nittygritty

28
From Proof of Concept to Patent: The Nitty Gritty About the Patenting Process

Upload: crissa-seymour-cook

Post on 15-Feb-2017

14 views

Category:

Documents


0 download

TRANSCRIPT

Page 1: NittyGritty

From Proof of Concept to Patent: The Nitty Gritty About the

Patenting Process

Page 2: NittyGritty

Types of Intellectual Property• Patents

- Inventions: *Processes/Methods *Machines/Devices

• Copyrights- Expressions of Ideas: *Writings *Music *Art Works

Page 3: NittyGritty

Types of Intellectual Property• Trademarks

- Source indicators

• Trade Secrets- Confidential information that has economic value: *Formulas *Customer lists *Manufacturing processes

Page 4: NittyGritty

Patents.

Page 5: NittyGritty

Patents: Practical InventionsPatentable Subject Matter Includes…• “Anything under the sun that is made by man”

• Excludes laws of nature, physical phenomena, abstract ideas

• Statutory classes: process, machine, manufacture, composition of matter– Compositions, devices, techniques, new

combinations, software, new uses of an old thing

Page 6: NittyGritty

Terminology• 1-year grace period:

– U.S. has a 1-year grace period from first public disclosure of invention to file patent application

– NO GRACE PERIOD in foreign countries must file BEFORE publish.

• Provisional application: Never examined, never issues into patent.– Automatically expires after 12 months (consider

research timeline)– Minimal formality requirements for filing

Page 7: NittyGritty

Terminology• Non-Provisional: Full blown patent application, will be

examined, and may issue into a patent• PCT: Patent Cooperation Treaty – international non-

provisional – “filed” in 148 countries– Examined, but never issues into a patent unless proceed

to national stage.

• National stage/phase: individualfilings for patents in each country of interest – based upon the PCT application.

Page 8: NittyGritty

Process OverviewProvisional First Approach

“non-provisional”

Manuscript may be submitted in-between

Page 9: NittyGritty

Process OverviewConsider this timeline in planning when to file a provisional, when to submit a manuscript, etc.

Estimated time when proof of concept may be close to finished (major questions answered)

Work backwards so that provisional filing isn’t premature

Page 10: NittyGritty

How to disclose?Invention Disclosure Form

-Submitted to Tech Transfer Office or Appropriate Division of Company

-Important to meet with Tech Transfer early in process – keep apprised ofmanuscript deadlines, etc.

-Important to document invention development.

-Company or University Policy may require employees or faculty to submit all IP for consideration

Page 11: NittyGritty

The Invention Disclosure• What to disclose?

• Identification of full scope of invention• Explore metes & bounds• Explore alternative or non-optimized versions• Any proposed manuscripts should be included with

disclosure form• Materials and methods for any working examples – very

important

• How to disclose?– In writing most preferred, e.g., manuscripts, grant

applications– Oral interview – expand on concepts contained in written

document

Page 12: NittyGritty

How much disclosure?

Page 13: NittyGritty

Disclosure considerations• Patent application disclosure must enable one skilled in

the art to practice the invention without undue additional experimentation– “show your work”– Best mode must be disclosed

• Patent application must adequately describe the invention (sufficient species to claim a genus)

• Once the application is filed there is virtually no possibility to add to it or update it*

* Added material is considered “new matter” and gets a new filing date.

• Important that disclosure/application is as comprehensive as possible.

Page 14: NittyGritty

Disclosure considerations

• Patent application will and should be more comprehensive than your manuscript (the patent attorney will help with this)

• Patent application should be submitted BEFORE your manuscript, poster presentation, etc.

Page 15: NittyGritty

Disclosure considerationsRoad Trip - Hitting the Slopes!•The Manuscript Approach

• Why go to the mountains?• How do we get there?• I-70 is East/West Highway to Colorado• We suspected that driving I-70 west, we’d eventually

run into mountains• Report results—after driving west for 500 miles, we

encountered mountains• Future investigation – alternate routes to the mountains

Page 16: NittyGritty

• The Grant Application Approach– We’ve driven I-70 west and reached mountains– Problems with this approach – boring, not

enough places to stop– We suspect there are better routes, but need

funding to investigate (Dodge City route?)

Disclosure considerations

Page 17: NittyGritty

• The Patent Application Approach– Go North on I-135 for 1.5 miles, take the exit

to West I-70 for approximately 530 miles– Providing directions to achieve an outcome– Provide alternative directions, not just your

preferred route (back highways through Dodge City)

– Disclosure should enable others to also reach the mountains

Disclosure considerations

Page 18: NittyGritty

The Drawings• Drawings helpful to understanding the

invention• PCT drawing quality issues:

• Must be black & white – avoid colored lines!• Amenable to reproduction• Original, editable files preferable

Page 19: NittyGritty

Example – Experimental Setup

Page 20: NittyGritty

How do I know if my invention is patentable?• Ask Tech Transfer or Patent Attorney• The patent act defines what is patentable:

– Whoever invents or discovers any new and useful process, machine, manufacture, or composition of the matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. (35 USC § 101)

– The remaining fundamental requirements are that the invention be novel and non-obvious.

Page 21: NittyGritty

Basic Requirements for Protection• Novel: loosely means that the invention

is new and is non identical to the previous work of others. (35 USC § 102)

• Non-obvious: means that the invention must not be an obvious extension of what has gone before. (35 USC § 103)

- Obviousness is measured by what one of ordinary skill in the subject area of the patent would have known at the time of the invention.

Page 22: NittyGritty

America Invents Act

• The AIA significantly encourages early (and often) filing of patent applications

• U.S. patent laws are now based on “first-inventor-to-file” rather than “first-to-invent”

Page 23: NittyGritty

America Invents Act• File patent applications before any public

disclosure, use, presentation, commercial activity, etc. involving the invention– Limited “grace period” still available– Use Non-Disclosure Agreements consistently, but do not

rely on NDAs to fully protect invention– Inter-institutional inventions: Use written joint

development agreements with confidentiality provisions and publication restrictions

Page 24: NittyGritty

America Invents Act

• Invention Disclosure forms and streamlined protocol for submitting and evaluating inventions becomes even more important under the AIA

Page 25: NittyGritty

Patent Acquisition. Prepare and File

Post-issuance Challenges Examination

Issuance

Page 26: NittyGritty

Examination process• Patent examiner will do a search based upon the

application claims to see if there is any “prior art” related to the invention– Claims describe the metes and bounds of protection– “A method of…” “A composition comprising…”– Claimed invention must be: new, non-obvious as compared

to one or more prior art references located by Examiner.• Examiner issues an “Office Action” – patent attorney

will have a back and forth exchange with the Examiner regarding the prior art and the claims.– Inventor input can be helpful – “person skilled in the art”– Often Examiner is misinterpreting the claims, the prior

art, or both

Page 27: NittyGritty

Common Patent Misconceptions• A patent gives the right to use or make the

invention.

• Patented products are better than unpatented products.

• If I find a new use for an old product, I can get a patent on the product.

Page 28: NittyGritty

Thank You!Crissa A. Seymour Cook

Hovey Williams LLP84 Corporate Woods

10801 Mastin Blvd., Suite 1000Overland Park, KS 66210

913.647.9050www.hoveywilliams.com