Patents 101 and Patent Prosecution Overview and Costs
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Patents 101 and Patent Prosecution Larry Baratta Partner and Patent Attorney, Electrical Practice Group Admitted in NC and GA, USPTO registered 1901 Roxborough Rd., Suite 250 Charlotte, NC 28211 www.worldpatents.com 704.790.3600 [email protected]
Patents 101 and Patent Prosecution Overview and Costs
Introduction to Patents in the U.S., the process, and costs as well as the value Intellectual Property brings to businesses.
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Patents 101 and Patent Prosecution Larry Baratta Partner and
Patent Attorney, Electrical Practice Group Admitted in NC and GA,
USPTO registered 1901 Roxborough Rd., Suite 250 Charlotte, NC 28211
www.worldpatents.com 704.790.3600 [email protected]
About Clements Bernard PLLC Charlotte, NC based Intellectual
Property Boutique Specializing in Electrical, Networking, Software,
Mechanical, Chemical, and Biotech Fields Focus Patent and Trademark
Prosecution and Licensing, Opinions, Transactional matters
Intellectual Property Litigation (Patents, Trademarks, Copyrights,
and Trade Secrets) Representative Clients Publicly-traded companies
Numerous venture funded start-ups U.S. Government Agencies
Entrepreneurial Individuals Value to Clients Reasonable, Fixed Fees
offering clients deterministic, fixed-fee pricing Individual focus
from seasoned attorneys Business minded Experience - Former Patent
Office Examiners in-house & Attorneys with in-house engineering
industry experience www.worldpatents.com
What is Intellectual Property (IP) Intangible Property Rights
including, for example, ideas, inventions and other innovations,
expression, indications of origin and confidential information
Patent Copyright Trademark Trade Secret (protected by State law)
Almost all aspects of technology, innovation, and/or works of
authorship (including software) or art are addressable as IP IP
rights arises from Operation of Law In U.S., Constitutional Basis
Article I, Section 8, Clause 8: 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
Patents, Copyrights and Trademarks Inventions Machines,
methods, composition of matter, improvements Any name, symbol,
device or combination that -identifies source -distinguishes goods
and services from another Original expression Fixed in tangible
medium Not novel, obvious, not useful (no utility) Functional Does
not exclusively identify Descriptive Ideas, Facts, Methods and
systems (patents) Idea expression is protected, not idea When
patent issues From use; Protection can last forever and can also
disappear since protection is tied to use From time fixed in a
tangible medium Fall within scope of a patent claim Likelihood of
confusion Copying with Access and Substantial Similarity Patents
Trademarks Copyrights Type Not Protected When Protected
Infringement
What is a Patent? In the U.S., Granted by the U.S. Patent &
Trademark Office (USPTO) Part of the Commerce Department Protects:
Manufactured items, Equipment, Processes, Compositions and
Improvements to the above Rights: Right to exclude others from
making, using, offering for sale, selling and/or importing what is
claimed A negative right of exclusion only Term: 20 Years From
Filing or priority date extensions available based on PTO delay
Territory: United States and its territories Rights Arise: Upon
issuance of a patent, arising from a patent application filed prior
to public use, disclosure or sale
Sample Patent U.S. Patent No. 6,469 to Abraham Lincoln, 1849
The 16th President is the only President to receive a U.S.
Patent
Patent Claims Section in the patent or application that defines
the legal scope of protection granted by the patent Parts Preamble
recites the class of the invention and optionally primary purpose;
e.g. A system, A method, A network for providing Transitional
phrases "comprising", "containing" and "including" are most often
used to mean "having at least the following elements..." and are
therefore open (inclusive) and do not exclude additional limitation
"consisting of" and "consisting essentially of" are more limiting,
as they mean "having all and only" or "virtually only" and are
therefore closed (exclusive) Elements and/or Steps Defines the
invention and includes interaction between the elements. A system,
comprising: X, Y, and Z X, Y, and Z are elements A method,
comprising: A, B, and C A, B, and C are steps Limitations Clauses
that define, i.e. limit, the elements and/or steps wherein X is
communicatively coupled to Y and Z for control thereof
Patentable Subjects Systems, Devices & Other Manufactured
Items Such as manufactured equipment, e.g., electronic devices or
circuits, semiconductors, systems configured to perform a function,
networks, components, etc. Processes or Methods Such as
manufacturing processes or methods of doing somethingmay be
implemented as software or as a business method
Materials/Composition of Matter Chemical, Genetics, drugs,
compounds, etc.
Patentability Requirements Novelty Does not exist in the prior
art; Not previously disclosed OK if Modification of an existing
product/process, or use of something old in new/different way
Usefulness Utility - Performs a useful function, does it work? An
easy requirement to meet in mechanical and electrical arts.
Sometimes difficult in chemical and life sciences I have a new
compound, I just dont know what it does yet therefore, no utility
Non-obviousness A knowledgeable but relatively unimaginative person
working in your field would not have been led directly to the
invention in light of the available information at the time of
invention. This is difficult to describe in general, as lawyers the
focus on non-obviousness is generally based on prior case law for
guidance. Is there a suggestion/motivation/teaching to combine
existing knowledge (i.e., one or more existing pieces of art) to
solve the problem your invention solves? This is the current legal
test, and it allows the Patent Office to reject an invention as
obvious if the elements and limitations of the invention can be
found in one or more references, and if there is a reason, i.e.
suggestion, to combine them. A rejection under obviousness
generally involves combining one or more references to meet all of
the limitations and elements of the claimed invention
Patentability Requirements Novelty (35 U.S.C. 102) Generally
applies to all technology areas Utility (35 U.S.C. 101) Typically
an issue in chemical, biological, and pharmaceutical arts I have
this new compound, I just dont know what it does yet i.e. must have
a practical application for patentability Non-Obviousness (35
U.S.C. 103) This is a typical rejection in the
Electrical/Software/Mechanical arts Two or more separate references
combined show all elements of the invention Must show distinction
over these references or why these references cannot be combined in
light of the claimed invention Subject Matter (35 U.S.C. 101) An
issue in the Software arts In light of court precedent,
software-related inventions must be tied to a particular machine or
perform a physical transformation of a physical device
Inventor The person(s) who first conceived the invention Joint
inventors - Each inventor must have contributed to the subject
matter of at least one claim Non-Inventors: Persons who implement
the ideas of others Persons who have obtained the entire idea of an
invention from another are not inventors Persons who suggest
concepts without contributing to the means for carrying out the
suggestion (Wouldnt it be nice if.)
When to file a Patent Application You Develop, Improve, or Do,
Something New or Different!! You solved a problem or developed
something new and useful Your solution for the problem is not the
same as anothers solution for the same problem **Note that use of
something known in a new, non-obvious, and different way or to
solve another problem can be patentable!!!**
What to Disclose General Has this invention been discussed with
others: Inside or outside of your company? With Whom? When? Was
there a Non-Disclosure Agreement in place? Have you done a search?
Key Words for Database Searching Is this Invention relevant to a
Standards activity? Describe the Invention Tell a Story - start at
high level, then work down into details, including: What is the
Invention about? What Problem does it solve? What other Solutions
have been tried or exist, and what were their shortcomings? What
are the Specific Elements or Steps that solved the problem? What
are the values of the Invention Disclosure Submission Form
Patentability Search Search of U.S. and Foreign patent
applications and issued patents and non-patent literature
(journals, white papers, etc.) Objectives To ascertain whether the
invention has been patented or disclosed previously and, thus,
would be unpatentable; To avoid filing a patent application and
having it summarily rejected by the Patent Office because of an
identical or substantially similar invention which would render
your invention not new or not non- obvious; and To draft a better
patent application by emphasizing those features of the invention
not turned up in the search. Duty to Disclose known references
which predate your application to the Patent Office However, no
affirmative duty to perform a search Provide known closely related
references with invention disclosure
Filing Process 1 Attorney prepares a draft Application Inventor
Reviews & Comments Application is Finalized Inventor Reviews
& Signs (declaration/POA and maybe an Assignment) Application
is Filed Inventors Help Sought In Responding to Office Actions
During Prosecution To Issuance Foreign Filing? Invention Disclosure
to Attorney 2 3 4 5 6 7 8 Disclosure Conference with Inventors and
Attorney
Application Process at the Patent Office Application Amendments
RCE/Appeals Examination Allowance Office Action Issue Rejection of
one or more claimsAllowance of all claims Amendment of Claims to
overcome rejections Arguments to counter rejections RCE if the
Office Action was Final to continue examination Potential Appeal to
the BPAI after a Final Office Action if desired 1st Office Action
time can significantly vary on the order of 1-5 years Pay Issue
Fees
Provisional Patent Application A provisional application is a
simplified filing whose purpose is to preserve ones right to file a
utility patent within one year of the filing of the provisional
application A provisional application requires the filing only of a
specification adequately describing the invention, and drawings
where necessary for the understanding of the invention. It is
important that a provisional application describe the invention
fully, as the provisional filing date is only effective for subject
matter disclosed in the provisional application. A provisional
application cannot mature into a patent, it is not examined and it
cannot claim priority in an earlier application. A provisional
application is kept in confidence by the Patent Office. A
provisional application is, however, a regular national filing that
starts the Paris Convention priority year (discussed below). A
provisional application will automatically go abandoned by law one
year after filing. The provisional application has several
important benefits. It places domestic applicants on an even
footing with foreign applicants because the filing of a provisional
application does not trigger the start of the 20-year patent term.
It has minimal legal and formal requirements. The provisional
application provides a mechanism whereby applicants can quickly and
relatively inexpensively establish an early effective filing date
in a patent application which establishes a constructive reduction
to practice for any invention described in the provisional
application. The filing of a provisional application also provides
up to twelve months to further develop the invention, determine
marketability, acquire funding or capital, seek licensing or seek
manufacturing.
Patent Lifecycle and Costs End of Patent Term Invention
Disclosure Submission $4-6K $1.2K $1.5K $1.2K $0.9K* $0.5K* $1.3K*
$2.0K* Patent Application Preparation and Filing Patent Application
Prosecution Patent Issue Fee Patent Maintenance Fee Patent
Maintenance Fee Patent Maintenance Fee ~$15.0K Approximate fees *
Small Entity Fees (