What You Didnt Know That You Didnt Know

What You Didn’t Know That You Didn’t Know About Patents Eric Myers em@gandmpatent. com Copyright © 2018 Grüneberg and Myers PLLC

Patents: In the news Just last week… Copyright © 2018 Grüneberg and Myers PLLC

What we’ll cover • What is a patent? • Why would you want a patent? • What do you need to do to get a patent? • How do you avoid infringement? • What’s new in the patent world? Copyright © 2018 Grüneberg and Myers PLLC

What is a patent? • An exclusive right for an inventor • Constitution: “[t]o promote the progress of … useful arts …” • “Exclusive” right: The right to exclude others from doing something • Making, using, selling, offering to sell • Limited time • A trade-off for disclosing your invention Copyright © 2018 Grüneberg and Myers PLLC

What is a patent NOT? • NOT the right to do something Example: need FDA approval for food or drugs 2 = E c m • NOT protection for an abstract. PV = n. RT idea, law of nature, or natural phenomenon Copyright © 2018 Grüneberg and Myers PLLC

Why would you want a patent? • Stop other people from using the invention (competitive advantage) • Get other people to pay for using the invention (licensing) • Sell the patent to someone else • Impress other people (investors, customers) Marking your product Copyright © 2018 Grüneberg and Myers PLLC

Why would you want a patent? Pat ent Due diligence may be important for selling or buying patents or patent applications • Check for issues §Validity §Scope of coverage • Often in context of acquisition Copyright © 2018 Grüneberg and Myers PLLC

Three types of patents • Utility: what most people think of, our focus “useful process, machine, manufacture, or composition of matter” • Design “ornamental design for an article of manufacture” • Plant “asexually reproduce[d] … variety of plant” Copyright © 2018 Grüneberg and Myers PLLC

Three types of patents: Duration • Utility and Plant: 20 years from first U. S. filing • Design: 15 years from grant (new Copyright © 2018 Grüneberg and Myers PLLC

How is a patent different from a copyright? Copyright protects “original works of authorship” fixed in a tangible form Examples: books, recorded music, plays, paintings, sculptures, photographs, movies, architecture Copyright © 2018 Grüneberg and Myers PLLC

How is a patent different from a copyright? Patent (Utility) • Duration: 20 years from effective U. S. filing (possible adjustments or limitations) • Examination process for novelty, nonobviousness, etc. • Patents examined by U. S. Patent and Trademark Office Copyright • Duration: depends on who made it and for whom (e. g. : life of author + 70 years) • Applicable once fixed in tangible form; registration to go after infringer • Copyright Office is part of Library of Congress Copyright © 2018 Grüneberg and Myers PLLC

How is a patent different from a trademark? A trademark is word, phrase, symbol, or design that identifies and distinguishes a commercial source Examples: brand names, slogans, logos Copyright © 2018 Grüneberg and Myers PLLC

How is a patent different from a trademark? Patent (Utility) Trademark • Federal protection • Mix of federal and state protection laws • Duration: as long as it’s in use in commerce • Duration: 20 years from effective U. S. filing (possible adjustments or limitations) Copyright © 2018 Grüneberg and Myers PLLC

Are there other types of intellectual property? • Trade Secrets • Plant Variety Protection § “sexually reproduced or tuber propagated plant variety” • In other countries: § Utility Models § Geographical Indications Copyright © 2018 Grüneberg and Myers PLLC

What do you need to do to get a patent? • Invent something! • Must be new • Cannot be obvious • Describe it • Enable people to use it • Apply Copyright © 2018 Grüneberg and Myers PLLC

Invent something Novel (New) • Define invention in a way that does not encompass anything old • Most novelty problems arise from description of something older (“prior art”) Copyright © 2018 Grüneberg and Myers PLLC

Invent something Novel (New) For lack of novelty over prior art: • All elements need to be there • Must be arranged in the same way • Same terminology not required Copyright © 2018 Grüneberg and Myers PLLC

Invent something Not Obvious • Yes, this is a legal term – but subject to a lot of developed law • Factual backdrop required A. Determine scope and content of prior art B. Ascertain differences between prior art and invention C. Resolve level of “ordinary skill in the art” Copyright © 2018 Grüneberg and Myers PLLC

Invent something Not Obvious For the differences • Must have motivation to modify • Must have reasonable expectation of success • Can involve multiple pieces of prior art • Cannot rely on hindsight Copyright © 2018 Grüneberg and Myers PLLC

Invent something Not Obvious Opportunity to overcome basic obviousness case with “secondary considerations” Examples: unexpected results, commercial success, long-felt need Copyright © 2018 Grüneberg and Myers PLLC

Describe invention Someone in the field should understand that you had the invention in your possession. For example: • Describe working examples • Include drawings • Mention relevant identifying characteristics Copyright © 2018 Grüneberg and Myers PLLC

Enable people to make and use the invention • Someone in the field should be able to make and use it • Should not require undue experimentation Copyright © 2018 Grüneberg and Myers PLLC

Applying for a patent • Determine who will do it § On your own, or with attorney/agent? § If application is in the name of a company, must be an attorney/agent • Draft application • Submit to USPTO § Consider applying in other countries, too Copyright © 2018 Grüneberg and Myers PLLC

Applying for a patent: Examination • Pendency § Backlog: 546, 000 unexamined applications (down from 720, 000 in 2011) § 15 -16 months on average until examination • Office actions § Rejections and other types § Non-final versus final Copyright © 2018 Grüneberg and Myers PLLC

Applying for a patent: Examination and Appeal • Interviews §In-person, phone, video conference §Opportunity to advance examination • Appeal §Within the Patent Office §Beyond the Patent Office Copyright © 2018 Grüneberg and Myers PLLC

How do I avoid infringing someone else’s patent? • Identify patents • Patents/applications you already know of • Searching for other patents/applications • Determine what the patent covers • Attorney could help • Compare with your product or process to the coverage of the patent Copyright © 2018 Grüneberg and Myers PLLC

What’s new in the patent world? • Patentable subject matter Software, business methods Diagnosis methods • Challenges to validity of others’ patents though Patent Office procedures • Patent “Exhaustion” and Copyright © 2018 Grüneberg and Myers PLLC

Wrap-up • Patents: an exclusive IP right • Patent application process • Avoiding infringement • Patent law continues to Copyright © 2018 Grüneberg and Myers PLLC

Thank you em@gandmpatent. com Copyright © 2018 Grüneberg and Myers PLLC