2. Outline
• Introduction to Patents
– What is a Patent?
– How Does a Patent Add Value?
– Parts of a Patent
– Claims: The Most Important Part of a Patent!
• What Inventors Need to Know
– Patent Inventorship
– Patent Ownership
– How to Get a Patent
– When to Apply for a Patent
– Patents and Publications
– Good Inventor Practices
3. What is a Patent?
A Legal Contract/Document
• A patent is generally understood as a legal
contract between the Applicant and the
Government
• In return for the right to temporarily exclude
others from practicing the invention (making,
using , selling, etc.), the patent must satisfy
certain disclosure requirements
• A patent is a piece of property: It can be bought,
sold, traded, leased, etc.
4. What is a Patent?
A Right to Exclude
• A patent conveys no rights for you to do
anything.
• A patent merely gives you the right to stop
others from practicing your invention.
• Even if you own a patent, your products may
infringe the patent of another.
5. What is a Patent?
A Limited Monopoly
• Utility Patents expire 20 years from earliest
parent filing date at the Patent Office
– NOT from the date patents are granted/issued!
• When a patent expires, anyone can
practice the patented invention
7. Patents are a Form of
Intellectual Property (“IP”) Protection
• IP is something that is a Creation of the Mind
• IP Protections provide an incentive to create
– Usually exclusive monopolies on the creation
– Provide legal avenues to monetize, protect creations
• IP Protections involve a social trade-off
– Exclusive monopolies usually temporary
– Some protections lapse if not diligently enforced
• Different types of IP receive different protections
9. Different IP Protections May Protect
Different Aspects of a Creation
Hypothetical Case:
• Jordan creates a handheld fission generator that
can power a home, markets it as NukaCell,
– Utility patents protect functional aspects of NukaCell
– Copyrights protect the software code used by NukaCell
• but utility patents protect the functions implemented by
executing the code
– Trademarks protect the use of the term “NukaCell”
– Trade Secrets protect secret practices to build NukaCell
– Design Patents , Trade Dress, and Copyrights protect
the ornamental appearance of NukaCell
10. What Can Be Patented
• Machines
• Articles of Manufacture
• Compositions of Matter
• Processes
• Any Improvement of the Above
11. What Cannot Be Patented
• Laws of Nature
– Electromagnetism
• Natural Phenomena
– Naturally occurring substances
• Abstract Ideas
– Fundamental economic practices
– Mathematical Relationships/Formulas
– Software that simply implements one of the above
12. What Makes an Invention Patentable
Useful function
More than an obvious
variation of prior art
Different from
prior art
PATENTABLE!
13. A Patent Must be Novel
• Example 1:
– The NukaCell includes elements A, B, C
– An old AtomiCell includes elements A, B, C, D
– No Patent for NukaCell!
• Example 2:
– The NukaCell includes elements A, B, C
– An old AtomiCell includes elements A, B, D
– Patent for NukaCell!
14. A Patent Must NOT be Obvious
• Example 1:
– The NukaCell includes elements A, B, C
– An old AtomiCell includes elements A, B, D, E
– An old article says it is better to use C than E
– No Patent for NukaCell!
• Example 2:
– The NukaCell includes elements A, B, C
– An old AtomiCell includes elements A, B, D, E
– The only old description of C is an article saying that
using C and B together would be disastrous
– Patent for NukaCell!
15. Where is a Patent Applicable?
• Generally – The country granting the patent
– Jordan only patents NukaCell in US
– Riley makes, sells NukaCell in Germany, does not export to
US
– Jordan may be out of luck!
• Multiple Countries – Multiple Patents
– To protect NukaCell in multiple countries, Jordan may need
to file patents in each country!
• International protection of an invention may be costly!
– Application Fees
– Translation Costs
– Different countries have different patent laws
• May need separate legal counsel for each country
16. How Does a Patent Add Value?
• Eliminate Competition
– A patent gives the patentee the right to exclude others from making,
using, selling or offering for sale the patented invention within the U.S.,
or importing the patented invention into the U.S.
• Increase Market Share
• Revenue - Monetize your Invention
– Licensing the patent
– Selling the patent
– Royalty Payments for patent use
– Patent Infringement Penalties
• Boosting your marketing profile
– A business based on the invention may be more attractive to investors,
venture capitalists, and customers if the invention is patented
– Individual Prestige - Hiring, Promotions
17. Are Patents Worthwhile?
• The value of a patent for an invention may vary based on the industry,
technology space of the invention:
– Useful Lifespan
o How quickly does the invention become obsolete?
– Exclusionary Power
o How easy is it to “work around” the invention?
– Enforceability
o How easy is it to detect invention in competitors?
• Patents are not cheap. Patents are also difficult to obtain quickly (doing so is
even less cheap).
– Patent Office Fees
– Legal Counsel Costs
– ~$10,000 - $30,000 over 5 years
• But even a single patent may be incredibly valuable!
– Spending $20,000 for a patent may be worthwhile if the patent is worth
$2,000,000
18. Parts of a Patent
• Bibliographic and abstract
information on the first
page, followed by drawings,
description, and claims
• The description typically
includes several sections:
– Background – the field of
technology and a description of
the existing art
– Summary – restates the
important aspects of the
description in short form
– Brief Description of the Drawings
– Detailed Description – describes,
in detail and with examples, how
to make and use the invention,
with reference to the drawings
22. Claims:
The Most Important Part of a Patent!
• Claims define the bounds of
your protected invention.
• Claims define what someone
must do to infringe the
patent.
• A claim is drafted as a single
sentence.
• Claims are drafted for legal
effect, NOT readability.
• Hybrid Techo-Legal Language
26. Claims:
The Most Important Part of a Patent!
• Claims may recite just the most critical
elements of the invention
– NukaCell includes elements A, B, C, D, E
– Element A is the critical element that makes
NukaCell work
– NukaCell Patent claims “a device comprising: A”
27. • A creation must include all elements of a
patent claim to infringe on the patent
– NukaCell includes A, B, C, D, E
– NukaCell Patent claims a device with “A and B”
– NeutroCell includes B, C, D, E
• Does NOT infringe
– EnerPack includes A, B, F, G, H
• Infringes
Claims:
The Most Important Part of a Patent!
28. Inventorship:
Who is an Inventor?
• Someone who contributed to conceiving of
the invention
– Jordan comes up with idea of NukaCell,
conceives element A
– Riley conceives of combining A with B to make
NukaCell work
– Jordan and Riley may both be inventors of
NukaCell
29. Inventorship: Reducing the invention
to Practice is NOT Inventing!
• Jordan conceives of NukaCell that includes A, B
• Riley builds NukaCell according to Jordan’s
instructions, so that NukaCell includes A, B
– Riley is not an inventor
• Riley builds NukaCell and determines that adding
element C makes NukaCell work
when it includes A, B, C
– Jordan and Riley may both be inventors
30. Inventorship:
Inventors are Defined by the Claims
• Jordan conceives of elements A, B
• Riley conceives of adding C
• Elliot conceives of adding D
• NukaCell patent claims elements A, B, C
– Jordan, Riley are inventors
– Elliot is not an inventor
• NukaCell patent claim amended to claim A, B, C, D
– Jordan, Riley, Elliot are inventors
• NukaCell patent claim amended to claim A, B, D
– Jordan, Elliot are inventors
– Riley is not an inventor
31. Inventorship: Incorrect Inventorship
Can Destroy a Patent!
• The Listed Inventors on a Patent Must
Reflect the Correct Inventors of the
Invention IN THE CLAIMS
– Not research assistants who just followed
inventor instructions
– Not the lab manager who simply manages
• If Inventorship is not correct, a patent may
be invalidated
32. Patent Ownership:
Who is a Patent Owner?
• Inventorship and Ownership are Not the Same
Thing!
• Ownership is initially vested equally among the
inventors
– Jordan conceives 99% of NukaCell invention
– Riley conceives 1% of NukaCell invention
– Jordan and Riley own NukaCell Patent 100% each
equally
• Ownership may be divided differently according
to assignment agreements
33. • Inventors may have a duty to assign ownership to
someone else
– Employees may have a signed agreement to assign
work-related inventions to employer
– Fellowships may require assignment of patent
ownership to another entity
– Research Grants may require assignments
– The U.S. Government may have ownership depending
on how the invention was created
Patent Ownership:
Who is a Patent Owner?
34. How to Get a Patent
Invent
• Must be sufficiently conceived that a skilled person in the art could practice the
invention using your disclosure
• Sometimes having the idea isn’t enough!
Document
• Document the invention (DO NOT PUBLISH!)
File
• Draft and File a patent application for the invention
Prosecute
• Convince the patent office to grant you a patent for the invention
• Timeline -- 2-5 years (could be much longer)
35. When to Apply for a Patent:
IMMEDIATELY
• File for a patent immediately (ASAP)
– In the US, the patent for an invention goes to the
first inventor to file the application for it, NOT the
first inventor to have invented it
• If you don’t file immediately, you may not be
able to get a patent, ever
– For US - within one year of publication, public use,
offer to sell
– Other Countries - must file before publication,
public use, offer to sell
36. When to Apply for a Patent:
Speed is Of the Essence!
• 1/1/16 – Jordan invents NukaCell
• 2/1/16 – Riley invents NukaCell
• 3/1/16 – Riley files NukaCell patent application
• 3/2/16 – Jordan files NukaCell patent application
• Riley gets the patent
– Jordan is out of luck!
37. • Your own publications may disqualify your US
Patent Applications
– Patents can be disqualified by publications filed more
than one year before patent filing date
• Your own publications WILL disqualify many
International Patent Applications!
• Publication Examples
– Peer-Reviewed Journal Articles
– Dissertations
– Verbal Conference Presentations
– Conference Posters
File for a Patent Before You Publish!
38. • 1/1/16 – Jordan invents NukaCell
• 2/1/16 – Jordan publishes invention in journal
• 2/2/17 – Jordan files NukaCell patent application
• Application rejected based on the publication
– Jordan is out of luck!
File for a Patent Before You Publish!
39. • 1/1/16 – Jordan invents NukaCell
• 2/1/16 – Jordan publishes invention in journal
• 5/1/16 – Riley reads Jordan’s publication, writes own article
about invention
• 7/1/16 – Jordan files NukaCell patent application
• Jordan’s publication doesn’t disqualify Jordan’s patent
application
• Riley’s publication might disqualify Jordan’s patent
application
– Jordan must prove that Riley’s publication was a result of Riley
learning the invention from Jordan
File for a Patent Before You Publish!
40. • Your publications may hurt your patent, EVEN IF
PUBLISHED LESS THAN ONE YEAR BEFORE THE
PATENT FILING DATE
• Publishing the invention with authors different
from the inventors may be dangerous for your
patent’s health
– Patent Office may treat the publication as prior art
– Opens the patent to inventorship scrutiny
– May invalidate the patent during litigation
File for a Patent Before You Publish!
41. File for a Patent Before You Publish!
• 1/1/16 – Jordan invents NukaCell while directing
student assistant Riley
• 6/1/16 – Jordan and Riley co-author journal
article disclosing NukaCell
• 12/31/16 – Jordan files NukaCell patent
application as sole inventor
• The publication may disqualify a patent if Riley’s
presence in the article is not explained!
42. • Provisional Applications can secure filing date for
invention without drafting full patent application
• Provisional Applications can be anything behind a
cover sheet
• Easy Method – File publication as Provisional
Application before publishing
– Add at least one claim!
Provisional Patent Applications
43. • Provisional Applications secure Filing Date for
Later-filed Non-Provisional Patent Application
– But ONLY for what is covered by the provisional
application!
• Provisional Applications expire after one year
– Must convert into Non-Provisional Application before
expiration date to keep the provisional filing date!
Provisional Patent Applications
44. Provisional Patent Applications
• 2/1/16 – Jordan files provisional NukaCell patent application
• 2/2/16 – Jordan publishes article about NukaCell
• 5/1/16 – Riley independently invents NukaCell
• 5/2/16 – Riley publishes own article about NukaCell
• 5/3/16 – Riley files non-provisional NukaCell patent
application
• 6/1/16 – Jordan files non-provisional NukaCell patent
application, claiming priority to the provisional application
• Neither Jordan’s publication nor Riley’s publication nor Riley’s
patent application disqualify Jordan’s NukaCell patent
45. Inventor Good Practices
• Document the Invention – Early and Often
• If you owe a duty of assignment, provide
documentation to responsible parties ASAP
– Manager/Supervisor
– Technology Transfer Office
– Legal Department
• If you don’t owe a duty to anyone, file for patent
BEFORE publicly disclosing invention!
46. Inventor Good Practices
Maintaining Invention Records
• Records can be invaluable for preparing a good
patent
• Records may be important to determine
Inventorship
• Records can disqualify certain prior art
47. Inventor Good Practices
Maintaining Invention Records
• Record idea/developments
– inventor notebook entry
– printout kept in folder/binder
– computer records (a little troublesome)
• Sign and date entries by inventor(s).
• Sign and date entries by witness who attests
“Have read and understood the subject matter.”
48. Inventor Good Practices
Maintaining Invention Records
• Each entry should include:
– Purpose of the work undertaken
– Projects/Research/Grants to which the invention relates
– When invention was made
– How invention was made
– What resources were used to make the invention
– Practical uses of the invention
– Advantages and value of the invention over the present
state of the art
– Those who contributed to the invention (i.e., the
inventors) and individual contributions
– How invention could be identified in practice
49. Inventor Good Practices
Maintaining Invention Records
• Each entry should NOT include
– opinions on patentability of invention
– expression of additional effort to complete or
commercialize invention
– negative comments, comments reflecting
uncertainty, etc.
50. Please feel free to contact us.
Michael D. Gamble
Harness, Dickey & Pierce, P.L.C.
11730 Plaza America Drive
Reston, VA 20190
Phone Number: 703-668-8025
Email: mgamble@hdp.com
