5. Patents: Practical Inventions
Patentable Subject Matter Includes…
• “Anything under the sun that is made by man”
• Excludes laws of nature, physical phenomena, abstract
ideas
• Statutory classes: process, machine, manufacture,
composition of matter
– Compositions, devices, techniques, new
combinations, software, new uses of an old thing
6. Terminology
• 1-year grace period:
– U.S. has a 1-year grace period from first public disclosure
of invention to file patent application
– NO GRACE PERIOD in foreign countries must file
BEFORE publish.
• Provisional application: Never examined, never issues into
patent.
– Automatically expires after 12 months (consider research
timeline)
– Minimal formality requirements for filing
7. Terminology
• Non-Provisional: Full blown patent application, will be examined,
and may issue into a patent
• PCT: Patent Cooperation Treaty – international non-provisional –
“filed” in 148 countries
– Examined, but never issues into a patent unless proceed to
national stage.
• National stage/phase: individual
filings for patents in each country
of interest – based upon the
PCT application.
9. Process Overview
Consider this timeline in planning when to file a
provisional, when to submit a manuscript, etc.
Estimated time when
proof of concept may be
close to finished (major
questions answered)
Work backwards
so that provisional
filing isn’t
premature
10. How to disclose?
Invention Disclosure Form
-Submitted to Tech Transfer Office or Appropriate Division of Company
-Important to meet with Tech Transfer early in process – keep apprised of
manuscript deadlines, etc.
-Important to document invention development.
-Company or University Policy may require employees or faculty to
submit all IP for consideration
11. The Invention Disclosure
• What to disclose?
• Identification of full scope of invention
• Explore metes & bounds
• Explore alternative or non-optimized versions
• Any proposed manuscripts should be included with disclosure
form
• Materials and methods for any working examples – very
important
• How to disclose?
– In writing most preferred, e.g., manuscripts, grant applications
– Oral interview – expand on concepts contained in written
document
13. Disclosure considerations
• Patent application disclosure must enable one skilled in the art to
practice the invention without undue additional experimentation
– “show your work”
– Best mode must be disclosed
• Patent application must adequately describe the invention
(sufficient species to claim a genus)
• Once the application is filed there is virtually no possibility to
add to it or update it*
* Added material is considered “new matter” and gets a new filing
date.
• Important that disclosure/application is as comprehensive as
possible.
14. Disclosure considerations
• Patent application will and should be more comprehensive
than your manuscript (the patent attorney will help with
this)
• Patent application should be submitted BEFORE your
manuscript, poster presentation, etc.
15. Disclosure considerations
Road Trip - Hitting the Slopes!
•The Manuscript Approach
• Why go to the mountains?
• How do we get there?
• I-70 is East/West Highway to Colorado
• We suspected that driving I-70 west, we’d eventually run
into mountains
• Report results—after driving west for 500 miles, we
encountered mountains
• Future investigation – alternate routes to the mountains
16. • The Grant Application Approach
– We’ve driven I-70 west and reached mountains
– Problems with this approach – boring, not enough
places to stop
– We suspect there are better routes, but need funding
to investigate (Dodge City route?)
Disclosure considerations
17. • The Patent Application Approach
– Go North on I-135 for 1.5 miles, take the exit to West
I-70 for approximately 530 miles
– Providing directions to achieve an outcome
– Provide alternative directions, not just your preferred
route (back highways through Dodge City)
– Disclosure should enable others to also reach the
mountains
Disclosure considerations
18. The Drawings
• Drawings helpful to understanding the
invention
• PCT drawing quality issues:
• Must be black & white – avoid colored lines!
• Amenable to reproduction
• Original, editable files preferable
20. How do I know if my invention is
patentable?
• Ask Tech Transfer or Patent Attorney
• The patent act defines what is patentable:
– Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of the matter, or any new
and useful improvement thereof, may obtain a patent therefore,
subject to the conditions and requirements of this title. (35 USC §
101)
– The remaining fundamental requirements are that the invention
be novel and non-obvious.
21. Basic Requirements for Protection
• Novel: loosely means that the invention is new
and is non identical to the previous work of
others. (35 USC § 102)
• Non-obvious: means that the invention must
not be an obvious extension of what has gone
before. (35 USC § 103)
- Obviousness is measured by what one of
ordinary skill in the subject area of the patent
would have known at the time of the invention.
22. America Invents Act
• The AIA significantly encourages early (and
often) filing of patent applications
• U.S. patent laws are now based on “first-
inventor-to-file” rather than “first-to-invent”
23. America Invents Act
• File patent applications before any public
disclosure, use, presentation, commercial
activity, etc. involving the invention
– Limited “grace period” still available
– Use Non-Disclosure Agreements consistently, but do not
rely on NDAs to fully protect invention
– Inter-institutional inventions: Use written joint
development agreements with confidentiality provisions
and publication restrictions
24. America Invents Act
• Invention Disclosure forms and streamlined
protocol for submitting and evaluating
inventions becomes even more important
under the AIA
26. Examination process
• Patent examiner will do a search based upon the application
claims to see if there is any “prior art” related to the invention
– Claims describe the metes and bounds of protection
– “A method of…” “A composition comprising…”
– Claimed invention must be: new, non-obvious as compared to
one or more prior art references located by Examiner.
• Examiner issues an “Office Action” – patent attorney will
have a back and forth exchange with the Examiner regarding
the prior art and the claims.
– Inventor input can be helpful – “person skilled in the art”
– Often Examiner is misinterpreting the claims, the prior art, or
both
27. Common Patent Misconceptions
• A patent gives the right to use or make the
invention.
• Patented products are better than unpatented
products.
• If I find a new use for an old product, I can get a
patent on the product.
28. ThankYou!
Crissa A. Seymour Cook
HoveyWilliams LLP
84 CorporateWoods
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
913.647.9050
www.hoveywilliams.com
Editor's Notes
Quote from Chakrabarty
Experimental set up depicted in Fig. 1
May be flow charts
