Everything you wanted to know about patents but were afraid to ask Nusrat Khaleeli, Ph.D., J.D.

Patent Attorney, Khala Consultants

Introduction
Answering your patent questions Covering patent basics Patent rights Pre-filing Preparing application Prosecuting application Not specific legal advice consult your attorney

What rights does a patent give you?

Exclude others from making, using, selling or importing, not a right to practice
Cell phone/chip example

Get monopoly for disclosure Protect your market

Cover product, design around and block competitors technology

From Patent to $$$$$

How to make money on patents

Patent litigation - 1% patents Patents represent company value M&A Licensing Using patents as collateral to raise $$

Should I patent my invention or keep it trade secret?

Examples of trade secret
Coca Cola formula Customer list

Definition of trade secret

Information technical, business that has economic value from not being generally known reasonable efforts at secrecy

Should I patent my invention or keep it trade secret?

Keep Trade Secret
Invention not patentable

Patent it because..
Hard to keep secret

Want to keep secret now

Want to keep secret forever

Danger of reverse engineering

Danger of independent invention

When does patent reform take effect?

Thirty seven sections with multiple provisions Enacted: 9/16/2011 Effective: upon enactment or 1 y or 1.5 y
Ex: First-inventor-to-file effective 3/16/2013

After patent reform, do I still need to keep an up-to-date, cross-signed lab notebook?
Yes Why keep lab notebook?
Establish DOI in interference Swear behind prior art First-inventor-to-file effective 3/16/2013 Derivation proceedings/civil action

Inventor writes up, non-inventor witnesses

What is the impact of reform on small companies working with big companies, even if under NDA?

Can big company file a patent application based on small company disclosure to them? Under current first-to-file system 102(f) to invalidate patent in civil action or prove first DOI in interference Under first-inventor-to-file system effective 3/16/2013, derivation proceedings are available

If I think I have a patentable idea, what are the steps I should take in the right sequence?

Detail it in lab notebook including enablement and best mode ?Prior art search? Prototype not necessary
predictable arts e.g. mechanical unpredictable arts e.g. chemical

Need diligence, for now No disclosure until filing or under NDA

When should I get a patent attorney involved?

What can I reasonably do myself & when do I need a patent attorney?

Detailed description/drawings Enablement & best mode ?Prototype? What works, what doesnt Whats important, what isnt Difference from prior art Advantages based on differences Use an attorney for:
Patentability search Prepare, file & prosecute patent application

Remember
The patent attorney wants to help you Most effective when the attorney is involved early in the development process

Patentability Search. A good idea?

Search not required Looking for prior art patents, literature Formulate claim then do patent search Even experienced attorneys use professional search services Remember! Duty of disclosure to the USPTO And careful! Searching may be against company policy.

What must the patent application contain?

Description of the invention At least one claim An abstract Any necessary drawings, computer program text, sequence listing

What should a provisional application contain? Can an engineer really file one without a lawyer?
Like full application
But no claims necessary

Priority date is for claimed invention that is sufficiently supported by description Thought to postpone cost but may cost you Engineer should seek help

At the USPTO

File Patent Application with the U.S. Patent Office

Application arrives at the Office of Initial Patent Examination

Office of Initial Patent Examination checks the format of the application

Application complete? Yes

No

Office of Initial Patent Examination requests that Applicant complete the application

Applicant responds to the request

Application is assigned a serial number and is sent to an art unit

More than one invention claimed in the application?

Yes

Examiner requests that the Applicant restrict the application to one claimed invention?

No Art unit assigns the application to an examiner The examiner reviews the application for patentability Applicant selects invention to be examined by the examiner

Examiner makes sure that there is only one claimed invention in the application

No

Claimed invention patentable??

Yes

Patent examiner allows claimed invention and requests fees

Applicant pays issue fee

Examiner sends applicant a non-final rejection Yes Applicant amends claims or presents arguments to the examiner

Patent issued as granted patent

Examiner accepts amendments or arguments?

No

Examiner sends final rejection

Applicant abandons application, appeals or RCE etc

Filing fees and maintenance fees

Fee information is available on the U.S.P.T.O. website
Fee ($) Small Entity ($) Provisional 250 125

Non-provisional
Search

380
620

190
310 565

Maintenance - 3.5 y 1,130

How common is it for USPTO to outright approve or deny a patent?

How common is it for USPTO to outright approve or deny a utility application? 10% "first action allowance 50% either approved or abandoned following first office action 40% have a longer road of final OA, RCE, Appeal.

Typical rejections
Novelty (35 U.S.C. 101, 102) Obviousness (35 U.S.C. 103) Enablement (35 U.S.C. 112) Definiteness (35 U.S.C. 112)

What is a patentable invention?

Patentable subject matter?

Patentable
Anything under the sun that is made by man Process Machine Article of manufacture or Composition of matter

Not patentable
Laws of nature Physical phenomena Abstract ideas

If I dont file my patent application immediately, what kinds of events do I need to worry about?

If I dont file my patent application immediately, what kinds of events do I need to worry about?

Loss of novelty 35 U.S.C. 102 Obviousness 35 U.S.C. 103 First-inventor-to-file changes things

What are common mistakes people make that create problems later on?
How much time did you say we have? Ownership issues such as inventorship, coinventor, assignment, joint development agreement etc. Delays lead to novelty and obviousness issues
Public disclosure by inventor (trade shows, posters, publications) > 1 y before U.S. filing Offer an invention (that is ready for patenting) for sale > 1 y before U.S. filing

File patents early and often

Chester Carlson invented Photocopying Revolution in printing 1938: First patent on Electron Photography filed 1940: Patent issued 1944: First received funding 1958: First commercial xerographic machine Four patents issued by 1944 and twenty issued by 1958

Could it be too early?

Strike a balance - claims must be novel and nonobvious but supported by sufficient description 35 U.S.C. 112: written description, enablement, best mode 35 U.S.C. 101/102: novel 35 U.S.C. 103: nonobvious

Loss of Novelty

What is the novelty requirement?

If every feature of your claim is contained in single prior art reference/event then your claim is not novel 35 U.S.C. 102 some prior art events
Known or used by others Patented or printed publication Public use or offer for sale

In US, have 1 y grace period Ex-US absolute novelty requirement

102 analysis
Where did the event occur? When did the event occur? Did the event occur more than 1 year before filing of patent application? If not more than 1 year, does the applicant have the earlier date of invention? Do the claims read on the prior art?

Obviousness

Why is the statutory requirement for nonobviousness the most nebulous requirement in patent law?

Nebulous? Flexible? Novelty is clear-cut - an earlier metal blade anticipates a later metal blade Hotchkiss 1851- invalidated patent on doorknob made from new material Nonobviousness intended to filter out inventions that a minor variations, improvements, combinations etc. of existing art.

Obviousness rejection and how to respond

Obviousness: Examiner finds the difference between the claimed invention and the prior art would have been obvious to one of ordinary skill in the art Pre-KSR (2007) - TSM controlled Post-KSR examiner must provide reason and must support reason with factual findings ((see A-G Fed. Reg. Vol 72, No. 195 p. 57526 (2007) and Fed. Reg. vol. 75 No. 169, p. 53643 (2010))

Obviousness Rejections
A. Combine prior art elements to according to known methods to yield predictable results B. Substitute of one known element for another to yield predictable results C. Use a known technique to improve similar methods or products in the same way D. Apply a known technique to a known method or product ready for improvement to yield predictable results E. Obvious to try choosing from a finite number of identified predictable solutions with a reasonable expectation of success F. Known work in one field may prompt its use in the same or different field based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art G. TSM in prior art would lead person of ordinary skill in the art to modify or combine references

Rebuttal Arguments
Check if Examiner properly provided rationale and facts as required by Examination Guidelines Some standard rebuttal arguments: No reasonable expectation of success Teaching away Unexpected results Hindsight reconstruction

How different does a new product need to be from an existing product to patent it?

How different does a new product need to be from an existing product to patent it?
Statutory double patenting rejection Nonstatutory obviousness-type double patenting rejection Difference between the new and existing product must not be obvious to one of ordinary skill in the art

Shouldnt chemical reactions described in patents be reproducible without development work?

Enablement - the disclosure in the specification be sufficiently clear and concise as to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. USPTO can not check If experimentation is undue then can invalidate during patent infringement litigation

What is the process for getting ex-US patents?

Two possible approaches:

File national patent applications File a single PCT patent application designating various (out of 144) countries Benefits of PCT: postpone costs and selection of countries Where to file? File to keep competitors out of those countries where you plan to market your invention and where competitors may manufacture your invention

Priority date or Effective filing date?

U.S. filing date Earlier than U.S. filing date
Nonprovisional claims priority from provisional Continuation or divisional application U.S. application claims priority from foreign counterpart under the Paris Convention National-phase application claims priority from PCT patent application

What are good (free/affordable) resources and how do I use them to get the most out of them?

Free databases for patent searching Useful books:

Patent it yourself by David Pressman Not so obvious: an introduction to patent law and strategy by Jeff Schox

Thank you for your attention