04-A Functional Perspective-3

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Intellectual Property Creation & Management for Emerging Growth Technology Companies Patents & Trade Secrets: A Functional Perspective

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Intellectual Property Creation & Management for Emerging Growth Technology Companies Patents & Trade Secrets: A Functional Perspective

Patents : 

Patents Subject Matter Scope of Protection Duration of Protection Mechanics of Patent Protection Ownership Infringement

Under Article I, Section 8, Clause 8 of the U.S. Constitution : 

Under Article I, Section 8, Clause 8 of the U.S. Constitution “The Congress shall have Power…To promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

Patents : 

Patents A patent is granted to individuals who invent new and useful inventions. During a patent’s limited term, its owner has the right to exclude others from making, using, selling, offering for sale or importing the patented invention. In return for receiving the right to exclude, the inventor must fully disclose the details of the invention to the public.

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Utility Patents: Processes, machines, manufactures, composition of matter. Plant Patents: Asexually reproduced plants. Design Patents: Ornamental designs. Patentable Subject Matter

Provisional Applications : 

Provisional Applications Do not require claims Secure a filing date for a later-filed utility application if the disclosure of the provisional application is enabling for what is claimed later in the utility application Must be “converted” to a utility application within one year

Utility Patents : 

Utility Patents Patentability of Inventions: First to invent Utility Novel Non-obvious

Conditions for Patentability : 

Conditions for Patentability Novelty "Does a single item of prior art contain each element of a claim?"  Obviousness “Would each element in a claim be obvious to a person of ordinary skill in the art regarding one or more items of prior art?“ Claim-by-claim analysis

Patents : 

Patents What cannot be patented? Inoperative device Inventions already known in the prior art Laws of Nature Mathematical formulas Printed material

Design Patents : 

Design Patents What is patentable? New, original, nonobvious ornamental designs for articles of manufacture What is unpatentable? Unornamented functional features

Plant Patents : 

Plant Patents Asexually reproduced, distinct and new varieties of plants, including cultivated spores, mutants, hybrids, and newly found seedlings, other than tuber propagated plants or plants found in an uncultivated state.

Patent Rights : 

Patent Rights Right to exclude others from: [making ] [using ] claimed invention [offering for sale ] throughout the U.S. [selling ] Importing products made by a patented process (35 U.S.C. 154(a))

Patent Time Periods : 

Patent Time Periods Utility Patents: Average time from filing to issuance is 3 years Term – 20 years from first effective filing date Used to be 17 years from issuance (June 8, 1995) Design Patents: Average time from filing to issuance is 1 year Term – 14 years from the date of grant

Prior Art Barring Patent Protection : 

Prior Art Barring Patent Protection 1 Year Before Filing Of Application   (1) [patented] World [printed publication]   (2) public use U.S.   (3) on sale U.S.

Prior Art Barring Patent Protection (cont.) : 

Prior Art Barring Patent Protection (cont.) Before Date Of Invention   (1) [patented] World [printed publication]  (2) [known] by others U.S. [used ]  (3) made by others U.S.

Patent Cooperation Treaty “PCT” Member Countries : 

Patent Cooperation Treaty “PCT” Member Countries

Patents : 

Patents Important Dates: Earliest date of “conception” Earliest date of “reduction to practice” Date of first public use Date of first publication Date of first offer for sale Date of first sale

“Patent pending” & “Patent applied for…” : 

“Patent pending” & “Patent applied for…” These phrases may be used to inform the public that a patent application is on file. There are fines for using the terms falsely.

Why do a patent search? : 

Why do a patent search? Has my invention already been patented? Look at sample patents to help prepare your application Get valuable technical information from similar patents Help identify the novel features of your invention Search patent applications to find “pending” patents

Requirements for Securing a Patent : 

Requirements for Securing a Patent Must be novel – new, not made or done “before”; before defined by “prior art” Prior art is public information, usually printed articles or patents, but it can be posters, abstracts, on-line, grants (when?) Determining novelty is an element-by-element analysis with the claimed invention What about talks? To colleagues? To prospective licensees? To the press?

Requirements for Securing a Patent : 

Requirements for Securing a Patent Must be nonobvious – not a variation that would be readily suggested to “one of ordinary skill in the art”; this means that even though the prior art is different, the differences are too trivial to merit a patent May rely on one or more pieces of prior art Must teach each element, provide motiva-tion to modify and a likelihood of success

Requirements for Patentability : 

Requirements for Patentability Patentable subject matter (35 U.S.C. §101) Written description (35 U.S.C. §112)   Enabling disclosure (35 U.S.C. §112)   Best mode (35 U.S.C. §112)

Patent Contents : 

Patent Contents Specification    Drawings   1 or more claims

Enablement : 

Enablement Disclosure must:   allow a person of ordinary skill in the art   to make and use the invention  without undue experimentation (35 U.S.C. §112)

Specification : 

Specification A written description of the invention in clear and concise terms. The Specification must be enabling, that is, describe the invention in such a way as to permit one skilled in the art to make and use the invention. The Specification must disclose the best mode of making and using the invention. There can be no material “secrets” kept from a patent application.

Specification (cont’d) : 

Specification (cont’d) Should also include reasonable alternatives to the preferred embodiments in order to avoid any inference that the invention is limited to the preferred embodiments.

Claims : 

Claims Must “particularly point out” and “distinctly claim” the subject matter of the invention. Independent claim: A claim which does not reference any other claim. Dependent claim: A claim which references an independent claim or another dependent claim. Adds subject matter (limitations) to the preceding claim(s).

Patent Costs : 

Patent Costs Cost to obtain a U.S. patent - $20,000 range is typically $10,000 to $40,000 Cost to enforce (or defend against) a U.S. patent - $2,000,000 range usually depends upon amount in controversy < $1 million - $350,000 to $750,000 $1 million to $25 million - $1,000,000 to $3,000,000 > $25 million - $2,300,000 to $6,000,000

Procurement Strategy : 

Procurement Strategy Internal Review File U.S. Application U.S. Patent Office Action U.S. Issuance Trade Secret Publish Develop Further Patent Search Response/Amendment File PCT /Foreign Applications 1 Yr. Foreign Prosecution Proceeds 30 mos. from U.S. filing date about 2 – 3 years

Patent Ownership : 

Patent Ownership Unless assigned, owned by the inventor(s) conception of the claimed subject matter reduction to practice (actual or constructive) Unless assigned, owned by all inventors U.S. applications filed in the names of the inventors No patent rights before patent issues patent pending? published applications? provisional patent applications?

Inventorship : 

Inventorship In the United States, the patent application must be filed in the name of the inventor(s). Inventorship is purely a legal question, and is determined by an examination of who contributed creatively to what is being claimed. Inventorship cannot be dictated by politics, funding, ego, or even goodwill.

Inventorship (cont’d) : 

Inventorship (cont’d) An inventor can be anyone, and must be everyone, who contributes creatively to the conception or reduction to practice of the invention. Multiple inventors are referred to as JOINT INVENTORS.

Joint Inventors : 

Joint Inventors Inventive Contribution. Can be joint inventors, even though did not make same type or amount of inventive contribution. (35 U.S.C. 116)    One Claim Is Enough. Inventor of one claim in patent is an inventor for whole patent.   License To Steal. Any joint inventor is free to make, use, sell or license the invention without accounting to other joint inventors.

Non-Infringement Patent Disputes : 

Non-Infringement Patent Disputes Defining an invention – conception v. reduction to practice Inventorship disputes – defining inventorship is difficult and sometimes quite volatile Interferences – who was the first to invent? Ownership – sponsored research agreements and mobile inventors Most of these turn on who did what & when

Hypothetical Claim – Pencil : 

Hypothetical Claim – Pencil Original Invention    I CLAIM:   1. An writing instrument, comprising:  (a) a base;  (b) a first tip attached to the base; and  (c) the first tip being constructed of a first material leaving a mark on a surface when the first tip is rubbed upon the surface.

Hypothetical Claim – Pencil : 

Improvement on Invention   I CLAIM:   1. An instrument for writing, comprising: a base; a first tip attached to the base; the first tip being constructed of a first material leaving a mark on a surface when the first tip is rubbed upon the surface. a second tip attached to the base; and the second tip being constructed of a second material tending to remove the mark when the second tip is rubbed against the mark. Hypothetical Claim – Pencil

Trade Secrets - US : 

Trade Secrets - US Information; Not generally known; Used in one's business; Provides opportunity to obtain advantage; What does it cover? Formula, device or compilation of information, manufacturing or business process Requisites Novelty and concreteness Not generally known Secrecy Value in business

Trade Secrets Examples : 

Trade Secrets Examples Marketing Research methodology. Advertising plan Product launch schedule Manufacturing process Analytical methodology Software Confidentiality and Non-disclosure

Comparison of Legal Standards : 

Comparison of Legal Standards

Physical Controls : 

Physical Controls Limited Access to Facilities Limited Access to Documents Security Systems Document Retention/Destruction Policies Employee Termination Policies

System Controls : 

System Controls Firewalls Database backups Passwords Network guidelines on and off line documents Log-in requirements

Misappropriation : 

By “wrongful means” -- theft, fraud, etc. By disclosing or using another’s trade secret when you know or should know that: it is held under an obligation of confidentiality; it was obtained from someone who held it under an express or implied obligation of confidentiality; or it was obtained by wrongful means. Misappropriation

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Intellectual Property Creation & Management for Emerging Growth Technology Companies Patents & Trade Secrets: A Functional Perspective

www.HULSEYIPLaw.com : 

www.HULSEYIPLaw.com