Introduction to IP - Part 2: Some Basics of U.S. Patents

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Boris Zelkind & Tom Cowan October 18, 2016

Introduction to IP – Part 2:

Some Basics of U.S. Patents

2 © 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved.

• Market Exclusivity – Key patents may enable you to be exclusive provider of new type of product or service, and to maintain competitive edge

• Company Value – Patents are an asset; enhance the value of a company; can charge premium for patented items

• Revenue – Patents may be licensed to others to derive revenue and/or obtain access to technology of others

• Legal Protection – Strong patent portfolio deters other patent holders from suing you

• Attracts Investors – Provides incentive for venture capitalists to invest in or buy a company

Why get Patents?


Basic Legal Requirements for U.S. Patents

• Must be:

– (1) useful,

– (2) novel, and

– (3) non-obvious

• Quid pro quo

– Obtain “legal monopoly”

– Must disclose how to practice the invention


What rights does a U.S. patent grant?

• Gives the patent owner the right to exclude others from practicing the patent (20 years)

• Does NOT provide the right to practice invention

Rights you may think a patent provides (right to do whatever you want inside fence)

Rights a patent actually provides

(right to exclude others from trespassing)


Types of U.S. Patents

• Utility – most common type

• Design – look and feel

• Plant

Utility Patent

No. 4,656,917 Design Patent

No. D593,087

Plant Patent

No. 1


U.S. Utility Patent Document

What is claimed is: 1. A Phone with Lifetime

Charge, comprising:

a three-ended spring;

a vibratory encryption

chip; and

a xenon polyethelene

coating.

Drawings “Claims”

“Specification”

Written

Description

7 Confidential and Proprietary Information – Do Not Distribute

What to Patent?

MEDM.000GEN

• Patents protect aspects of inventions

• Some factors to consider:

Invention Idea No. 123

Sample Factors

Competitor Activity /

Blocking Ability

Revenue Driver Potential

Patentability

Difficult to Prove

Infringement

Technology Complexity

Obtain feedback from marketing

Obtain feedback from IP attorneys

Obtain feedback from tech. dev.


Spectrum of Eligible Subject Matter

Improve Function

of the Computer

Itself

Fundamental

Economic Practices;

also: diagnostic tests,

DNA

Effect an

improvement in any

other technology

Effect an

improvement in a

non-technical field

• Eligibility = threshold requirement for a patent

• Eligible for a patent: processes, machines, manufactures, or compositions of matter

• Not eligible: abstract ideas, laws of nature, natural phenomena

• Recent scrutiny of eligibility: Biotech, Software & Business Methods

LESS

ELIGIBLE

MORE

ELIGIBLE


Inventorship

• Why does inventorship matter?

– Necessary to enforce the patent

– Equal and undivided interest in patent among joint inventors

• Who is an inventor?

– Conception = touchstone of inventorship

• Conceive of “definite and permanent idea”

• Inventive contribution to at least one “Claim”

• Joint inventorship

– Laboratory hands v. joint inventor

– Improvements, etc. may lead to joint inventorship

– Collaboration, outsourcing, partners, etc.


Ownership

• Why does ownership matter?

– Determines who can enforce & license the patent

• Who is an owner?

– Inventors by default are the owners

– Ownership changes with written “assignments”

• Joint Ownership

– Usually not desirable

• ALL joint owners must agree to enforce (sue for infringement)

• ANY joint owner can unilaterally license and collect royalty

– Agreements affecting ownership

• Employment, Consulting, Development, Manufacturing, Collaboration, Visitor’s Confidentiality Agreements; Government Interests


Filing Procedures – U.S. Provisional

• Provisional Applications

– Establishes priority date for disclosed material

– One-year pendency, no examination

– Can file numerous provisionals, convert all into one “non-provisional application” one year from earliest provisional

– Patent Office fees: $280 / $70 (small entity)


Use of Provisional Applications

Provisional Application

Non-Provisional Application

Within 12 Months

Typical Filing Multiple Non-Provisionals





Within 12 Months

MEDM.000GEN


Advanced Use of Provisional Applications


1st Provisional Application 2nd

Provisional Application 3rd

Provisional Application 12

months

• In view of “first to file” rule, can file multiple provisional applications

within the 12 month anniversary period

• Roll-up provisional applications into one large non-provisional / PCT

application

…

MEDM.000GEN


Filing Procedures – U.S. Non-Provisional

• U.S. Non-Provisional Application

– Can claim priority to:

• One or more provisional applications

• Other pending non-provisional application(s)

– Examined: ~18-24 months

• Priority Exam: ~6-12 months

– Issues as a patent: ~ 2-5 years

– Official fees: $1600 / $730 small entities


Examination Process – Results Vary

Possible Results

• All Claims Immediately Allowed – VERY unusual

• More typical: one or more rounds of “negotiation”

– Office Action from Patent Office

– Response from Applicant (possibly w/ claim amendments)

• Might pursue some claims in continuing application(s)

Patent

Application

Issued Patent

Examination Process

“Patent Pending”

(3 mos. – 3 years)


Issued Patent #2

Issued Patent #3

Continuation Applications

Original Non-


(“Parent”)

Issued Patent #1

Continuation Application

#1

Continuation Application

#2

“claim scope”

Larger/different “claim scope”

• Continuations

– Filed before parent issues

– Same drawings and written description as parent

– Different claims from parent


Filing Procedures – International PCT

• Patent Cooperation Treaty (PCT) Application

– “International” application

• Can claim priority to application w/in previous 12 months

• Provides priority in 149 member countries

• No such thing as “International Patent”

– Preliminary exam report provided to national phase countries

– Enter “National Phase” within 30 months of priority

– U.S. Patent Office fees: $3581 / $2421 small entity

• Can select non-U.S. patent offices for PCT application


Timeline for Filing

12 Months 18 Months

Utility / PCT National Phase

(U.S., Europe,

Japan, Korea,

China, etc.)

3rd Provisional

(optional)

1st Provisional

2nd Provisional

(optional)

• Typical Filing Strategy

knobbe.com

Orange County San Diego San Francisco Silicon Valley Los Angeles Seattle Washington DC

Boris Zelkind

Tom Cowan

[email protected]

[email protected]

858-707-4000

Q & A Introduction to IP – Part 2

Law

Introduction to IP - Part 2: Some Basics of U.S. Patents