This document discusses patents and intellectual property. It explains that patents provide a legally protected competitive advantage and can be important for starting businesses during recessions. There are four main types of intellectual property: trademarks, copyrights, trade secrets, and patents. Patents protect inventions by providing the inventor with a 20-year monopoly to exclude others from practicing the claimed invention, in exchange for publicly disclosing how to make and use the invention. The claims define the scope of the patent rights. To be patentable, an invention must be useful, novel, non-obvious, and fully enabling. The process of patenting an invention involves documenting the invention, conducting prior art searches, drafting a patent application with an attorney, and undergoing examination

1. Patents and Technology Protection
“Everything You Wanted to Know About IP –
But Were Afraid to Ask”

2. IP is important!
 Legally-protected competitive advantage over
your competition
 Important at all times; even during recessions
– Recessions can be good time to start a business
 IP-driven companies started during recessions:
– Procter & Gamble
– Disney
– Johnson & Johnson
– Microsoft

3. The Four “Flavors” of IP
Trademarks
Identify source of goods
Copyrights
Protect works of authorship
Trade Secrets
Protect processes,
information
Patents
Protect processes,
compositions, devices
*

4. What You Need to Know About Patents
 What legal rights do patents provide (and
not provide)? Who owns these rights?
 What types of inventions are patentable?
 What are the legal requirements for
patentability? What problems can arise?
 What is the process for patenting an
invention? Who is an inventor?
 Why are the claims so important?

5. What is a Patent?
A PATENT IS A BUSINESS TOOL.
In Academia: patents spur interest in
turning research results into
products that benefit the public.

6. Patent Examples
Animal Ear Protector

7. Wearable Pet Enclosure

8. Toy Bar Soap Slide

9. High Five Simulator

10. A Notable University Patent

13. Patents Provide an Exclusive Property Right
- A patent DOES NOT
confer to the owner the
right to practice the
claimed invention!
- A patent IS NOT a
“Seal of Approval of
Excellence in
Technology” from the
U.S. Patent and
Trademark Office!

14. A Patent is “A Contract with Society”
 Inventor gives to society:
– A written description of his/her invention
that sufficiently teaches “one of ordinary
skill in the art” how to make and use the
claimed invention, and that sets forth
the “best mode” at the time of filing the
patent application.
 Inventor gets from society:
– About a 20 year monopoly from the filing
date to exclude others from practicing
the claimed invention.

15. The “CLAIMS” are key…
Claims – provide the metes and bounds of the
right that the patent confers to exclude others
from “trespassing” on the invention:
The Claimed
Invention

16. Claim Terminology
 “comprising”
– is synonymous with “including”,
“containing”, or “characterized by”
– is inclusive or open-ended and does
not exclude additional, unrecited
elements or method steps

17. Claim Analysis
Example claim:
1. A cutting device, comprising:
a metal blade having a cutting edge, and
a handle attached to the metal blade.
ANALYSIS: Any cutting device that has a metal blade
having a cutting edge, and a handle attached to
the metal blade will infringe the claim.
DO THESE INFRINGE?
? ? ? ?Yes Yes Yes No

18. A Variety of Patentable Inventions
 Machines &
Devices
 Processes
 Articles of
manufacture
 Compositions of
matter

19.  Note especially…
– Improvements to known technologies
– New combinations of known
technologies
– New uses of known technologies
– … are all patentable!

20. What is not patentable?
• Laws of nature
• Natural phenomena
• Abstract ideas
• Humans

21. Requirements for Patentability
(Important!)
 Utility – it must be useful
 Novelty – it must be new *
 Non-obviousness – it can’t be a mere
variation of what was done before
 Enabling Description -- application must:
– fully disclose invention (including “best mode”
contemplated at time of filing); and
– allow a person having ordinary skill in the art to
make and use the invention
Search patents,
publications, public
uses (news, internet,
USPTO website, etc.)

22. Example - Patenting Your Invention
time
Lee Taylor, et al., UH
OTTED

23. Who is an inventor?
An “inventor” is simply a person who
contributed to the intellectual conception
of the claimed invention.
Who is not an inventor?
- workers who merely do what is asked and report
requested information to others
- managers who merely suggest a goal to achieve,
but not how to achieve it
Inventorship ≠ Authorship

24. Your Publication Can Void Your Patent
Publish or present your
invention after filing a
patent application.
“Publishing” = “any public
disclosure”
For a U.S. patent – a one year
grace period to file a patent
application
For international patents –
typically, no patent for that
which was disclosed!

25. Your Actions Can Void Your Patent
Avoid selling, offering for
sale, or using the
invention in public.
For a U.S. patent – a one
year grace period to file a
patent application
For international patents –
typically, no patent for
that which was disclosed

26. Document how and when you
made your invention
Inventors should keep
notebooks – numbered
pages, signed, dated and
witnessed - to document
their work.
Why?
 “First to invent wins the
patent” rule in the U.S.
(v. “first to file”
elsewhere)

27. Keep Abreast of Relevant Literature in
Your Field
Do literature and
patent searches
Identify the “closest
prior art” to your
invention
Give key prior art
references to your
patent attorney to
analyze and submit to
Patent Office
http://www.cisl.ucar.edu/news/02/fot
oweek/1025.move1.jpg

28.  Draft a patent application (use a patent
attorney)
– describe how to make and use the claimed
invention
– disclose your “best mode”
– File it with the U.S. Patent and
Trademark Office
Obtaining Patents

29. http://www.uspto.gov/
U.S. PATENT AND
TRADEMARK OFFICE

30. “priority date”
20 Oct 2010
file U.S. patent
application
Typical Patent Application Timeline
one year from priority date –
file optional “international”
patent application(s)
“filing date”
20 Oct 2011
“publication date”
20 April 2012
time
1.5 years from
priority date –
publication of
patent
application
Examination of the Patent
Application and Claims Begins
by a U.S. Patent Examiner
Examination Continues
Your Article Publishes

31. Patentability v. Infringement of a
Patent Claim
Patent
Application
Priority Date
20 Oct
Future products
infringe the claim
time
Prior Art (publications and
products) discloses the claim
Claim: A cutting device, comprising:
a metal blade having a cutting edge,
and
a handle attached to the metal blade.
Patent application for “Cutting Device”

32. Patent Caveats
 Co-inventors
 Obligations to Assign
Patent Rights
 Written Agreements
… MTAs, NDAs, CDAs
http://www.revolutionarycreation
s.com/duel_of_the_geeks.jpg

33. Pop Quiz – What You Need to Know
Question:
1. What is a patent?
2. What is patentable?
3. What type of legal right
do patents provide?
4. What are the
requirements for
patentability?
5. Who is an inventor?
6. Why obtain a patent?
Answer:
1. A business tool.
2. Almost anything.
3. Exclusive -- “no
trespassing”.
4. New, useful, non-obvious,
disclose how to make
and use, best mode.
5. Intellectual contributor to
the claims.
6. A business tool.

34. Thank you
 Write me : arputhaselvaraj@gmail.com