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Practical Aspects of Patenting UNC OTD Seminar December 4, 2008 Jeff Wilson

Practical Aspects of Patenting UNC OTD Seminar December 4, 2008 Jeff Wilson Jenkins, Wilson, Taylor, & Hunt Patent Attorneys. Overview. Some patent basics Patent applications – types & anatomy The patent process Strategies and pitfalls for patent drafting and prosecution.

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Practical Aspects of Patenting UNC OTD Seminar December 4, 2008 Jeff Wilson

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  1. Practical Aspects of Patenting UNC OTD Seminar December 4, 2008 Jeff Wilson Jenkins, Wilson, Taylor, & Hunt Patent Attorneys

  2. Overview • Some patent basics • Patent applications – types & • anatomy • The patent process • Strategies and pitfalls for patent drafting and prosecution

  3. "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

  4. Patent Basics

  5. University Ownership of Patents • Bayh-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

  6. 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

  7. 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

  8. 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*

  9. 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

  10. 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

  11. Invention Reduction to Practice Diligence Conception Reduction to Practice: • Actual reduction to practice • File patent application = Constructive reduction to practice • Documentation of Invention Process: • Laboratory Notebooks • Invention Disclosure Forms

  12. 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

  13. 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)

  14. 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

  15. Patent Applications Types & Anatomy

  16. U.S. Utility Patent Application • Description (Title) • Field of Invention • Abstract • Background • Summary • Detailed Description • Examples • Drawings (or Figures) • Claims

  17. 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

  18. 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

  19. 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)

  20. Patent Application Process At UNC

  21. Reporting Innovations The 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 INNOVATION University 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 REPORT Researchers 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.

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

  23. 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

  24. 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

  25. 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

  26. 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

  27. 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

  28. Patent Prosecution Steps (continued) • Patent Office “allows” application • some or all claims • Pay issue fee • Patent is granted • Periodic maintenance fees required

  29. 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

  30. Strategies for Patent Drafting and Prosecution

  31. Drafting patent applications -it is important to: • 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

  32. 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

  33. Thank You! Jeff Wilson jwilson@jwth.com

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