kjg . jenkins wilson taylor hunt patent attorneys & practical aspects of patenting unc otd...

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JENKINS WILSON TAYLOR HUNTpatent attorneys

& Practical Aspects of

Patenting

UNC OTD Seminar

December 4, 2008

Jeff WilsonJenkins, Wilson, Taylor, &

HuntPatent Attorneys

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• Some patent basics• Patent applications – types &

anatomy• The patent process • Strategies and pitfalls for patent drafting and prosecution

Overview

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"If a man can write a better book, preach a better sermon, or make a better mousetrap than his neighbor, though he builds his house in the woods, the world will make a beaten path to his door." Ralph Waldo Emerson – 1871

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Patent Basics

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University Ownership of

PatentsBayh-Dole Act - 1980• Created uniform patent policy among federal agencies funding research

• Allows small businesses and non-profits, including universities, to retain title to federally funded inventions

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• In exchange for a full disclosure of the invention, the patent owner (UNC) obtains a limited legal monopoly – 20 years from filing (provided maintained)

• When a patent expires, it enters the public domain

If federally funded,• The university patent can be licensed, but typically not sold• Federal government receives worldwide license

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The Rights of the Patentee

• A patentee has the legal right to EXCLUDE OTHERS from making, using, selling, offering for sale, or importing the patented invention

• Patent Infringement = Unauthorized making, using, selling, offering for sale, or importing something covered by the claims of the patent

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What Subject Matter Is

Patentable?The big four - new and useful…• Process• Machine• Article of Manufacture• Composition of Matter

• Plant Patents • Design Patents• Methods of Doing Business*

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Prior Art• All information available prior to the date of filing of the patent application against which the patentability of the invention will be determined

• Can be your own technology

•   DUTY TO DISCLOSE “MATERIAL”

PRIOR ART

• includes duty to disclose materials

from related applications

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Inventorship• “Inventorship” is a higher standard than “authorship”• Each “inventor” must make some

contribution to the conception of the invention• supplying background data or general information is typically not enough• merely following instructions of another in performing experiments is typically not enough

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Conception

Reduction to Practice

Reduction to Practice: Actual reduction to practice File patent application = Constructive reduction to practice

Documentation of Invention Process: Laboratory Notebooks Invention Disclosure Forms

Diligence

Invention

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Why is Inventorship Important?• Once a patent issues, the

inventor identification is presumed to be correct

• Inventorship correction requires inadvertent error and no deceptive intent

• A patent failing to list all of the true

inventors can be invalidated

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Statutory Requirements for

Patentability• To be patented, an invention must meet three basic statutory criteria

An invention must be:• Useful (35 U.S.C. §101)• Novel (35 U.S.C. §102)• Non-obvious (35 U.S.C. §103)

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Potential Bar Activities

A US patent can be barred if any of these events occur more than a year before filing:

• The invention is patented or described in a printed publication anywhere in the world

• The invention is in public use in the US

• The invention is on sale in the US

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Patent

Applications

Types &

Anatomy

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U.S. Utility Patent Application

• Description (Title)• Field of Invention• Abstract• Background

• Summary • Detailed Description• Examples• Drawings (or Figures)• Claims

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Other types of patent applications

• United States• Provisional: expire after one year• Continuation: same specification, new

claims• Divisional: same specification, divide

claims (different inventions)• Continuation-in-Part: adds new

material*Child applications must be filed before parent case issues or is abandoned

• International• PCT - mechanism for foreign filing

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Provisional Patent Application

• Does not require many formalities• e.g., no claims required• Is not examined by the USPTO• Does not mature into a patent• Goes abandoned after 12 months of filing date • Provides an early priority date• Can file any number of provisional

applications

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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 to the preceding claim(s)

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Patent Application

Process At UNC

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Reporting InnovationsThe process begins with an initial disclosure of a new idea or research result to OTD via a Report of Innovation or “ROI”. Through this process, OTD can establish what has been created and by whom, what form of intellectual property is involved, and what obligations may already be in place for this innovation and who has ownership interests in the innovation.

HOW TO REPORT AN INVENTION OR INNOVATIONUniversity researchers who, either alone or in association with others, make an invention in which the University has or may have an interest, must complete a Report of Innovation (ROI) via BLUE, OTD’s web-based information management system. To access this electronic submission process directly please go to: https://cfx.research.unc.edu/blue/index.cfm Within BLUE researchers may enter an ROI, complete signatures and submit the ROI and view the status of all of their technologies and associated patents and agreements under management at OTD.

WHAT TO REPORTResearchers should report all new ideas they think might be considered an invention or might have a use outside the University as well as research results such as new software, cell lines, research tools, or unexpected results from externally funded research projects.

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Invention Development Stage Timing of Submission of Disclosure

Innovation: What to do Premature

Conception: How to do it Best

Reduction to Practice: Make it work Very Good

Preparation of a Paper: Describe it Good

Submission of a Paper or Abstract Poor: some rights may be lost at this point

Immediately Prior to Public Disclosure Very Poor: may not have time to prepare a useful patent application

Post-Publication or Disclosure Very Poor: foreign patent rights lost

http://research.unc.edu/otd/reportinginnovations.php

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Pre-Application Steps

• Contact OTD and discuss

invention

• Submit Report of Innovation

(ROI)

• Meeting with OTD (patent,

license, etc.)

• Instructions to patent attorney

to

prepare patent application

• Possible patent search

• Possible non-disclosure

agreement

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Patent Application Preparation Steps

• Meeting with patent attorney• discuss ROI• discuss invention development and disclosure (if any)• plan and execute protection strategy• file urgent patent application(s)• provisional, utility, and/or PCT International Application

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Patent Application Filing Formalities

• Sign and file inventorship declaration• not required for provisionals

• Sign and record patent assignment• We can submit these AFTER filing the application

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Patent Prosecution Steps (=Post Filing)

• Await formal examination by Patent Office (can be 1-3 years)• Patent Office might give a Restriction Requirement• pick set of claims to pursue and decide whether to file additional application(s) on remaining claims

• Patent application publishes at 18 months from earliest effective filing date

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Patent Prosecution Steps (continued)

• Patent Office examines application (and conducts search)

• Written Official Action (OA)• Almost always is a rejection of some/all claims, so be prepared and not apoplectic!

• Decide strategy and respond in writing to OA

• can amend and add new claims• can argue against prior art• can interview examiner• cannot add new matter

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Patent Prosecution Steps (continued)

• Patent Office “allows” application• some or all claims

• Pay issue fee• Patent is granted• Periodic maintenance fees required

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Payment of Fees and Entity Status

 • Must accurately represent entity/fee status in paying fees (before and after issuance) • Failure to do so coupled with a finding of intent to deceive can render the patent unenforceable

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Strategies for

Patent Drafting

and Prosecution

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• Understand what the invention is and

differences between the invention and the

closest prior art• Find the right words, terminology and sentences to describe the invention • Imagine how competitors could avoid the claimed invention but still take advantage of its teachings • Include everything you may need in

patent application to support all claims filed or envisioned

Drafting patent applications -it is

important to:

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Prosecution Pitfalls

• Keep good invention records• Timely disclose invention to OTD before

rights are lost• Properly identify all inventors – even in

subsequent applications• Carefully craft claims (attorney and

inventors)• scope of protection• unclaimed but disclosed subject matter

• Be careful of arguments made in prosecution• Disclose prior art

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Thank You!Jeff Wilson

jwilson@jwth.com

US00135245Improvements in brewing beer and ale (Pasteurization)

Louis Pasteur (1873)