PATENTING BASICS AND
AMERICA INVENTS ACT
James R. Muldoon
JMuldoon@HarrisBeach.com
333 West Washington Street, Suite 200
Syracuse, NY 13202
315-423-7100
www.harrisbeach.com
INTELLECTUAL PROPERTY (IP)
Four Primary Types of IP:
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Copyright
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Trademark and Service Mark
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Trade Secret
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Patents
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COPYRIGHT
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A copyright protects the form of expression of a creator
against copying
Protects authors of "original works of authorship,"
including literary, dramatic, musical, artistic, and certain
other intellectual works
Protection is available to both published and unpublished
works
Examples: books, movies, music, sculptures, toys
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TRADEMARK
•
A trademark is an indicator on a product used by a
business to identify the unique source of the goods:
Snickers® brand candy bar identifies
Mars, Incorporated as the unique source
VS.
Ford Mustang
Toyota Prius
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TRADE SECRET
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A trade secret consists of a formula, process, device, or
compilation which one uses in business and which gives
an opportunity to obtain an advantage over competitors
who do not know or use it
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Trade secret protection requires material and substantial
efforts by a business to develop and implement a trade
secret protection program
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Summary: competitive business advantage + reasonable
efforts to keep secret
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What is a PATENT - Definition
A patent is an exclusive property right granted by the U.S. Government
to an inventor to:
• exclude others from making, using, offering for sale, or selling the
invention
• throughout the United States, or
• importing the invention into the United States
• for a limited time
• in exchange for public disclosure of the invention
Enforceable by injunction, damages not less than a reasonable royalty
• Methods of performing medical or surgical procedure on humans are
patent eligible, but medical practitioners are exempted from
infringement claims (35 U.S.C. 287(c))
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What a patent is NOT

A U.S. patent does not give its owner an
affirmative right to make, use or sell its claimed
invention.
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Only confers right to exclude other from practicing
invention, unless owner’s permission is obtained.
Blocking patent
Even a patented product may infringe another’s patent
 Freedom to operate searches, preferably prior to
product launch

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PATENTS - Types
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Utility Patent - protects the structure and utilitarian
features of an invention from issue and until 20 years
from filing (extendable for unreasonable PTO delays)
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•
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Provisional Application: a legal document filed in the USPTO that
establishes an early filing date, but which does not mature into an issued
patent unless the Applicant files a Non-Provisional patent application
within one year.
Design Patent - Protects the ornamental appearance of
an article of manufacture or portion thereof for 14 years
from issue
Plant Patent – Protects new and distinctive asexually
reproduced plant varieties
•
Sexually reproduced varieties protected by Plant Variety Protection Act
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Who is an Inventor?
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Inventorship is a complex, legal question
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NOT all authors on a research paper are necessarily inventors
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Inventors make material contribution to the conception of the
complete and operative invention as claimed in patent/application
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If conception is workable invention, ultimate reduction to practice not
relevant
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If extraordinary skill required, individuals reducing to practice may
make inventive contribution
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Who Owns the Patent
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Inventor owns the rights to invention unless rights have been
expressly or implicitly obligated to another
In absence of agreement to the contrary, each joint owner may use
or license patented invention in U.S. without consent or accounting to
other owners
Employment agreement can expressly assign rights to invention to
employer
Holdover agreement – conceived during employment, reduced after
employment – must be reasonable under circumstances
Implied Contract to assign invention
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Hired to invent or solve particular problem
Position of trust – officer
Shop Rights – nonexclusive, nontransferable, royalty-free license
Bayh-Dole Act allows universities to obtain exclusive rights in
technology developed under government funded research
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What can be patented?
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Patentable subject matter includes “anything under the
sun that is made by man” Diamond v. Chakrabarty, Supreme Court, 1980
“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.” 35 U.S.C. §101
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Process - A method, operation, or series of actions intended to achieve
some end or result
Machine - A device or apparatus consisting of fixed or moving parts that
work together to form some function
Article of manufacture - A thing that is made or built by a human being (or
by a machine)
Composition of matter - Two or more different substances, including all
composite articles, whether resulting from chemical union or from
mechanical mixture, and whether the substances are gases, fluids,
powders or solids
Improvements to any of the above
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What can NOT be patented?
Patents will not be granted for:
• Laws of nature or scientific principles
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Physical phenomena
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Mental processes; Some methods of doing business; Computer software with no
structure
America Invents Act (Patent Reform Legislation Sept. 2011)
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Newly discovered mineral
Correlation between metabolite level and drug efficacy (Mayo v. Prometheus)
Abstract ideas
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Gravity; Electro-magnetism (e.g., the principle of operation for Morse’s telegraph)
Human organisms
Tax strategies
Inventions which are:
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Not physically possible (perpetual motion machines); or
Offensive to public morality
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Mayo Collaborative Svcs. v. Prometheus Labs.
U.S. Supreme Ct., March 20, 2012
A typical claim (claim 1 of US 6,355,623) in Prometheus’s patent reads:
1.
A method of optimizing therapeutic efficacy for treatment of an immune-mediated
gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immunemediated gastrointestinal disorder; and
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(b) determining the level of 6-thioguanine in said subject having said immunemediated gastrointestinal disorder,
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wherein the level of 6-thioguanine less than about 230 pmol per 8 x108 red blood
cells indicates a need to increase the amount of said drug subsequently
administered to said subject and
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wherein the level of 6-thioguanine greater than about 400 pmol per 8 x 108 red blood
cells indicates a need to decrease the amount of said drug subsequently
administered to said subject.
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Novelty Limitations – Current §102
Novelty (e.g., “New”) 35 U.S.C. § 102:– Applicant may only
receive a patent for an idea not previously known
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Considered unfair to take away from the public that which
is already in the public domain
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§102 sets forth 17 restrictions to patentability
(too many for this discussion!)
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Restrictions can be summarized in 3 groups:
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Events that take place prior to Applicant’s having invented the
invention
Events that occur prior to a fixed period of time before the U.S.
filing date
Miscellaneous; not related to time of invention or filing date
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Novelty Limitations (Continued)
Events that take place prior to Applicant’s having invented the invention:
§102(a), §102(e), §102(g)
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Example: §102(a) The invention was known or used by others in this
country, or patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for patent
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Generally, an invention lacks novelty if any of the following pre-date
Applicant's date of invention: (i) a patent; (ii) a patent application; or (iii) an
invention in use or known of in the United States
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Date of invention refers to the date the Inventor can prove they invented
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Depending on facts, could be the date of conception (but requires diligence), constructing the
claimed device or performing the claimed method, testing the device (including software
simulation), or filing a U.S. patent
Note that in the U.S., the first to invent is awarded a patent, not necessarily
the first to file in the Patent Office. This provision ceases March 16, 2013.
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Novelty Limitations (Continued)
Events that take place a fixed period of time before the U.S. filing date:
§102(b), §102(d)
§102(b) provides: the invention was patented or described in a printed
publication in this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of the application for patent in
the United States
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One year grace period between public use or sale and filing of application
Public Use – generally, whether the purported use was (i) accessible to the
public; or (ii) commercially exploited.
On Sale – generally, the invention is both (i) the subject of a commercial
offer for sale (not for experimental purposes) and (ii) ready for patenting
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Novelty Limitations (Continued)
Restrictions (Con’t)
Not related to time of invention or filing date:
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§102(c): Inventor abandoned the invention
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§102(f): Inventor did not invent the subject matter sought
to be patented
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Requires a deliberate surrender of any rights to a patent, such as
intentionally dedicating to the public
Applicant derived the invention from someone else (e.g., learned
the complete system necessary for the invention)
§102(g): Basis for interference practice
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Major Changes by America Invents Act
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New 35 U.S.C. §102(a)-(d) substantially changes basis
for novelty
First-to-Invent System will become First-Inventor-to-File
Effective March 16, 2013
Broadens prior art to also include experimental uses and
oral presentations
Retains limited one year grace period for invention
derived by earlier inventor’s disclosure
Exempts disclosures under common ownership
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Includes joint research agreements in effect at time of filing
Application must name joint research parties
Invention must have been result of joint research activities
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Obviousness - 35 U.S.C. § 103:
“No patent will issue if the subject matter as a
whole would have been obvious at the time the
invention was made to a person having ordinary
skill in the art”
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Usually involves combining two or more prior art
references to arrive at the claimed Invention
Combination must have rational basis
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Cannot combine elements from multiple references without regard
to their function or arrangement
Cannot use “hindsight,” that is, invention seemed obvious
after reading the application for patent
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Important Considerations for Researchers
in view of America Invents Act
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Documenting your invention
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Still important in case of claim of derivation proceedings
Record public and confidential disclosures to collaborators
Determining if patenting is appropriate
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Sufficient commercial potential to merit costs and efforts
 Size of market
 Non-infringing alternatives available
 Ease and cost of production and use
 Recognized need for invention
 Expected useful life of product
 Is trade secret protection preferable (reverse engineering)
 Defensive publishing
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Inventor’s Actions May Prevent Patenting in US or Abroad
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Before a patent application has been filed, an Inventor
should NOT
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Submit document disclosing invention for publication or funding
approval
Talk about invention to others not under NDA
Demonstrate the invention to others not under NDA
Offer invention for sale or advertise
Sell the invention
Foreign patent rights based on absolute novelty
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PATENTS
Parts of a patent
• Cover page
• Drawings
• Specification
(Detailed Description)
• Claims
• Abstract
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PATENTS – Drawings
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PATENTS – Detailed Description
•
§112, 1st Para: The
specification shall contain a
written description of the
invention, and of the manner
and process of making and
using it, in such full, clear,
concise, and exact terms as to
enable any person skilled in
the art to which it pertains, or
with which it is most nearly
connected, to make and use
the same, and shall set forth
the best mode contemplated
by the inventor of carrying out
his invention.
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PATENTS - Claims
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§112, 2nd Para: The specification shall conclude with one or more
claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
Independent claim stands on its own and does not refer to another
claim (often referred to as “broad claim”)
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Provides highest level of patent protection
Dependent claim depends from another claim, and is used to narrow
the scope of the invention.
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Includes all recited elements plus the elements in the independent claim
“2. The device according to claim 1, further comprising …”
Narrowing the claim to dependent form may be necessary to overcome prior art
found during USPTO search, or raised during litigation
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PATENTS – Examination Process
Rejection
Amendment
First
Examination
PATENTS
Second
Examination
Appeal Brief
Allowance
Appeal
Process
Courtesy of USPTO
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Notice
of
Allowance
Conclusion
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Questions?
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