Introduction to Patent Law
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The document provides an introduction to patent law, including: 1) A patent is a legal document issued by a government that grants the right to prohibit others from making, using, or selling a claimed invention for a limited time in exchange for publicly disclosing the invention details. 2) The purpose of patent law is to promote science and useful arts by securing exclusive rights to authors and inventors for limited times. 3) Inventors seek patent protection for both offensive and defensive strategies related to investment, revenue, market protection, and preventing competitor patents.
![What is the purpose of patent law?
• The Constitution of The United States:
Art. I, Sec. 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.”](https://image.slidesharecdn.com/slideshare-introductiontopatentlawpresentation-150805024527-lva1-app6891/85/Introduction-to-Patent-Law-3-320.jpg)
Introduction to Patent Law
- 1. Copyright © 2015 by Cohen & Grigsby PC. All rights reserved. Introduction to Patent Law Michael E. Dukes / mdukes@cohenlaw.com linkedin.com/in/michaeledukes twitter.com/MichaelEDukes COHEN & GRIGSBY, P.C. 625 Liberty Avenue, Pittsburgh, PA 15222-3152 412-297-4900
- 2. What is a patent? • A patent is legal document issued by a government • A patent is granted for useful, novel, and non- obvious inventions • A patent grants the right to prohibit others from making, using, or selling the claimed invention for a limited period of time • The right is granted in exchange for disclosing the details of the invention to the public
- 3. What is the purpose of patent law? • The Constitution of The United States: Art. I, Sec. 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.”
- 4. Why seek patent protection? • Offensive strategy – Seek investment or acquisition – Seek revenue from making, using, selling, offering for sale, or importing the invention – Seek revenue from licensing the invention • Defensive strategy – Enforce against competitors to protect market share or deter infringement litigation – Create prior art to prevent competitors from obtaining a patent to the invention
- 5. United States Patent and Trademark Office • The USPTO is an agency in the U.S. Department of Commerce • The USPTO examines and adjudicates patent applications and grant patents on behalf of the federal government • The USPTO maintains records of patents and patent applications, including assignment records
- 6. Rights of Patent Ownership • Patents have the presumption of validity • Patents confer the right to exclude others for 20 years from the effective filing date from making, using, selling, and offering for sale within the United States, and importing into the United States • Patent can only be enforced in the country in which it is granted
- 7. The Patent Application Process 2-5 Yrs. Submit Invention Disclosure File Application Application Published 18 Months Patent Granted Patent Rights Provisional Rights
- 8. Types of Patent Applications • Provisional Application – Not examined by USPTO – Does not mature in a patent – Automatically expires after 1 year • Non-Provisional Application – The “standard” patent application that is examined by the USPTO, and can potentially issue as a patent
- 9. Events that Trigger Filing Application • Public disclosure of the invention • Offer to sell or sale of the invention • Actions by the inventor or employer can destroy patent rights – 1-year grace period in the United States – Absolute novelty in most foreign jurisdictions
- 10. When is it time to file an application?Conception ReductiontoPractice Prior Art if known before invention Publicationbyinventor Fileprovisional, non-provisional, orPCTapplication One year One year Prior art in US and prevents foreign filing if inventor published < 1 year before filing date Or, if no prior publication by inventor, prior art is measured from filing date Deadlinetofileforeign and/ornon-provisional applications
- 11. Why file a provisional application? • Establishes an invention’s effective filing date • Easier filing requirements – No claims or formal drawing figures • Maintained in confidence without publication • Can use the term “Patent Pending” • Can stack multiple provisional applications to cover improvements to the invention
- 12. Requirements for Patentability • The first inventor to file in the USPTO • The invention must be of statutory subject matter – Processes, machines, articles of manufacture, compositions of matter, or any new and useful improvement thereof • The invention must be useful, novel, and non- obvious • The invention must be described in a manner as required by law
- 13. Parts of a Patent Application • Title • Background • Summary • Brief Description of the Drawings • Detailed Description • Claims • Abstract • Drawings
- 14. Formal Documents • Oath or Declaration – States that inventor is an inventor of the subject matter claimed in the application • Assignment – Formally assigns all rights in the invention to the employer
- 15. Duty to Disclose (37 C.F.R. § 1.56) • Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the United States Patent and Trademark Office • Duty to disclose to the USPTO all information known to that individual to be material to patentability • Failure to fulfill duty can result in patent being unenforceable
- 16. Proceedings at the USPTO • Prosecution (examination) is a dynamic process • A patent examiner will examine the application to determine if its meets statutory requirements – Presumed to be an expert in the field • Possible outcomes – The application is rejected in an Office Action • File an argument, amendment, or appeal – The application is approved in a Notice of Allowance • A valid patent issues upon payment of a fee
- 17. Prosecution TimelineProsecution Timeline 17 Publication of application 18 months from filing Third party submissions 6 months after publication or before first Office action but before Notice of Allowance Patent issue date 9 months from issue Post-grant review Inter partes review Supplemental examination (Transitional Proceeding) Ex parte reexamination 1-2 office actions rejecting 1 or more claims based on any of the statutory requirements + RCE if needed Third party submissions for any of the post grant proceedings File application
- 18. § 102(a) Prior Art • Patents, printed publications, public uses, offers for sale, or other availability before the effective filing date • Patents or published applications having different inventorship that were filed before the effective filing date
- 19. § 102(b)(1) Prior Art Exceptions • Direct or indirect disclosures by an inventor not more than one year before the effective filing date • Disclosures by anyone occurring less than one year before the effective filing date and after a direct or indirect inventor disclosure
- 20. § 102(b)(2) Prior Art Exceptions • Disclosures in patents or applications that were obtained directly or indirectly from an inventor • Disclosures in patents or applications having effective filing dates after a direct or indirect inventor disclosure • Patents or applications that, not later than the effective filing date, were “owned by the same person or subject to an obligation of assignment to the same person”
- 21. Novelty Analysis • After determining what is prior art based on § 102, the art must be examined to see if the invention is anticipated – The prior art reference must include every element of the invention – The prior art reference must be enabling • The invention may still be obvious, but it is still novel enough to be patentable
- 22. § 103 Prior Art • The differences between the claimed invention and the prior art are such that the claimed invention would have been obvious to a person having ordinary skill in the art • Considers obviousness as of the “effective filing date” of the patent claims being considered rather than “at the time the invention was made.”
- 23. What is obvious? • Combining prior art elements according to known methods to achieve predictable results • Simple substitutions of one known element for another to obtain predictable results • Use of known techniques to improve similar devices (methods, or products) in the same way • Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results • “Obvious to try” to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success • Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or market forces if the variations would have been predictable to one of ordinary skill in the art.
- 24. §112, Description Requirements • A written description to show possession of the invention • A written description sufficient to enable a skilled artisan to make and use the invention • The best mode of carrying out the invention • Claims to point out and distinctly claim the invention
- 25. Things not to do before filing • Discuss the invention without a non-disclosure agreement – Beware discussing invention to potential employees or investors • Disclose the invention in a presentation • Disclose the invention in marketing materials – Beware of electronic publishing • Offer for sale or other commercial activity • Use the invention for its intended purpose
- 26. Good practice tips • Maintain confidentiality until application is filed – Employees, consultants, and investors must be advised adequately of, and be subject to, confidentiality • Conduct patent search and product search before filing application • File earlier in the invention process – Reduction to practice is not required • Utilize properly drafted provisional applications
- 27. Contact Information: Michael E. Dukes Cohen & Grigsby, P.C. 625 Liberty Avenue Pittsburgh, PA 15222-3152 T: (412) 297-4770 F: (412) 209-1873 mdukes@cohenlaw.com http://www.linkedin.com/in/michaeledukes http://twitter.com/MichaelEDukes