March 30, 2012
“Patenting 101” Workshop Sponsored by
Commercial Ventures & Intellectual Property (CVIP)
and
Research Development (RD)
University of Massachusetts Amherst
To Contact CVIP: Phone (413)-545-3606
Email: cvip@research.umass.edu
Web: http://www.umass.edu/research/technology-transfer
Patenting 101
Patent Law for Researchers and
Innovators
Overview
• Patents Contrasted with Other Types of Intellectual
Property
• Obtaining a Patent
– Invention
– Requirements to Obtain a Patent
– Changes resulting from the 2011 America Invents Act (AIA)
• Asserting Your Own Patent and Defending Against
the Patents of Others
Why should you care about patents?
• Patents demonstrate that your work is
innovative
• UMass shares patent licensing revenue with
inventors
• Patents can support the formation of start-up
companies
Types of Intellectual Property
• Trade Secret
– any information that provides a commercial advantage
– lost if publicly known
– risk of others independently discovering and patenting the secret
• Patent
– plant: new variety of asexually reproduced plant (20 years)
– design: ornamental designs for manufactured articles (14 years)
– utility: process, machine, manufacture, or composition of
matter (20 years)
• Trademark
– word, symbol, design used to identify goods and distinguish them
from goods of others
• Copyright
– works of authorship embodied in a tangible medium (life of author
+70 years; or, for corporate works, lesser of 95 years from publication
or 120 years from creation)
Patents are Rooted in the Constitution
• U.S. Constitution, Article 1, Section 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.”
• society benefits from disclosure of inventions
– encourages innovation
– improvements can begin immediately
Patent Quid Pro Quo Requires Disclosure
• disclose your invention in exchange for the possibility
of a time-limited right to exclude others from using
your invention
– disclosure
• in general, a patent application is published 18 months
after filing, whether or not it leads to a patent
– exception: if filing patent application in US only and
request nonpublication, can keep invention secret
unless and until a patent is granted
– possibility of a right to exclude (not a right to practice)
• currently about 50-60% of US patent applications
become patents
Patent Process Overview
•
invention and documentation
•
search of prior art
•
draft application
•
file application (U.S. and optionally non-U.S.)
•
examination (“prosecution”)
•
appeal (optional)
•
issue or abandonment
Patent-Related Costs
• approximate cost of obtaining and maintaining a US patent
– preparation and filing: $5,000-$25,000
– prosecution: $2,000-$20,000
– issue and maintenance fees: $5,000-$10,000
• under AIA, universities will pay ¼ government fees
– total: $12,000-$55,000
• patent litigation cost: $1,000,000-$5,000,000
• other patent-related costs
– product clearance: $2,000-$20,000
– noninfringement and invalidity opinions $5,000-$25,000
Patent-Related Benefits
• time-limited right to exclude others from practicing
your invention
– “time-limited” = 20 years from filing
– scope of right defined by patent claims
– right to exclude, not right to use
• for practicing patentee, time in the market without
competition
• for non-practicing patentee, right to licensing fees
• stronger negotiating position for an accused infringer
• competitor uncertainty during application pendency
Patent Claims
• claims are listed at the end of the patent and
define the invention
• a patent can contain one claim, a few claims,
or many claims
– about 20 claims is typical
• a patent can contain more that one type of
claims
– e.g., claims to a new drug, a method of making the
drug, and a method of using the drug to treat a
disease
• each claim is a single sentence
Example of a Patent Claim
US6368227 claim 1: A method of swinging on a swing, the method
comprising the steps of:
• a) suspending a seat for supporting a user between only two
chains that are hung from a tree branch;
• b) positioning a user on the seat so that the user is facing a
direction perpendicular to the tree branch;
• c) having the user pull alternately on one chain to induce
movement of the user and the swing toward one side, and then
on the other chain to induce movement of the user and the
swing toward the other side; and
• d) repeating step c) to create side-to-side swinging motion,
relative to the user, that is parallel to the tree branch.
Invention
• conception: when the inventor perceives a specific
result and a particular means of accomplishing the
result, so that no more than ordinary skill in the art is
needed to build or carry out the invention
– if more than ordinary skill is required to build or
carry out the invention, then building or carrying
out the invention is required before conception is
complete
• AIA: signed, dated, witnessed documentation of
conception and implementation remains important
even as the US moves from a first-to-invent to a
first-to-file patent system
– inventorship
– unexpected results
Inventorship
• determined claim-by-claim
• only those who contributed to the inventive
concept can legally be considered an inventor
– not those carrying out routine work pursuant to
instructions
– not those merely posing the problem to be solved
– not those with only managerial responsibility
– decisions as to who should be listed as an
inventor must be made in “good faith”
Inventorship
• joint invention does not require
•physically working together
•working at the same time
•making the same amount or type of contribution
•working on all aspects of the invention
Inventorship
• inventorship is not the same as
ownership
– most universities and companies have explicit
assignment agreements with their inventors
– a corporation can have rights under common law
(“shop rights”)
– an inventor’s obligation to aid (e.g., provide
signatures) continues after employment ceases
Search of the Prior Art (Optional)
• “optional”, but omitted at applicant’s peril
– critical to defining a patentable, valuable invention
• prior art includes
– publications: books, articles, patents, published patent applications
– previously sold products
– public use of the invention by applicant or others
– AIA: “otherwise available to the public”
• patentability search analysis seeks to answer the questions
– Is the invention new?
– If the invention is new, what is the closest prior art, and why is the
invention not obvious in view of that art?
Parts of a Patent Application
• background
• summary of the invention
– mirrors claims
• description of any figures
• detailed description of the invention
• claims
Drafting and Prosecution
• requirements to obtain a US patent include
– statutory subject matter
– utility
– novelty
– nonobviousness
– enablement and written description
– best mode
– disclosure of material art
• relevant during patent examination and
litigation
Statutory Subject Matter
• is the invention the kind of thing that can be patented?
• U.S. Federal Law (35 U.S.C. 101): “Whoever invents or
discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.”
• Excluded: abstract ideas, laws of nature, tax-avoidance
strategies
– AIA: human organisms
• Included but controversial (and excluded in some non-US
countries): software, business methods, life forms,
methods of medical treatment
Is this claim directed to statutory
subject matter?
• A method of optimizing therapeutic efficacy for
treatment of a disease, comprising:
– (a) administering a drug to a subject and
– (b) determining the level of a metabolite in the subject,
– wherein a metabolite level less than X indicates a
need to increase the amount of drug and a metabolite
level greater than Y indicates a need to decrease the
amount of drug subsequently administered to the
subject
Mayo v. Prometheus (2012)
Utility
• is the invention useful?
• a very low hurdle for patent applicants
• examples of inventions from actual patents
include
– method of exercising a cat
– method of swinging on a swing
– “beerbrella” to keep sun off beer can
Novelty
• is the invention new?
• new as of what date?
– Until 3/15/2013, new as of the date of invention
– AIA: after 3/16/2013, new as of the date of patent
application filing
• with the change from first-to-invent to first-to-file, it is
more important than ever to contact CVIP as soon as
possible after an invention has been made
Bars to Novelty
• public disclosure
• public (non-secret) use
• sales and offers for sale
• AIA: “otherwise available to the public”
• U.S. has one year grace period
• U.S.: applicant’s own disclosure, public use, offer for
sale or sale cannot occur more than one year before
filing
• most non-U.S. countries: disclosure, public use, offer for
sale or sale cannot occur any time before filing
Nonobviousness
• at the time applicants made their invention, would the
invention have been obvious to a skilled person?
• a very high hurdle for applicants
– the single most important reason that many US applications
do not lead to a patent
• the hypothetical “skilled person” has perfect
knowledge of the prior art and ordinary creativity
• a 2007 Supreme Court case (KSR) made it easier for
the USPTO and courts to find inventions obvious
Enablement and Written Description
• written description: a skilled person should be
able to tell from the application that applicant
made the invention claimed
• enablement: a person skilled the art should be
able to practice the invention without undue
experimentation
• separate requirements, often confused by courts
Best Mode
• the application must set forth the “best mode
contemplated by the inventor of carrying out the
invention”
• AIA: as of 9/16/2011, a patent cannot be invalidated
for failure to comply with the best mode requirement,
but the requirement continues
• often conflicts with applicant’s desire to maintain
trade secrets
• two-step inquiry:
– did the inventor contemplate a best way to practice the
invention when the application was filed?
– if yes, did the inventor disclose the best way to practice the
invention?
Duty of Disclosure of Material Art
• applicants have no requirement to search the
prior art, but . . .
• the USPTO REQUIRES that all inventors and
attorneys disclose “material” art to the
USPTO
• failure to disclose such art can invalidate that
patent as well as any related patents
• duty to disclose continues from date of filing
to date of issue
Material Art
• would be considered important to an
examiner in deciding patentability
• or is inconsistent with, or refutes, a position
that the applicant has taken
• examples: published patent applications,
patents, articles, dissertations, books, web
sites, publicly available product descriptions,
publicly available presentations, offers for
sale, sales
Examination by the USPTO
• almost all patent applications are initially rejected
• responses to rejection
– argue
– amend claims (narrow definition of invention)
• claim amendments must be supported by application as
filed
– appeal
– abandon
• filing application entitles applicant to two office
actions and two responses, with more available with
payment of fee
Overview of the Filing Process
• US provisional application
– establishes priority, not examined
– allows one year for further experimentation and to
better determine value of application
• US nonprovisional application
– examined, can become US patent
• Patent Cooperation Treaty (PCT) application
– International, preserves right to file applications in
most countries 30 months after initial filing
• “foreign” (non-US country) applications
Commercialization
• frame of reference: you have a US patent and want
to commercialize your invention
• licensing
– an existing company commercializes the invention
– licensing revenues are shared between the inventors and
the University
• start-up
– a new company is created to commercialize the invention
– venture capital is required
Patent Assertion
• frame of reference: you have a US patent and sue someone
else for infringing it
• once issued, a patent grants its owner the exclusive right to
prevent others from
– making,
– using,
– offering for sale,
– selling the claimed invention in the United States, or
– importing the claimed invention into the United States
• right to exclude is defined by the patent claims
• a federal law suit is filed against the accused infringer
• a losing defendant can be forced to stop infringing activity
and/or pay monetary damages for infringing activity
Defense
• frame of reference: someone else sues
you for infringing their patent
• responses include
– defense of noninfringement (e.g., design around)
– defense of invalidity (the patent should not have been
granted)
– settlement (e.g., agree to pay royalties)
– AIA: non-profit use for public good >1 year before
patent filing date is not infringement, unless patentee is
institute of higher education
Summary
• our patent system is rooted in the constitution and
intended to encourage innovation and benefit society
• patents are expensive to obtain and enforce but can be
extremely valuable
• researchers can help themselves and the University by
– documenting their invention at the time it is made
– contacting CVIP well before any planned disclosure
– disclosing to CVIP and their patent attorney any public
references relevant to the patentability of their invention
– helping to respond to patent office rejections
Questions?
Mike Buchanan
Cantor Colburn LLP
buchanan@cantorcolburn.com