What international businesses need to know about US patents
Jennifer Blount, Ph.D., J.D.
Erik Huestis, J.D.October 23, 2019
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Introduction / Agenda
1. Patent Fundamentals
2. Patent Process
3. Patentability
4. Post-Grant
5. Best Practices
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PATENT FUNDAMENTALS
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Patent Taxonomy
Provisional Application- NOT a “Provisional Patent”- 12-Month Placeholderthen
PCT Application- International Application (152 Participating States)- 18-Month Placeholder
Non-Provisional Application (a/k/a National Application)- Per-Country- Matures into a Patent after Examination
Patent- After Grant/Issuance- Conveys Enforceable Rights
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What does a Patent Get You? A limited term monopoly to make, use, sell, or import your invention
- Scope Determined by Specific Claims- 20-Year Term (with Caveats)- Rights are Per-Country
A patent does not give you the unfettered right to practice your invention
Patent can be Licensed or Sold- e.g., Licensing Different Companies to Enter Different Markets
Patent can be Enforced in Court, or Through Customs- Damages, Injunction, Seizure
Contributes to Valuation of Company- Why buy your company or your product when I can just make my own?
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Filing Timing
An invention is only patentable prior to public disclosure (in Europe)
In the US, there is a one year grace period, so an invention may be patent eligible in the U.S. even after disclosure
Academic papers, conference presentations, poster sessions, etc., all can count as public disclosure
Once public, if no patent is pursued within the appropriate time limit, the invention is committed to the public domain.
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PATENT PROCESS
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Prosecution After Filing, Examiner Searches Prior Art
Examiner Issues Office Actions- Addressing Formal Issues- Assessing Novelty and Non-obviousness
Argument for Patentability- Claim Amendments- Interviews
USPTO Averages- 14.7 Months from Filing to First Office Action- 30.6 Months from Filing to Issuance or Abandonment
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Typical Timelines
File Provisional Application• 0 Months
File PCT (International) Application• 12 Months
Application is Published• 18 Months
File National Applications• 30 Months
Receive First US Office Action• 45 Months
Patent Issued in US• 61 Months
File Provisional Application• 0 Months
File Non-Provisional Application• 12 Months
Application Publishes• 18 Months
Receive First Office Action• 28 Months
Patent Allowed• 43 Months
Standard
U.S. Only
File Non-Provisional Application• 0 Months
Receive First US Office Action• 3 Months
Patent Allowed in US• 6-8 Months
Expedited U.S. Only
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Allowance
After Allowance and Payment of Issue Fees, Patent Issues
Prior to Issuance, May File Additional Applications- Maintaining Right to Filing Date
Patent Term is 20 years from earliest non-provisional filing date- With various adjustments
Marking- “Patent Pending” vs. “Patented”
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PATENTABILITY
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When is an Idea Patentable?
Although you need not have built the invention yet, you need to have enough information to do so.- Identifying an interesting avenue of research isn’t enough.
New, Useful, Non-Obvious- Useful is Easy- New is Easy
Non-Obvious (Inventive Step) is Hard- Would someone of ordinary skill have come up with the idea?- How much experimentation would it take to make the idea work?- “Obvious” ideas include: predictable optimizations, substitution of known
materials and techniques
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Questions to Ask Your Team
What solutions are you particularly proud of?
What problems kept you up at night?
What solutions are reusable?
What solutions are key to the functioning of the product?
What can be reverse engineered from the product?
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Special Note on Software
Is this a technical solution to a technical problem?
Does this contribute to the functioning of an underlying machine?
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Technical Requirements
Specification- Enablement – describe how to make and use the invention- Written Description – Inventor had possession of the claimed invention at
the time of filing- Use to ascertain the scope of the claims- Minimal amendments
Claims- Define the scope of patent protection- Significant amendments during prosecution
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Inventorship
“Inventorship” is a legal determination
The standard for inventorship is NOT the same as the standard for including co-authors on a scientific paper
University invention disclosure forms often refer to “contributors” until the patent attorneys can make a factual determination regarding inventorship
Touchstone for inventorship is the *conception* of the invention
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POST-GRANT
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Prosecution and Court Decisions
Post Grant Proceedings
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Case law: implication on patent drafting
Patent process is continuously evolving- Congress:
• AIA/Patent reform- Decisions from:
• U.S. District Courts• Court of Appeals for the Federal Circuit (CAFC)• United States Supreme Court decisions• Patent Trial and Appeal Board (PTAB)
Consequences:- Stronger claims and specification- Limit invalidity challenges- Better infringement cases
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Formal Requirements
Maintaining Pendency
Marking
Maintenance Fees- 3.5, 7.5, and 11.5 years
No need to “Police”
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BEST PRACTICES
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Ownership of Inventions
By default, an inventor owns their own inventions (in the US).- In many foreign jurisdictions an employer owns inventions that originate
within the scope of employment.
BUT, employment agreements almost always assign inventions to the employer.
Likewise, graduate fellowships almost always assign inventions to the University.
Your own companies should have employment agreements in place that provide for intellectual property ownership (among other things).- This is a particular risk with contractors.
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Confidentiality and Disclosures Anyone with access to innovations should be under confidentiality
obligations.- Non-Disclosure Agreements for Contractors, Vendors, etc.- Employment Agreement for Employees
Obligation to Assign and Assist
Trade Secret Protection Hinges on Reasonable Measures to Protect- Both Legal and Operational Measures (InfoSec)
Public Disclosure Limits Patent Rights- Starts One Year Grace Period in U.S. for Filing- May Give Up All Rights in Europe (and Other Jurisdictions)
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Business Decisions re Patenting
Is this important to the business?
Are you likely to obtain useful scope of protection?
Do your investors, partners, or licensees demand filing?
Can you invention reasonably be kept secret?
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Pre-Filing Search Novelty and Non-Obviousness in View of Prior Art
- Patent publications- Journals- Conference Presentations- Textbooks- Since the Beginning of Time- In any Language (with Some Caveats)
Can I use Features Appearing in the Prior Art?
Do I really want to know?- Willful Infringement
Patent Search is Limited by What is Published
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Freedom to Operate
Does my product infringe anyone else’s patent rights?- What jurisdictions?- Who would infringe?
Complex Products Involve Many Patents- e.g., Apple is estimated to have filed 1,291 mobile device related patents
since 2007
Which Features do I Need to Clear?- What is critical to success of product?
Invalidity or Non-Infringement- Proactive Challenges
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Patenting pointers
Maintain up-to-date records- Potentially relevant publications- Experimental methods- Supporting figures- Employment agreements/assignments- NDA/CDA/MTA
Be cautious about making an inadvertent disclosure- Actually, don’t just be cautious, be paranoid- If you do make a disclosure, tell an attorney immediately
File complete applications early and often If you are affiliated with a university, get to know your Technology
Transfer office liaison
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Other Questions?
Jennifer Blount, J.D., Ph.D.
+1.617.832.1216
Erik Huestis, J.D.
+1.646.927.5525
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Backup Slides
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Design vs. Utility
“Patent” usually refers to a Utility Patent- Applies to a Useful Invention- “any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof”
Design Patent (a/k/a Industrial Design)- Applies to Look and Feel- “any new, original and ornamental design for an article of manufacture”- Shorter Term (14 or 15 Years)
Plant Patents
“Petty” Patents and Other Unexamined Registrations
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Offensive and Defensive Use
Strategic Tool- License agreements- Joint Ventures- Corporate valuation- Blocking competition- Blocking from patenting- Bargaining chips
Revenue Driver- Top 10 drugs accounted
for $76.38 billion in sales
- Each of top 10 drug more than $5.5 billion each
- Settlement and Verdicts- Licensing
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You Don’t Patent a Result
You patent a process, a machine, or a composition giving rise to a result
Engineers tend to focus on the benefits of the invention, not on the “invention”- But ours is better, faster, stronger!
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Technical Requirements
Only one invention per patent- May file “children” or “offspring” patent applications (“divisional
applications”) if more than one invention is claimed in a “parent” patent application
Utility
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Collecting Inventions
Standardized invention disclosure forms
Tap into the development process–Schedule in-team assessment to coincide with project milestones
–e.g., at the end of each sprint
Memorialize decision trees and forks in the road of the technology development
–Consider making this a living document
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HOW TO READ A PATENT
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How to Read a Patent
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Cover Page
Issued Patent
First Named Inventor
Issue Date
Patent Number
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Title, Inventors, Owner, Term
Title
All Inventors
Owner at Issuance
Term Adjustments
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Application Data
Pre-Issuance Publication
Priority Date
Serial Number
Filing Date
Classification
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Prior Publication
Pre-Issue Publication
First Named Inventor
Publication Date
Publication Number
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Prior Art, Examiner, Attorney
Prior Art Considered
Examiners
Law Firm
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Design
CLAIMThe ornamental design for an apparatus for delivering a closure element, as shown and described.