The Business of Intellectual Property
INTRODUCTION TO
PATENT RIGHTS
Presented by
Dawn C. Russell
Arent Fox LLP
Washington, DC | New York, NY | Los Angeles
Topics to be covered
What is a patent?
Why obtain a patent?
Types of patents and applications
Criteria for patentability
Pitfalls: U.S. vs. the rest of the world
2
What is a Patent?
A patent is an agreement between the granting
government and an inventor wherein, in
exchange for the inventor fully disclosing his
invention to the public, the government grants
the inventor the right to exclude others from
making, using, or selling the patented invention
for the term of the patent.
Patents are only enforceable within the borders
of the granting countries.
The patent system promotes the progress of the
sciences and the useful arts, as set forth in the
U.S. Constitution.
Why Do Companies Obtain Patents?
Offensive use of patents:
Preventing others from making, using, and selling your
product, thereby providing the patent holder with a type of
“legal monopoly.”
Defensive use of patents:
Companies with large patent portfolios do not always
actively assert their patent rights. If accused of infringing
a competitor's patent, the accused infringer could then
assert patent rights in a “defensive counterattack,” in an
effort to force a settlement or cross-license.
Revenue Generation:
Patents can be licensed to generate significant amounts
of income for the patent owner, even if the patent owner
never builds or sells the patented invention.
Types of U.S. Patents
Utility Patents (for “any new and useful”
invention): Term is 20 years from filing
date.
Design Patents (for “any new, original
and ornamental design”): Term is 14
years from date of issuance.
Plant Patents (for “any distinct and new
variety of plant”): Term is same as Utility
Patent.
Types of Patent Applications
Non-provisional: Examined by a patent office
examiner.
• More formal requirements: requires at least one claim.
Provisional: Not examined by a patent office
examiner (good for 1 year).
• Less formal: does not require claims or other
formalities.
• Can be anything from a scientific paper to a handwritten disclosure.
PCT: International filing and “preliminary
prosecution” with international examiner.
Criteria for Patentability
The process, machine, manufacture, or
composition of matter must be:
USEFUL (as required by 35 USC § 101)
NOVEL (as required by 35 USC § 102)
NON-OBVIOUS (as required by 35 USC § 103)
Criteria for Patentability: Utility
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
• problems in biotechnology and software
inventions
Criteria for Patentability: Novelty
The invention must be newly invented by the
inventors.
Any public use, offer for sale, publication or
commercialization of the product, by anyone
including the inventors, more than one year
prior to the filing of a U.S. patent application,
may bar patentability.
Prior invention by another party will bar
patentability.
Invention can be proven with
engineering/laboratory notebooks.
Criteria for Patentability: Non-Obviousness
U.S. PTO looks at the differences between
the “invention” and the prior art and
determines:
Would the subject matter, as a whole, have
been obvious at the time the invention was
made to a person having ordinary skill in the
art to which said subject matter pertains
Criteria for Patentability: Three Additional Requirements
Written Description: invention must be
“described” in the specification.
• problems in biotechnology inventions
Enablement: a person of ordinary skill in
the art must be able to make and use the
invention given what is provided in the
specification.
• problems in biotechnology inventions
Best Mode: cannot keep the best way of
practicing the invention a secret.
Pitfall #1: Novelty “Grace Period” (USA) vs. “Absolute Novelty”
USA: 1 year “grace period” for novelty:
gives an inventor 1 year from first
disclosure to file a patent application.
Most of the World: “absolute novelty”
needed – first disclosure must be patent
application.
Solution: keep options open by filing in U.S.
before any public disclosure.
Pitfall #2: “First to Invent” (USA) v. “First to File”
USA: In a dispute over who invented the
invention first, the inventor who can prove a
first date of invention (e.g., using lab
notebooks) wins.
Most of the World: In a dispute over who
invented the invention first, the inventor who
filed his application first wins.
Solution: File early and maintain records.
Pitfall #2 (cont): Proving “Invention” (USA)
U.S. patent system awards patents to the
first to “invent”; most other countries
award patents to the first to file patent
applications.
(Conception) + (Reduction to Practice) +
(Diligence) = INVENTION
Careful documentation in
engineering/laboratory notebooks
can prove all of these elements.
Pitfall #3: Duty of Disclosure (USA)
USA: Inventors and each other individual associated with
the filing and prosecution of the patent application has a
duty to disclose “all information known to that individual to
be material to [the] patentability” of the invention. This
includes:
• Prior art cited in search reports of a foreign patent office in a
counterpart application.
• The closest information over which the individual believes the
invention defines.
• All information that refutes an argument made to the USPTO
in favor of patentability (e.g., negative test results).
Most of the World: No such duty exists.
FAILURE TO COMPLY WITH THE DUTY OF DISCLOSURE
CAN RESULT IN THE INVALIDATION OF THE PATENT.
Summary
Obtain patents to exclude others from
practicing your inventions.
File (at least) a provisional before any public
disclosure to maintain option for foreign
rights.
Carefully document work done by
employees and consultants.
Understand and comply with the “duty of
disclosure” obligations.
Contact Information:
Dawn C. Russell
PH: 202.775.5771
russell.dawn@arentfox.com
Arent Fox LLP
1050 Connecticut Ave., N.W.
Washington, DC 20036