Intellectual Property Patent Primer Michael Pratt April 17, 2012

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Intellectual Property
Patent Primer
Michael Pratt
Executive Director, Business Development
April 17, 2012
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Customer
Product
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Value
Idea
IP
Profit
Market
Action
Resources
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Questions to consider
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Can I patent my idea?
Should I patent my idea?
How do I patent my idea?
Can I practice my idea?
Therapeutic Related Claim Space
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Target
Assay/Research Tool
Companion Diagnostic
Composition of Matter
Method of Manufacture
Method of Use
Formulation
Delivery/Dosing
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Intellectual Property
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“A product of the intellect that has commercial value”
American Heritage Dictionary
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Invention
Innovation
Original Work
Know-how
Tribal Knowledge
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Protection of Intellectual Property
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Patents
Copyright
Trademark
Trade Secret
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Who owns what?
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 Inventorship
 Authorship
 Ownership
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Why Patent an Invention?
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Educate the public
Stimulate continued innovation
Encourage investment and development
Reduce investment risk
Profit from your ideas
 very difficult
 invention vs. innovation
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Patents
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 enshrined in the Constitution
“Congress shall have the Power... 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.”
 grants the holder the exclusive right to practice their
invention for a defined period in return for making their
knowledge public
 exclusive means “to exclude”
 a constitutionally enshrined monopoly, and hence an
inherent tension with the free market system
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What is patentable?
Anything
that is:
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 novel
 useful
 non-obvious
 adequately described so that one ordinarily
skilled in the art can reproduce
 (Note: reduction-to-practice, actual vs
constructive)
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Types of Patent
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 Utility:
 a novel composition of matter (can include micro-organisms,
animals)
 a process or method
 an apparatus, machine or device
 a use
 a method of doing business
 Plant
 an asexually propagated plant
 Design
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Unpatentable Subject Matter
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 Ideas
 Laws of Nature
 Scientific principles
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Prior Art
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 Not just patents
 Any enabling description of an idea that is in the public
domain at any time prior to filing
 Note: up to 12 months prior to filing in the USA
 Includes:
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Library submissions
Theses
Sale of goods
Grant Applications (public disclosure varies)
Presentations
Meetings (unless in confidence)
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Searching for Prior Art
 Google Patents
 United States Patent Office www.uspto.gov
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 All issued US patents
 All Patent Applications (18 months after filing date)
 World Intellectual Property Organization www.wipo.org
 Issued PCT patents and PCT Gazette
 All Patent Applications (18 months after filing date)
 Search by: keyword, inventor, assignee, classification
etc.
 Outsource search to law firm or search firm
 Interpret results (see Opinion)
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Steps in Obtaining a Patent
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Submit invention disclosure
Review
of patentability
Boston
University
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Here marketability
File application
Prosecution
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Initial office action -- restriction requirement
Response
Second office action
Response
(Interview with examiner)
Final office action
Notice of allowance
File divisional application
Parent patent issues
Foreign prosecution in parallel, 2-3 years delayed
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Timing & Costs
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 US only
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2-3 years (maybe longer due to backlog)
Provisional application ($150-3,000)
Initial filing $10K-$40K (avg. $18K)
Response to office actions $6K
Lifetime of patent $20-$70K
 International
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4-6 years
Initial filing PCT $15-$40K
National Filing fees $50-150K
Lifetime $100-$300K
 Depends on the number of countries named
Freedom to Operate
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 Can I practice my invention without the need to license
other patented inventions?
 Requires a more expansive (and expensive) search
 Need to consider complementary technologies
 Work around considerations
 How the product will be delivered
Recap
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Idea
Invention
Patent
Product
Market
Questions?
[email protected]
617-353-4569
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