non-obviousness and the patenting process


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non-obviousness and the patenting process

  1. 1. Non-Obviousness andthe Patenting Process
  2. 2. HKUST Business School2What is Non-Obviousness? Most be non-obvious to someone skilled inrelated fields to satisfy this test Once used to deny almost all patentapplications, but restricted in application now Does not require a brilliant act of new genius All elements can be obvious if new utility andinsights are more than “sum of the parts”
  3. 3. HKUST Business School3Obviousness Not Case LawBased This is a fact of analysis of the businessprocess or engineering applications involved Obviousness viewed from perspective ofindustry expert, but from layman review New industry or product with lots of demandcan provide evidence of non-obviousness If it was so obvious, why was it not done already? Has to represent advance over prior “art”
  4. 4. HKUST Business School4Statutory Test ofNonobviousness (1) survey of scope and content of prior art (2) examination of differences betweeninvention and prior art (3) determination of the level of ordinary skillin the art that might measure obviousness In light of this three stage process, the courtor the patent office can then determine if theproposed innovation exhibitsnonobviousness.
  5. 5. HKUST Business School5Survey of Prior Art Duty of candor – the inventors and applyingattorney must disclose known prior art Must provide survey of prior art Must be relevant or pertinent or analogous Prior art definition must not be too narrow Definition is functional, not commercial Second stage of process is patent officereview of prior art Undisclosed discoveries not viewed positively
  6. 6. HKUST Business School6Patent Application Process In the USA (and in many countries), there is athree step process of filing for patents: File a provisional INTENTION to file patent formGives you ONE YEAR time to file actual applicationStarts the clock on patent file time for “race to patent” File the Formal Patent ApplicationRequires extensive details on all required patent issues Navigate the Patent Review and Appeal ProcessLots of iterations and significant legal costs requiredCan take more than one year to complete
  7. 7. HKUST Business School7Provisional Intention to File Patent The first step in the patent application process isnormally filing an intention to file an application This is EASY to do and can be done yourself at lowcost, or by an attorney for you at minimal cost This gives the right to say “patent pending” on allproducts which may be covered by the future patent This “intention to file an application” starts date fromwhich patent is granted, which is important in a raceto patent priority analysis (reduction to practice date)
  8. 8. HKUST Business School8Complete Formal Patent Application The Complete Patent Application must befiled within one year of the Provisional PatentApplication, which is intention to file form You may, however, skip the provisional intentionto file and can simply file the full and completepatent application in full initially, although this isnot commonly done as it takes time to prepare The Application may be revised to clarifyissues raised by the PTO, but not to add newclaims or new protections into the application
  9. 9. HKUST Business School9Navigate Patent Review and Appeals Most of the time, the PTO will decline thepatent initially, based on objections raised You then have time to respond to these issues,and may file additional information to amend theapplication in order to address these issues raised If you can not resolve disputes, the patentapplication may be taken to administrative appealwithin the PTO to a higher level superviser. Patent applications rejections also may be takento court for judgment overturning PTO rejection
  10. 10. HKUST Business School10When Patent is Finally Issued This gives you the right to sue others Notification of patent (or patent pending) importantto protect some legal damages rights Police or government will not protect your rights Patent infringement is only a civil offense, not acriminal offense, so only remedy is civil lawsuit Patent lawsuits are expensive and risky US attorneys unwilling to take risk on investing inthese cases to take contingency fee on success Thus, cost of litigation paid for by both companies
  11. 11. HKUST Business School11Costs of Obtaining US Patent File provisional patent application Can be done yourself or by attorney at low cost Minimal information required; short application File the Formal Patent Application Takes a lot of legal time and technical inputs Significant costs involved in this step (~ US$100k) Navigate Patent Review and Appeal Process Most of the costs come during this part of process Costs of patent process can exceed US$1 million
  12. 12. HKUST Business SchoolPatent Law Protections (Review) Protects FUNCTION, not expression Amazon patented its one-click function, ascopyright would not have protected this function Replicating code for one-click function easy to do Lengthy application and approval process Significant legal costs may be required Patents required in multiple jurisdictions Patent limited to exact terms of application Be careful to limit patent claims narrowly
  13. 13. HKUST Business School13Prior Discussion for UtilityPatents There are three types of patents which canbe granted under US laws Utility Patents (this is what we have been talkingabout and is the most common type of patent)Protects product and process inventionsMust provide some form of concrete utility Design Patents (much less common historically)Protects any novel, original (rather than non-obvious)and ornamental (rather than useful) design for an articleof manufacture (overlaps with copyright and trademark) Plant Patents (asexually reproduced plants only)
  14. 14. HKUST Business School14Design Patents Protects design or appearance Closer to copyright in some ways, but only forarticles of manufacture (which copyright doesNOT protect from duplication) Duration of only 14 years (which is shorterthan utility patents and than copyright) Traditionally, not used much, but becomingmore popular now due to simple applicationprocess and lower cost than utility patents
  15. 15. HKUST Business School15Plant Patents Protects any distinct and NEW variety of plantthat is asexually producted (which means, notreproduced by means of seeds, roots, orother natural processes, and must be createdby human actions to create new plants) Can not get patent on new wild plant Can not get patent on self-replicating plant Can not get plant patent on bacteria Plant patents do not foreclose utility patent forthe same plants (e.g., can get both)