2. “All About
Patents”
Thomas F. Lebens
Partner and Chair, Intellectual Property Practice Group
Sinsheimer Juhnke Lebens and McIvor, LLP
Managing Partner, West Coast Operations
Fitch, Even, Tabin and Flannery, GP
3. Overview
Introduction
What is a patent?
What makes for success?
Examples of “success”
Success revisited
Conclusions
4. What is a patent?
Right to exclude others from making, using, or
selling what is claimed in an issued patent for 20
years from its earliest non-provisional filing date
Was 17 years from issue date prior to 1995
Plus, retroactive damage right, under limited
circumstances
New in 2000
5. Legal Regime
U.S. Constitution
Federal Statute (U.S. Code)
Federal Regulations
Federal Administrative Procedures
Case law
6. U.S. Constitution
The U.S. Constitution
Art. 1, Sec. 8, Cl. 8 “The Congress shall have power .
. . 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.
7. Federal Statute
Statutory subject matter (35 U.S.C. § 101)
Anything under the sun made by a person
Business Methods – State Street Bank case
Useful (35 U.S.C. § 101)
Novel (35 U.S.C. § 102)
Narrowed in 2000 to include more “secret” prior art
Non-obvious (35 U.S.C. § 103)
Written description, enablement, best mode (35
U.S.C. § 112, first paragraph)
8. Federal Statute
Statutory subject matter
Product, device, apparatus, structure
Method, process for using, or for making
Article of manufacture
Composition of matter
9. Federal Statute
Useful
No practical consideration need be given to the "utility"
requirement in relation to common mechanical or electrical
devices. However, some showing of utility may be necessary
when seeking patent protection for inventions whose "real
world" value may be difficult to gauge or substantiate, such as
chemical and pharmaceutical compounds. See, for
example, Brenner v. Manson, 383 U.S. 519 (1966), noting
that "[a] patent is not a hunting license. It is not a reward for
the search, but compensation for its successful conclusion.
„[A] patent system must be related to the world of commerce
rather than to the realm of philosophy. . . .‟" Id. (citations
omitted).
10. Federal Statute
Novel
No patent protection is available for:
an invention known or used by others in the U.S. prior to the date of
invention by the Applicant.
an invention patented or described in a printed publication anywhere
(U.S. or abroad) prior to the date of invention by the Applicant.
an invention patented or described in a printed publication anywhere
(U.S. or abroad) more than one year prior to the U.S. filing date of
the patent application.
an invention in public use in the U.S. more than one year prior to the
filing date of the patent application.
an invention on sale in the U.S. more than one year prior to the filing
date of the patent application.
11. Federal Statute
Non-obvious
In general terms, an invention is not patentable
if, considering the prior art that existed at the time of
invention, the invention would have been obvious to a
person of ordinary skill in the art. Obviousness rejections are
common during patent prosecution; however, because such
rejections are somewhat subjective, they can often be
overcome through persuasive argument. Secondary
considerations of (1) commercial success; (2) long-felt need;
and/or (3) commercial acquiescence can factor into such
arguments. See Graham v. John Deere, 383 U.S. 1 (1966).
12. Federal Statute
“112” requirements
Written description sufficient to support claims
Sufficient to enable one of ordinary skill in the art
to practice the invention without undue
experimentation
Best mode of practicing the invention
13. So, what makes for a success?
Statutory subject matter (35 U.S.C. § 101)
Useful (35 U.S.C. § 101)
Novel (35 U.S.C. § 102)
Non-obvious (35 U.S.C. § 103)
Written description, enablement, best mode (35
U.S.C. § 112, first paragraph)
22. Success Revisited
Start with a plan
Business Strategy
Patent Strategy
Invention disclosure
Filtration of filings (management)
Management during prosecution
Management after issuance
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24. Intellectual Capital Management
Know what you have (invention disclosure
program)
Determine what you want to protect, and how
(filtration)
Codify what you want to protect (patent)
Reevaluate as you protect (before & after
issuance)
Leverage what you protect (move & connect)
25. Invention Disclosure
An “invention disclosure” is a document
containing a description of technology sought to
be patented
“Invention” = legal term of art
Most often, inventions will be thought of by the
inventor as the subject matter for the patent
26. Invention Disclosure
Fundamentally every invention can be expressed
in terms of a minimum combination of elements
necessary to solve a problem
The elements may be structural
The elements may be functional
27. Invention Disclosure
The invention lies in the novel and non-obvious
elements, and/or the novel and non-obvious
relationships between the elements
Most invention disclosures describe several
“inventions”
28. Invention Disclosure
Top 10 things to look for in an invention disclosure. . .
1. What are future applications for the product/process?
2. What does the next generation product look like? Last generation?
Other solutions?
3. What is the most profitable point in the supply chain?
4. Are there any disadvantages to the invention? Solutions?
5. What are the materials used?
6. What are the parameters for operating, and/or making?
7. What are the inputs and outputs, which ones are necessary?
8. Who are the customers? Who will they be? What do they want?
9. Who are the competitors? Who will they be?
10. Can the invention be a structure, method of using, method of
making, article of manufacture, AND composition of matter?
29. Filtration of Filings
Patent review committee:
Business leadership
Marketing
Legal
Department advocate
When business, marketing, and legal agree to
patent, proceed
30. What to look at?
During filtration, look at . . .
•Timing •Geography
•Complexity •Who will infringe
•“Detectability”/ease •Standards
of avoidance •Business direction
•Royalty basis •Use by others
31. What to look at?
Know what you need
Acquire what you need
Reactive
Proactive
Hunt internally
Hunt externally
Force the invention into existence
Divest what you don‟t need
33. Management After Issuance
Reevaluate business objectives
Reevaluate markets
Reevaluate legal
Filtration
34. Leverage!
Knowledge assets should be treated like inventory –
kept moving
Intellectual Capital Management is about
connection, not collection
Strategies
“Productize”
Sell/Acquire
In/Out license
Debt/Equity
Grow (JV, SP, JDA, etc.)
35. Conclusions
The key to success is a mutually supportive base
of patentable technological solutions, market
demand, and business abilities
The odds of success can be increased by
Identifying what you have
Strategically protecting what you have
Leveraging what you have
36. “All About
Patents”
Thomas F. Lebens
Partner and Chair, Intellectual Property Practice Group
Sinsheimer Juhnke Lebens and McIvor, LLP
Managing Partner, West Coast Operations
Fitch, Even, Tabin and Flannery, GP