE MORE ELIGIBLE
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  9© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Inventorship • Why does inventorship matter? – Necessary to enforce the patent – Equal and undivided interest in patent among joint inventors • Who is an inventor? – Conception = touchstone of inventorship • Conceive of “definite and permanent idea” • Inventive contribution to at least one “Claim” • Joint inventorship – Laboratory hands v. joint inventor – Improvements, etc. may lead to joint inventorship – Collaboration, outsourcing, partners, etc.
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  10© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Ownership • Why does ownership matter? – Determines who can enforce & license the patent • Who is an owner? – Inventors by default are the owners – Ownership changes with written “assignments” • Joint Ownership – Usually not desirable • ALL joint owners must agree to enforce (sue for infringement) • ANY joint owner can unilaterally license and collect royalty – Agreements affecting ownership • Employment, Consulting, Development, Manufacturing, Collaboration, Visitor’s Confidentiality Agreements; Government Interests
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  11© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Filing Procedures – U.S. Provisional • Provisional Applications – Establishes priority date for disclosed material – One-year pendency, no examination – Can file numerous provisionals, convert all into one “non- provisional application” one year from earliest provisional – Patent Office fees: $280 / $70 (small entity)
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  12Confidential and ProprietaryInformation – Do Not Distribute Use of Provisional Applications Provisional Application Non- Provisional Application Within 12 Months Typical Filing Multiple Non-Provisionals Non- Provisional Application Provisional Application Non- Provisional Application Non- Provisional Application Within 12 Months MEDM.000GEN
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  13Confidential and ProprietaryInformation – Do Not Distribute Advanced Use of Provisional Applications Non- Provisional Application 1st Provisional Application 2nd Provisional Application 3rd Provisional Application12 months • In view of “first to file” rule, can file multiple provisional applications within the 12 month anniversary period • Roll-up provisional applications into one large non-provisional / PCT application … MEDM.000GEN
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  14© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Filing Procedures – U.S. Non-Provisional • U.S. Non-Provisional Application – Can claim priority to: • One or more provisional applications • Other pending non-provisional application(s) – Examined: ~18-24 months • Priority Exam: ~6-12 months – Issues as a patent: ~ 2-5 years – Official fees: $1600 / $730 small entities
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  15© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Examination Process – Results Vary Possible Results • All Claims Immediately Allowed – VERY unusual • More typical: one or more rounds of “negotiation” – Office Action from Patent Office – Response from Applicant (possibly w/ claim amendments) • Might pursue some claims in continuing application(s) Patent Application Issued Patent Examination Process “Patent Pending” (3 mos. – 3 years)
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  16© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Issued Patent #2 Issued Patent #3 Continuation Applications Original Non- Provisional Application (“Parent”) Issued Patent #1 Continuation Application #1 Continuation Application #2 “claim scope” Larger/different “claim scope” • Continuations – Filed before parent issues – Same drawings and written description as parent – Different claims from parent
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  17© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Filing Procedures – International PCT • Patent Cooperation Treaty (PCT) Application – “International” application • Can claim priority to application w/in previous 12 months • Provides priority in 149 member countries • No such thing as “International Patent” – Preliminary exam report provided to national phase countries – Enter “National Phase” within 30 months of priority – U.S. Patent Office fees: $3581 / $2421 small entity • Can select non-U.S. patent offices for PCT application
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  18© 2016 Knobbe,Martens, Olson & Bear, LLP all rights reserved. Timeline for Filing 12 Months 18 Months Utility / PCT National Phase (U.S., Europe, Japan, Korea, China, etc.) 3rd Provisional (optional) 1st Provisional 2nd Provisional (optional) • Typical Filing Strategy
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  knobbe.com Orange County SanDiego San Francisco Silicon Valley Los Angeles Seattle Washington DC Boris Zelkind Tom Cowan boris.zelkind@knobbe.com tom.cowan@knobbe.com 858-707-4000 Q & A Introduction to IP – Part 2