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Patents and Technology Protection
“Everything You Wanted to Know About IP –But Were Afraid to Ask”
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
The Four “Flavors” of IPTrademarks
Identify source of goods
CopyrightsProtect works of authorship
Trade SecretsProtect processes,
information
PatentsProtect processes,
compositions, devices
*
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?
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.
Patent Examples
Animal Ear Protector
Wearable Pet Enclosure
Toy Bar Soap Slide
High Five Simulator
A Notable University Patent
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!
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.
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 ClaimedInvention
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
Claim AnalysisExample claim:1. A cutting device, comprising:
a metal blade having a cutting edge, anda 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
A Variety of Patentable Inventions Machines &
Devices
Processes
Articles of manufacture
Compositions of matter
Note especially…
– Improvements to known technologies
– New combinations of known technologies
– New uses of known technologies
– … are all patentable!
What is not patentable?
• Laws of nature
• Natural phenomena
• Abstract ideas
• Humans
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.)
Example - Patenting Your Invention
time
Lee Taylor, et al., UH OTTED
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
Your Publication Can Void Your PatentPublish 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!
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
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)
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/fotoweek/1025.move1.jpg
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
http://www.uspto.gov/
U.S. PATENT AND TRADEMARK OFFICE
“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 2012time
1.5 years from priority date – publication of
patent application
Examination of the Patent Application and Claims Begins
by a U.S. Patent ExaminerExamination Continues
Your Article Publishes
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,
anda handle attached to the metal blade.
Patent application for “Cutting Device”
Patent Caveats
Co-inventors
Obligations to Assign Patent Rights
Written Agreements … MTAs, NDAs, CDAs
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Pop Quiz – What You Need to KnowQuestion:
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.
