Intellectual Property Issues for Consideration When Having a New IdeaDemetris Hadjisofocli
Demetris C. Hadjisofocli. This presentation is a short heads up on what is important to be aware off when someone has a new idea that it is considered for patent registration in order to protect its intellectual property rights. It also outlines the various valuation methods available.
David Furtado brings to the forefront just how important patent protection is for a business. Patents protect businesses from copyright and other legal issues.
Intellectual Property Issues for Consideration When Having a New IdeaDemetris Hadjisofocli
Demetris C. Hadjisofocli. This presentation is a short heads up on what is important to be aware off when someone has a new idea that it is considered for patent registration in order to protect its intellectual property rights. It also outlines the various valuation methods available.
David Furtado brings to the forefront just how important patent protection is for a business. Patents protect businesses from copyright and other legal issues.
Patent Strategy for Startups, Hardware Workshop SF 2015 Peter Miller
Peter Miller of Run8 Patent Group speaks on Patent Strategy for Startups at Hardware Workshop SF, 17-SEP-2015
Full video here: https://www.youtube.com/watch?v=RxpglTNQOyc
It is focused to provide basic knowledge on prior art search for new intellectuals in the field of IPR. It includes Basic knowledge of Prior art, File wrapper analysis, not list preparation, and one of the important law of Prior Art.
The following presentation describes a recently passed, and soon to be signed, Indiana law regarding how to address the problem of bad-faith assertions of patent infringement by patent assertion entities, sometimes referred to as "patent trolls." The law provides a definition of what constitutes bad faith assertion of patent infringement as well as gives guidance on basic information that is required for patent cease and desist or demand letters. It also provides procedures for having the entity post a pre-trial bond and/or be subject to damages or other remedies for bad faith assertion of patent infringement.
Picking someone to write your patent is like picking a mechanic to fix your car. Unless you know something about patents (or cars) – you don’t know what you’ve bought until a long time after you have paid.
I started writing patents over 12 years ago. This presentation includes tips derived from my experience, as well as a primer on patents and the process for getting patents.
Want to Apply For a Patent in the USA? Patent Process OverviewPatent ServicesUSA
People who are trying to create something original and useful for the community always require a patent for their invention. It prevents others from copying or stealing the idea from an individual. Applying for a patent is often a long and complicated procedure, but Patent Services USA helps to break it into a five-step approach. In simpler terms, a patent is a type of monopoly grand given by the government to the inventor for a specific period.
It also provides exclusive rights to manufacture, sell, use, or benefit from the invention. A patent ensures that no one can steal a unique design or idea. The following section of this article illustrates the different steps involved in filing a patent. Most inventors hire patent attorneys, but it is always beneficial for inventors to have complete knowledge of protecting their unique ideas or designs.
What Do Startups Need to Know about Patent LawJeff Schox
Jeffrey Schox is a Registered Patent Attorney and the founding member of Schox Patent Group, a boutique patent firm devoted to building patent portfolios for cleantech, medtech, and high-tech startups. Drawing on his experience of over fourteen years in patent law and seven years in angel investing, he has written patent applications for startups that attracted investments from high profile venture capital firms, including Accel, Andreessen Horowitz, Bessemer, Founders Fund, Greylock, Kleiner Perkins, and Sequoia. As a Consulting Professor, Jeffrey teaches patent law in both the engineering school and the law school at Stanford University. Jeffrey also sits on the Advisory Board for the Center for Entrepreneurship at the University of Michigan.
A patent is a right to monopolize an invention. A would-be inventor specifies the scope of activities from which he wants to exclude others (the claims), and submits it to the Patent Office. Patent Office evaluates whether these claims depict an invention within the sense of the Patent law and whether the invention is correctly disclosed and industrially applicable (formal examination). Some patent offices will moreover examine whether the invention is new and non-obvious (substantive examination). If the application passes the examination hurdles, the Patent Office grants the applicant exclusive rights to produce and market the invention for a period of 20 years
Patent Strategy for Startups, Hardware Workshop SF 2015 Peter Miller
Peter Miller of Run8 Patent Group speaks on Patent Strategy for Startups at Hardware Workshop SF, 17-SEP-2015
Full video here: https://www.youtube.com/watch?v=RxpglTNQOyc
It is focused to provide basic knowledge on prior art search for new intellectuals in the field of IPR. It includes Basic knowledge of Prior art, File wrapper analysis, not list preparation, and one of the important law of Prior Art.
The following presentation describes a recently passed, and soon to be signed, Indiana law regarding how to address the problem of bad-faith assertions of patent infringement by patent assertion entities, sometimes referred to as "patent trolls." The law provides a definition of what constitutes bad faith assertion of patent infringement as well as gives guidance on basic information that is required for patent cease and desist or demand letters. It also provides procedures for having the entity post a pre-trial bond and/or be subject to damages or other remedies for bad faith assertion of patent infringement.
Picking someone to write your patent is like picking a mechanic to fix your car. Unless you know something about patents (or cars) – you don’t know what you’ve bought until a long time after you have paid.
I started writing patents over 12 years ago. This presentation includes tips derived from my experience, as well as a primer on patents and the process for getting patents.
Want to Apply For a Patent in the USA? Patent Process OverviewPatent ServicesUSA
People who are trying to create something original and useful for the community always require a patent for their invention. It prevents others from copying or stealing the idea from an individual. Applying for a patent is often a long and complicated procedure, but Patent Services USA helps to break it into a five-step approach. In simpler terms, a patent is a type of monopoly grand given by the government to the inventor for a specific period.
It also provides exclusive rights to manufacture, sell, use, or benefit from the invention. A patent ensures that no one can steal a unique design or idea. The following section of this article illustrates the different steps involved in filing a patent. Most inventors hire patent attorneys, but it is always beneficial for inventors to have complete knowledge of protecting their unique ideas or designs.
What Do Startups Need to Know about Patent LawJeff Schox
Jeffrey Schox is a Registered Patent Attorney and the founding member of Schox Patent Group, a boutique patent firm devoted to building patent portfolios for cleantech, medtech, and high-tech startups. Drawing on his experience of over fourteen years in patent law and seven years in angel investing, he has written patent applications for startups that attracted investments from high profile venture capital firms, including Accel, Andreessen Horowitz, Bessemer, Founders Fund, Greylock, Kleiner Perkins, and Sequoia. As a Consulting Professor, Jeffrey teaches patent law in both the engineering school and the law school at Stanford University. Jeffrey also sits on the Advisory Board for the Center for Entrepreneurship at the University of Michigan.
A patent is a right to monopolize an invention. A would-be inventor specifies the scope of activities from which he wants to exclude others (the claims), and submits it to the Patent Office. Patent Office evaluates whether these claims depict an invention within the sense of the Patent law and whether the invention is correctly disclosed and industrially applicable (formal examination). Some patent offices will moreover examine whether the invention is new and non-obvious (substantive examination). If the application passes the examination hurdles, the Patent Office grants the applicant exclusive rights to produce and market the invention for a period of 20 years
Intellectual Property Strategy - Drive Oregon Event - February 2014Forth
Presentation by John Russell and Anna McCoy, of Alleman Hall McCoy Russell & Tuttle LLP. More information about the presenters and their firm is available at: http://www.ahmrt.com/
TIAC Is a group of technologies and techniques consisting of cooling down the intake air of thegas turbine. The direct consequence of cooling the turbine inlet air ispower output augmentation.
Development of a 300 kWe Integrated Axial Turbine and Generator for ORC Appli...Keith D. Patch
2nd International Seminar on ORC Power Systems: Turbo Expanders II, Rotterdam, The Netherlands
Publisher: ASME, International Gas Turbine Institute (IGTI)
Abstract
Concepts NREC has completed its design and development of an integrated high speed axial turbine and permanent magnet generator. The Turbine –Generator Unit (TGU) is ideal for ORC applications for its compactness, reliability, and versatility. The 20,000 rpm TGU does not use a shaft seal or gearbox and the generator is evaporatively cooled using the ORC working fluid. The TGU is designed with the intent of having the same turbine housing and generator used with a range of operating ORC fluid operating pressures and temperatures to enable its wide spread use in a variety of ORC heat recovery applications. The rotor and nozzle stators are changed to aerodynamically optimize the performance of the turbine at different ORC fluid operating conditions and flow rates. The output voltage of the generator can range from 300 to 480 VAC and at 50 hz and 60 hz. This facilitates its use in waste heat recovery applications throughout the world. This technical paper will review the mechanical and electrical design features of the turbine-generator unit.
In this topic (Thermodynamics)the students will be able to analyze and evaluate Zeroth law and First law of thermodynamic cycles used for energy production - work and heat, within the natural limits of conversion.
Turbine Inlet Air Cooling (TIAC) - Case Studies - Economics - Performance - C...Salman Haider
Efficiency Enhancement of a Gas Turbine in Hot climate conditions. Design strategies and technology varieties. Detailed Case Studies of TIAC equipped power plants, economic and performance analysis. Study of Climate effect on GT Performance in three different locations.
All About Intellectual Property, the law, and some of the strategy and business considerations behind developing and leveraging intellectual property in business
Strong patent protection is essential for a start-up biotechnology company and can be a valuable company asset. However, it is also expensive, with costs ranging from tens to hundreds of thousands of dollars over time. This session will focus on how to get the most out of your patent dollars.
This session presentation is available in audio format here: http://www.marsdd.com/bioent/dec4
2011 Silicon Flatirons IP (Crash Course) For EntrepreneurersJason Haislmaier
Intellectual Property Crash Course for Entrepreneurs (February 22, 2011) presentation at the Wolf Law Building at the University of Colorado (Boulder, CO)
Intellectual property rights are the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time.
State of ICS and IoT Cyber Threat Landscape Report 2024 previewPrayukth K V
The IoT and OT threat landscape report has been prepared by the Threat Research Team at Sectrio using data from Sectrio, cyber threat intelligence farming facilities spread across over 85 cities around the world. In addition, Sectrio also runs AI-based advanced threat and payload engagement facilities that serve as sinks to attract and engage sophisticated threat actors, and newer malware including new variants and latent threats that are at an earlier stage of development.
The latest edition of the OT/ICS and IoT security Threat Landscape Report 2024 also covers:
State of global ICS asset and network exposure
Sectoral targets and attacks as well as the cost of ransom
Global APT activity, AI usage, actor and tactic profiles, and implications
Rise in volumes of AI-powered cyberattacks
Major cyber events in 2024
Malware and malicious payload trends
Cyberattack types and targets
Vulnerability exploit attempts on CVEs
Attacks on counties – USA
Expansion of bot farms – how, where, and why
In-depth analysis of the cyber threat landscape across North America, South America, Europe, APAC, and the Middle East
Why are attacks on smart factories rising?
Cyber risk predictions
Axis of attacks – Europe
Systemic attacks in the Middle East
Download the full report from here:
https://sectrio.com/resources/ot-threat-landscape-reports/sectrio-releases-ot-ics-and-iot-security-threat-landscape-report-2024/
Communications Mining Series - Zero to Hero - Session 1DianaGray10
This session provides introduction to UiPath Communication Mining, importance and platform overview. You will acquire a good understand of the phases in Communication Mining as we go over the platform with you. Topics covered:
• Communication Mining Overview
• Why is it important?
• How can it help today’s business and the benefits
• Phases in Communication Mining
• Demo on Platform overview
• Q/A
Why You Should Replace Windows 11 with Nitrux Linux 3.5.0 for enhanced perfor...SOFTTECHHUB
The choice of an operating system plays a pivotal role in shaping our computing experience. For decades, Microsoft's Windows has dominated the market, offering a familiar and widely adopted platform for personal and professional use. However, as technological advancements continue to push the boundaries of innovation, alternative operating systems have emerged, challenging the status quo and offering users a fresh perspective on computing.
One such alternative that has garnered significant attention and acclaim is Nitrux Linux 3.5.0, a sleek, powerful, and user-friendly Linux distribution that promises to redefine the way we interact with our devices. With its focus on performance, security, and customization, Nitrux Linux presents a compelling case for those seeking to break free from the constraints of proprietary software and embrace the freedom and flexibility of open-source computing.
Generative AI Deep Dive: Advancing from Proof of Concept to ProductionAggregage
Join Maher Hanafi, VP of Engineering at Betterworks, in this new session where he'll share a practical framework to transform Gen AI prototypes into impactful products! He'll delve into the complexities of data collection and management, model selection and optimization, and ensuring security, scalability, and responsible use.
Sudheer Mechineni, Head of Application Frameworks, Standard Chartered Bank
Discover how Standard Chartered Bank harnessed the power of Neo4j to transform complex data access challenges into a dynamic, scalable graph database solution. This keynote will cover their journey from initial adoption to deploying a fully automated, enterprise-grade causal cluster, highlighting key strategies for modelling organisational changes and ensuring robust disaster recovery. Learn how these innovations have not only enhanced Standard Chartered Bank’s data infrastructure but also positioned them as pioneers in the banking sector’s adoption of graph technology.
Encryption in Microsoft 365 - ExpertsLive Netherlands 2024Albert Hoitingh
In this session I delve into the encryption technology used in Microsoft 365 and Microsoft Purview. Including the concepts of Customer Key and Double Key Encryption.
DevOps and Testing slides at DASA ConnectKari Kakkonen
My and Rik Marselis slides at 30.5.2024 DASA Connect conference. We discuss about what is testing, then what is agile testing and finally what is Testing in DevOps. Finally we had lovely workshop with the participants trying to find out different ways to think about quality and testing in different parts of the DevOps infinity loop.
Smart TV Buyer Insights Survey 2024 by 91mobiles.pdf91mobiles
91mobiles recently conducted a Smart TV Buyer Insights Survey in which we asked over 3,000 respondents about the TV they own, aspects they look at on a new TV, and their TV buying preferences.
Removing Uninteresting Bytes in Software FuzzingAftab Hussain
Imagine a world where software fuzzing, the process of mutating bytes in test seeds to uncover hidden and erroneous program behaviors, becomes faster and more effective. A lot depends on the initial seeds, which can significantly dictate the trajectory of a fuzzing campaign, particularly in terms of how long it takes to uncover interesting behaviour in your code. We introduce DIAR, a technique designed to speedup fuzzing campaigns by pinpointing and eliminating those uninteresting bytes in the seeds. Picture this: instead of wasting valuable resources on meaningless mutations in large, bloated seeds, DIAR removes the unnecessary bytes, streamlining the entire process.
In this work, we equipped AFL, a popular fuzzer, with DIAR and examined two critical Linux libraries -- Libxml's xmllint, a tool for parsing xml documents, and Binutil's readelf, an essential debugging and security analysis command-line tool used to display detailed information about ELF (Executable and Linkable Format). Our preliminary results show that AFL+DIAR does not only discover new paths more quickly but also achieves higher coverage overall. This work thus showcases how starting with lean and optimized seeds can lead to faster, more comprehensive fuzzing campaigns -- and DIAR helps you find such seeds.
- These are slides of the talk given at IEEE International Conference on Software Testing Verification and Validation Workshop, ICSTW 2022.
GridMate - End to end testing is a critical piece to ensure quality and avoid...ThomasParaiso2
End to end testing is a critical piece to ensure quality and avoid regressions. In this session, we share our journey building an E2E testing pipeline for GridMate components (LWC and Aura) using Cypress, JSForce, FakerJS…
UiPath Test Automation using UiPath Test Suite series, part 4DianaGray10
Welcome to UiPath Test Automation using UiPath Test Suite series part 4. In this session, we will cover Test Manager overview along with SAP heatmap.
The UiPath Test Manager overview with SAP heatmap webinar offers a concise yet comprehensive exploration of the role of a Test Manager within SAP environments, coupled with the utilization of heatmaps for effective testing strategies.
Participants will gain insights into the responsibilities, challenges, and best practices associated with test management in SAP projects. Additionally, the webinar delves into the significance of heatmaps as a visual aid for identifying testing priorities, areas of risk, and resource allocation within SAP landscapes. Through this session, attendees can expect to enhance their understanding of test management principles while learning practical approaches to optimize testing processes in SAP environments using heatmap visualization techniques
What will you get from this session?
1. Insights into SAP testing best practices
2. Heatmap utilization for testing
3. Optimization of testing processes
4. Demo
Topics covered:
Execution from the test manager
Orchestrator execution result
Defect reporting
SAP heatmap example with demo
Speaker:
Deepak Rai, Automation Practice Lead, Boundaryless Group and UiPath MVP
FIDO Alliance Osaka Seminar: Passkeys at Amazon.pdf
Patents 101 and Patent Prosecution Overview and Costs
1. Patents 101 and
Patent Prosecution
Larry Baratta
Partner and Patent Attorney, Electrical Practice Group
Admitted in NC and GA, USPTO registered
1901 Roxborough Rd., Suite 250
Charlotte, NC 28211
www.worldpatents.com
704.790.3600
lbaratta@worldpatents.com
2. About Clements Bernard PLLC
Charlotte, NC – based Intellectual Property Boutique
Specializing in Electrical, Networking, Software, Mechanical, Chemical, and Biotech
Fields
Focus
Patent and Trademark Prosecution and Licensing, Opinions, Transactional matters
Intellectual Property Litigation (Patents, Trademarks, Copyrights, and Trade Secrets)
Representative Clients
Publicly-traded companies
Numerous venture funded start-ups
U.S. Government Agencies
Entrepreneurial Individuals
Value to Clients
Reasonable, Fixed Fees offering clients deterministic, fixed-fee pricing
Individual focus from seasoned attorneys
Business minded
Experience - Former Patent Office Examiners in-house & Attorneys with in-house
engineering industry experience
www.worldpatents.com
3. What is Intellectual Property (IP)
Intangible Property Rights including, for example, ideas, inventions and
other innovations, expression, indications of origin and confidential
information
Patent
Copyright
Trademark
Trade Secret (protected by State law)
Almost all aspects of technology, innovation, and/or works of authorship
(including software) or art are addressable as IP
IP rights arises from Operation of Law
In U.S., Constitutional Basis – Article I, Section 8, Clause 8:
“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”
4. Patents, Copyrights and Trademarks
Inventions
Machines, methods,
composition of matter,
improvements
Any name, symbol, device or
combination that
-identifies source
-distinguishes goods and
services from another
“Original expression”
“Fixed in tangible medium”
Not novel, obvious, not useful
(no utility)
Functional
Does not exclusively identify
Descriptive
Ideas, Facts, Methods and
systems (patents)
Idea – expression is
protected, not idea
When patent issues From use; Protection can last
forever and can also
disappear since protection is
tied to use
From time fixed in a tangible
medium
Fall within scope of a patent
claim
Likelihood of confusion Copying with Access and
Substantial Similarity
Patents Trademarks Copyrights
Type
Not
Protected
When
Protected
Infringement
5. What is a Patent?
In the U.S., Granted by the U.S. Patent & Trademark Office (USPTO)
Part of the Commerce Department
Protects: Manufactured items, Equipment, Processes, Compositions and Improvements to the
above
Rights: Right to exclude others from making, using, offering for sale, selling and/or importing
what is claimed
A negative right of exclusion only
Term: 20 Years From Filing or priority date – extensions available based on PTO delay
Territory: United States and its territories
Rights Arise: Upon issuance of a patent, arising from a patent application filed prior to public
use, disclosure or sale
6. Sample Patent
U.S. Patent No. 6,469 to Abraham Lincoln, 1849
The 16th
President is the only President to receive a
U.S. Patent
7. Patent Claims
Section in the patent or application that defines the legal scope of protection
granted by the patent
Parts
Preamble – recites the class of the invention and optionally primary purpose; e.g. “A
system,” “A method,” “A network for providing…”
Transitional phrases
"comprising", "containing" and "including" are most often used to mean "having at least the
following elements..." and are therefore open (inclusive) and do not exclude additional
limitation
"consisting of" and "consisting essentially of" are more limiting, as they mean "having all and
only" or "virtually only" and are therefore closed (exclusive)
Elements and/or Steps
Defines the invention and includes interaction between the elements.
A system, comprising: X, Y, and Z – X, Y, and Z are elements
A method, comprising: A, B, and C – A, B, and C are steps
Limitations
Clauses that define, i.e. limit, the elements and/or steps
wherein X is communicatively coupled to Y and Z for control thereof
8. Patentable Subjects
Systems, Devices & Other Manufactured Items
Such as manufactured equipment, e.g., electronic devices or circuits,
semiconductors, systems configured to perform a function,
networks, components, etc.
Processes or Methods
Such as manufacturing processes or
methods of doing something—may be
implemented as software or as a
business method
Materials/Composition of Matter
Chemical, Genetics, drugs, compounds, etc.
9. Patentability Requirements
Novelty
Does not exist in the prior art; Not previously disclosed
OK if Modification of an existing product/process, or use of something “old” in
new/different way
Usefulness
Utility - Performs a useful function, does it work?
An easy requirement to meet in mechanical and electrical arts. Sometimes difficult in
chemical and life sciences – “I have a new compound, I just don’t know what it does yet” –
therefore, no utility
Non-obviousness
A knowledgeable but relatively unimaginative person working in your field would not have
been led directly to the invention in light of the available information at the time of
invention.
This is difficult to describe in general, as lawyers the focus on non-obviousness is generally
based on prior case law for guidance.
Is there a suggestion/motivation/teaching to combine existing knowledge (i.e., one
or more existing pieces of art) to solve the problem your invention solves?
This is the current legal test, and it allows the Patent Office to reject an invention as
obvious if the elements and limitations of the invention can be found in one or more
references, and if there is a reason, i.e. suggestion, to combine them.
A rejection under obviousness generally involves “combining” one or more references to
meet all of the limitations and elements of the claimed invention
10. Patentability Requirements
Novelty (35 U.S.C. 102)
Generally applies to all technology areas
Utility (35 U.S.C. 101)
Typically an issue in chemical, biological, and pharmaceutical arts – “I have this new
compound, I just don’t know what it does yet” – i.e. must have a practical application
for patentability
Non-Obviousness (35 U.S.C. 103)
This is a typical rejection in the Electrical/Software/Mechanical arts
Two or more separate references combined show all elements of the invention
Must show distinction over these references or why these references cannot be
combined in light of the claimed invention
Subject Matter (35 U.S.C. 101)
An issue in the Software arts
In light of court precedent, software-related inventions must be tied to a particular
machine or perform a physical transformation of a physical device
11. Inventor
The person(s) who first conceived the invention
Joint inventors - Each inventor must have
contributed to the subject matter of at least one
claim
Non-Inventors:
Persons who implement the ideas of others
Persons who have obtained the entire idea of an invention from another are
not inventors
Persons who suggest concepts without contributing to the means for carrying
out the suggestion (“Wouldn’t it be nice if….”)
12. When to file a Patent Application
You Develop, Improve, or Do,
Something New or Different!!
• You solved a problem or
developed something new and
useful
• Your solution for the problem
is not the same as another’s
solution for the same problem
**Note that use of something known in a new, non-obvious, and
different way or to solve another problem can be patentable!!!**
13. What to Disclose
General
Has this invention been discussed with others:
Inside or outside of your company? With Whom? When?
Was there a Non-Disclosure Agreement in place?
Have you done a search? Key Words for Database Searching
Is this Invention relevant to a Standards activity?
Describe the Invention
“Tell a Story” - start at high level, then work down into details,
including:
What is the Invention about?
What Problem does it solve?
What other Solutions have been tried or exist, and what were their shortcomings?
What are the Specific Elements or Steps that solved the problem?
What are the values of the Invention
Disclosure Submission Form
14. Patentability Search
Search of U.S. and Foreign patent applications and issued
patents and non-patent literature (journals, white papers,
etc.)
Objectives
To ascertain whether the invention has been patented or disclosed
previously and, thus, would be unpatentable;
To avoid filing a patent application and having it summarily rejected
by the Patent Office because of an identical or substantially similar
invention which would render your invention not new or not non-
obvious; and
To draft a better patent application by emphasizing those features of
the invention not turned up in the search.
Duty to Disclose known references which predate your
application to the Patent Office
However, no affirmative duty to perform a search
Provide known closely related references with invention disclosure
15. Filing Process
1
Attorney prepares a draft Application
Inventor Reviews & Comments
Application is Finalized
Inventor Reviews & Signs (declaration/POA
and maybe an Assignment)
Application is Filed
Inventor’s Help Sought
In Responding to Office Actions
During Prosecution To Issuance
Foreign Filing?
Invention Disclosure to Attorney
2
3
4
5
6
7
8
Disclosure Conference with Inventors and Attorney
16. Application Process at the Patent Office
Application
Amendments
RCE/Appeals
Examination
Allowance
Office
Action
Issue
Rejection of one or more claimsAllowance of all claims
Amendment of Claims to overcome rejections
Arguments to counter rejections
RCE if the Office Action was “Final” to continue examination
Potential Appeal to the BPAI after a “Final” Office Action if desired
1st
Office Action time can
significantly vary on the
order of 1-5 years
Pay Issue Fees
17. Provisional Patent Application
A provisional application is a simplified filing whose purpose is to preserve one’s
right to file a utility patent within one year of the filing of the provisional
application
A provisional application requires the filing only of a specification adequately describing the
invention, and drawings where necessary for the understanding of the invention.
It is important that a provisional application describe the invention fully, as the provisional filing date
is only effective for subject matter disclosed in the provisional application.
A provisional application cannot mature into a patent, it is not examined and it cannot claim priority
in an earlier application.
A provisional application is kept in confidence by the Patent Office. A provisional application is,
however, a regular national filing that starts the Paris Convention priority year (discussed below).
A provisional application will automatically go abandoned by law one year after filing.
The provisional application has several important benefits.
It places domestic applicants on an even footing with foreign applicants because the filing of a
provisional application does not trigger the start of the 20-year patent term.
It has minimal legal and formal requirements.
The provisional application provides a mechanism whereby applicants can quickly and relatively
inexpensively establish an early effective filing date in a patent application which establishes a
constructive reduction to practice for any invention described in the provisional application.
The filing of a provisional application also provides up to twelve months to further develop the
invention, determine marketability, acquire funding or capital, seek licensing or seek manufacturing.
18. Patent Lifecycle and Costs
End of
Patent Term
Invention
Disclosure
Submission
$4-6K
$1.2K
$1.5K
$1.2K
$0.9K*
$0.5K*
$1.3K*
$2.0K*
Patent
Application
Preparation and
Filing
Patent
Application
Prosecution
Patent
Issue
Fee
Patent
Maintenance
Fee
Patent
Maintenance
Fee
Patent
Maintenance
Fee
~$15.0K
Approximate fees
* Small Entity Fees (<500 employees)
~3 yrs. 3½ yrs. 4 yrs. 4 yrs.
20 yrs.
19. IPR Value
Leverage
Discontinued
Products/
Technologies &
Their Value
Utilize
Technologies/
Products in New &
Different Ways for
Incremental
Value
Utilize
Technology/IPR
To Foster
Development
By Others
Help Drive
Adoption Of & Value
From Standards Based
On our
Technology
Help Drive &
Realize Value
From M&A
Activities
Generate
High Margin
Royalty Income
Generate Demand
For Products
Facilitate Deals/
Relationships
With Customers,
Suppliers, Partners
& Others
To ObtainTo Obtain
Business ValueBusiness Value
Support Other
Business
Objectives
Obtain Access/
Rights To
3rd
Party
Technology/IPR
Defend
Against 3rd Party
Claims
(Especially
IPR Claims)
Protect
(Especially Core)
Products &
Technology
Promote
Technology
Leadership
Defense &Defense &
ProtectionProtection
LeadershipLeadership
OtherOther
BusinessBusiness
ValueValue
(via Strategic Licensing)
LicensingLicensing
Income/Income/
ValueValue
* Pure Income
* Savings
* Product Pull-Through
* Business Needs
* Reputation/Leadership
(Licensing Plays The Key Role)(Licensing Plays The Key Role)
20. Patent Value for Small/Mid-size
Companies
Staking claim to key technologies
and product differentiation –
Minefield analogy
OFFENSE DEFENSE
Deterrence against litigation –
Mutually Assured Destruction
Deterrence against one-sided
licensing requirements from
larger companies (e.g., IBM)
Product Protection
Marketing
Litigation/Injunction/Licensing
R&D Investment Insurance
Preventing competitors from
market entry
21. Defensive Aspects of Patents
Mutual assured destruction (MAD) is a doctrine of military strategy and national
security policy in which a full-scale use of nuclear weapons by two opposing sides
would effectively result in the destruction of both the attacker and the defender.
Patents are like a nuclear weapon – it only takes infringement of one claim of one
patent to potentially shut down a product
Using Cold War strategy, the best way to avoid a fight is to have as many weapons in
your arsenal as possible
Larger patent portfolio avoids licensing requirements from larger companies
Landmine analogy
For both existing markets and newly emerging technologies, patents provide coverage
over the technology landscape akin to landmines on the battlefield, the more on the
field, the less likely your opponent will cross the field
Use Patent prosecution/portfolio in a two prong manner
Protection against larger competitors
Staking claim to new technologies, markets, etc.