A Brave New World: Ideas, Patents, and Your Business

February 2, 2016

Presenter: Justin McCabe, Partner and IP Attorney

Welcome!

Takeaways: Basic understanding of patents and patent lawKnowing when to pursue a patentTips for reducing the costs of patentingAlternatives to patents

Types of Patents

• Utility (domestic and foreign (PCT))• Design• Plant

Utility PatentsPolicy:

Exchange the disclosure of an idea to the world for a limited monopoly

Cover a device or process that is a useful, novel, and non-obvious advance over the prior art A patent includes one or more claims that define the scope of the invention

Once issued, it offers the right to exclude others from making, using, selling, offering for sale, or importing a patented invention.

Utility Patents Cont.No working prototype required

Is not necessarily a right to make the device or to use the process defined in the claims

Does not require anyone, including an infringer, to take a license

Isn’t self effecting

Design Patents

• Ornamental design of an article of manufacture– Examples:

• Phones (Apple v. Samsung)• Cars• Shoes• Toilet paper• Icons

Core Concepts for Patentability

Prior ArtAnything patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before your filing date.

Exception: Publications, uses, or sales, by you or derived from you that predate your filing date by less than 1 year.

Novelty (Anticipation)It has to be “new” - the claimed invention is not found in a single piece of prior art.

ObviousnessWhen a combination of known elements (i.e., prior art) is put together using known methods to yield predictable results.

YOUR IDEA

Prior Art

Prior Art

Prior Art

Prior Art

YOUR IDEAPrior Art

YOUR IDEAPrior Art

Prior Art

Prior Art

Prior Art

Refine Claims?

IDEA

YOUR IDEA

Prior Art

Prior Art

Prior Art

Novel?Non-Obvious?

Worth PursingA Patent On?

Patent Requirements

SpecificationFiguresClaimsFee

Patent Process – (Brief) OverviewDraft invention disclosure;

Conduct prior art search;

Prepare application;

Determine type of application to file; andProvisional (place holder)

Utility (standard)

PCT (foreign application)

If necessary, determine (within a year) whether to file foreign application.

Patent Process – (Brief) OverviewWait…2-4 years or longer

Begin “prosecution”

Patent Issuance or Abandonment

Recurring fees (3.5, 7.5, and 11.5 years after issuance)

When to pursue a patent?

• What is your invention?– Is it new and non-obvious?

• Who is your competition?– Do they have patents?– Could they move faster than you?– Is your product easily knocked-off/imitated?– Are you concerned about foreign imports?

When to pursue a patent?

• What is your business goal?– Looking for investors?– Looking to sell?

• What assets will you have?

• Is your business international?• How long will your product be on the market?• Is the invention fundamental or a variation

that will likely change in the near future?

Reducing Costs

• Design Patents – under $2000.– Providing your own drawings

• Utility Patents– Simple mechanical, $3,000 to $5,000– Complex mechanical/Electrical, $5,000 to $9,000+– Software/App, $7,000 to $12,000+– Chemical, $7,000 to $12,000+

• Provisional (place-holder) $1,000 to …

How to reduce Costs?

Complete description of inventionSufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.

A description of each major component

Alternatives

How each component connects and interacts with other components

How to reduce Costs?

• Provide line drawn figures with and without annotations

• Narrow the scope of your description– Don’t include accessories or non-essential

features• Be available and responsive

Pre-Patent Filing Pitfalls

Waiting unnecessarily

Disclosures to others on a non-confidential basisPublication of partial/incomplete ideas

One year disclosure grace period may not help avoid a finding that your idea is obvious in view of what you disclosed previously

Sales/Public Use

Protect Yourself

Develop a process for identifying new ideas and determining whether idea is suitable for:

Patenting

Trade Secret Protection

A Defensive Publication

File provisional applications discussing at least what you plan to disclose.

Your filing date is the date of filing the provisional – any subsequent disclosure of what is contained in the provisional is not prior art.

Use non-disclosure agreements.

Protect Yourself (cont.)

Do not publish or disclose the details of your invention to take advantage of the grace period.

File a utility application as soon as practicable.More likely to fully discuss the invention and also provide a complete claim set.

Thank You.

Presentation is available:Email: jmccabe@dunkielsaunders.com

DM: @justinip

Comments? Questions?