Intellectual Property Patent Primer Michael Pratt Executive
Director, Business Development November 1, 2011
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Boston University Slideshow Title Goes Here 2 Idea Product
Customer Value Profit IP Market Action Resources
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Boston University Slideshow Title Goes Here 3 Questions to
consider Can I patent my idea? Should I patent my idea? How do I
patent my idea? Can I practice my idea?
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Boston University Slideshow Title Goes Here 4 Intellectual
Property A product of the intellect that has commercial value
American Heritage Dictionary Invention Innovation Original Work
Know-how Tribal Knowledge
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Boston University Slideshow Title Goes Here 5 Protection of
Intellectual Property Patents Copyright Trademark Trade Secret
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Boston University Slideshow Title Goes Here 6 Who owns what?
Inventorship Authorship Ownership
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Boston University Slideshow Title Goes Here 7 Why Patent an
Invention? Educate the public Stimulate continued innovation
Encourage investment and development Reduce investment risk Profit
from your ideas very difficult invention vs. innovation
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Boston University Slideshow Title Goes Here 8 Patents enshrined
in the Constitution Congress shall have the Power... to promote the
Progress of Science and useful Arts by securing for limited Times
to Authors and Inventors the exclusive Right to their respective
Writings and Discoveries. grants the holder the exclusive right to
practice their invention for a defined period in return for making
their knowledge public exclusive means to exclude a
constitutionally enshrined monopoly, and hence an inherent tension
with the free market system
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Boston University Slideshow Title Goes Here 9 What is
patentable? Anything that is: novel useful non-obvious adequately
described so that one ordinarily skilled in the art can reproduce
(Note: reduction-to-practice, actual vs constructive)
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Boston University Slideshow Title Goes Here 10 Types of Patent
Utility: a novel composition of matter (can include
micro-organisms, animals) a process or method an apparatus, machine
or device a use a method of doing business Plant an asexually
propagated plant Design
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Boston University Slideshow Title Goes Here 11 Unpatentable
Subject Matter Ideas Laws of Nature Scientific principles
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Boston University Slideshow Title Goes Here 12 Prior Art Not
just patents Any enabling description of an idea that is in the
public domain at any time prior to filing Note: up to 12 months
prior to filing in the USA Includes: Library submissions Theses
Sale of goods Grant Applications (public disclosure varies)
Presentations Meetings (unless in confidence)
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Boston University Slideshow Title Goes Here 13 Searching for
Prior Art Google Patents United States Patent Office
www.uspto.govwww.uspto.gov All issued US patents All Patent
Applications (18 months after filing date) World Intellectual
Property Organization www.wipo.orgwww.wipo.org Issued PCT patents
and PCT Gazette All Patent Applications (18 months after filing
date) Search by: keyword, inventor, assignee, classification etc.
Outsource search to law firm or search firm Interpret results (see
Opinion)
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Boston University Slideshow Title Goes Here 14 Steps in
Obtaining a Patent Submit invention disclosure Review of
patentability and marketability File application Prosecution
Initial office action -- restriction requirement Response Second
office action Response (Interview with examiner) Final office
action Notice of allowance File divisional application Parent
patent issues Foreign prosecution in parallel, 2-3 years
delayed
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Boston University Slideshow Title Goes Here 15 Timing &
Costs US only 2-3 years (maybe longer due to backlog) Provisional
application ($100-1,500) Initial filing $5K-$20K (avg. $9-$11K)
Response to office actions $5K Lifetime of patent $10-$30K
International 4-6 years Initial filing PCT $10-$15K National Filing
fees $50-150K Lifetime $100-$300K Depends on the number of
countries named
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Boston University Slideshow Title Goes Here Freedom to Operate
Can I practice my invention without the need to license other
patented inventions? Requires a more expansive (and expensive)
search Need to consider complementary technologies Work around
considerations How the product will be delivered
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Boston University Slideshow Title Goes Here Recap Idea
Invention Patent Product Market
