Intellectual property law refers to creations of the mind such as inventions, literary works, and symbols. The US Constitution gives Congress the power to grant limited monopolies to authors and inventors via copyright and patent laws. There are several types of intellectual property including patents, copyrights, trademarks, and trade secrets. Patents protect new and useful processes, machines, manufactures, compositions of matter, and plant designs for a limited term. Obtaining a patent requires an application process to show the invention is novel, non-obvious, and adequately disclosed. The America Invents Act of 2011 modernized US patent law and changed it from a first-to-invent system to a first-inventor-to-file
2. What is Intellectual
Property Law ?
“Intellectual property (IP) refers to creations of the
mind: inventions, literary and artistic works, and
symbols, names, images, and designs used in
commerce.” –WIPO
3. US Legal Basis for IP Rights
U.S Constitution
The Congress shall have 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. (Art. 1, Sec. 8, Clause 8)
Laws, Regulations & Guidance
Federal Law: 35 U.S.C. § 100 et seq.
Regulations: 37 C.F.R. Chapter I, Subchapter A
US PTO Manual of Patent Examining Procedure
(MPEP) [http://www.uspto.gov/web/offices/pac/mpep/mpep.htm]
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4. Why is it Important to Protect
your Intellectual Property ?
Ability to protect core ideas
Limited term monopoly
Provides a protected competitive advantage
Opportunity to recoup costs on necessary R&D
Defend one’s ideas from infringement
Commercialize your invention successfully no more
“Grant Proposals”!
5. Types of IP
Trade Secret
“Secret Sauce”
Copyright
“Artistic expression in the way something looks or sounds”
Patent
“Protects the embodiment or method of an idea”
Trademark
“Branding”
DO NOT USE THESE TERMS INTERCHANGEABLY!
6. Patents—Summary
What may be protected Process, machine, manufacture
or composition of material;
plants; designs
Protection provided May prevent others from
making, using, selling, offering
for sale and importing
How to obtain Application process through
US Patent & Trademark Office
protection
Duration Utility/Plant—20 years from filing
Design—14 years from filing
Enforcement Infringement suit in Federal
Court
Flow Diagram from the USPTO on the Process
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7. Patents
What is a patent?
Often considered a contract
between government and an
inventor
A limited and temporary
monopoly granted by the
government in return for a
full disclosure by the
inventor of the details of his
or her invention
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8. Patents
Limited Monopoly in Exchange for Disclosure
The inventor discloses the invention in sufficient detail
to teach a person skilled in the same field of art how to
make and practice the invention.
The expectation is that, in view of the teaching, people
will then build upon this invention to create
improvements and other new inventions.
The monopoly is limited to 20 years from the date the
patent application was filed (Utility/Plant).
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9. Patents: Specific Rights
A patent affords the owner the right to exclude
others from making, using, offering to sell,
selling, or importing the claimed invention (35
U.S.C. §271).
A patent does not give the owner an affirmative
right to make, use, offer to sell, sell, or import
the claimed invention.
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10. Patents (Cont’d.)
What may be patented?
Utility Patent
Any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvements
thereof
(35 U.S.C. §101)
Note: A “Utility Patent” in Europe means something else and
is a lesser type of patent.
Plant Patent
Any new and distinct, invented or discovered asexually
reproduced plants (35 U.S.C. §161)
Design Patent
Any new, original, and ornamental design for an article of
manufacture (35 U.S.C. §171)
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12. Patent Applications
Provisional Patent Application
Placeholder-1 year from date of filing
Claims are not required, and application is not examined
Automatically abandoned at one year, and priority date is
forever lost, unless it is converted or priority is claimed in a
utility application
Missing Parts Pilot Program (Extends Prov to 2Yrs)
Utility Application
Claims required and inventorship determined;
Application subject to substantive examination; and
Patent may issue
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13. Typical Patent Application
Process
Provisional
Non-Provisional-Examiner Reviews Case
Non-Final Rejection
Claim Amendment by Filer
Allowance or Final Rejection
If Allowed-Done but if FR then an After-Final Typically Occurs
If AF-Rejected then RCE, Abandonment, or Appeal to BPAI
If case goes BPAI route can eventually go CAFC and then
SCOTUS
14. Utility Patent: Statutory Subject Matter
Title 35 U.S.C. §101 Inventions Patentable
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, subject to the conditions and
requirements of this title.
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15. Utility Patent: Statutory Subject Matter
Process
Defined as a process, act, or method, and primarily includes
industrial or technical processes
Includes a new use of a previously known process, machine,
manufacture, composition of matter, or material
Machine
Manufacture
Articles that are made; includes all manufactured articles
Composition of Matter
Chemical compositions: may include mixtures of ingredients as well
as new chemical compounds
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16. Utility Patent: Statutory Subject Matter
Matters not subject to
patent protection
Laws of nature
Physical phenomena
Abstract ideas
Inventions solely used for
nuclear or atomic
weapons
Perpetual Motion
Machines Can’t be
Patented!
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17. A Single “Invention” Can Span
More Than One Statutory Category
Example 1: Chemical Invention
Composition of Matter
New chemical compound
Pharmaceutical formulation
Process
Method of making the chemical compound
Method of using the chemical compound for specific purpose
Example 2: Mechanical Invention
Machine
Computer-based apparatus for processing data
Process
Method for processing data 17
19. Utility Patent: Disclosure
Specification:
A written description of the invention;
The manner and process of making and using it;
Sufficient to enable a skilled worker to make and use it;
Including the best mode of practicing it.
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20. Utility Patent: Claims
Must point out and distinctly claim what applicant
regards as the invention
Defines and delimits the scope of the exclusive right
A very important part of the application
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21. Patents: Novelty
“A person shall be entitled to a patent unless” -
PTO's burden to show invention is not patentable;
Applicant has uncompromising duty of candor to disclose
material information;
PTO performs independent art search;
Rejection(s) must be supported by a proper prima facie case.
Burden shifts back to applicant to prove, e.g.,
Evidence is not prior art;
Evidence is insufficient to support a prima facie case;
Evidence does not disclose operable embodiment(s).
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22. Patents: Nonobvious Subject Matter
Invention is not identically disclosed in the art (novelty);
But differences between prior art and the invention
"would have been obvious at the time the invention was
made to a person having ordinary skill in the art...."
--35 U.S.C. §103
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23. Patent: Infringement
Infringement of a Patent
Claims delimit the exclusive right
Literal infringement
The literal language of a claim reads on the accused
product/process
Every limitation of a claim is met
Doctrine of Equivalents (DOE)
The DOE can expand exclusive rights beyond the
literal language of the claim
Limitations: Prior art & Prosecution History
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24. Prior Art & International
Protection
People will forever keep on “reinventing the wheel”
Know your technology’s competitive landscape
Just because you have a patent does not mean your IP is protected
US Patent is good only in the US
PCT Applications provide an opportunity to file your patent
protection globally with other country’s IP offices
Hard to enforce adequate protection overseas without procuring
Patents in foreign countries.
Unless you are a MNC or buddies with the USTR Rep
25. The America Invents Act
Signed into law by President Obama September 16, 2011
As noted by USPTO Director David Kappos,
the AIA is “the most comprehensive overhaul
to our nation's patent system since 1836.”
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26. The America Invents Act
Key Elements
Fast track option for Patent Processing within 12 Months: Instead of an average wait time of
almost three years, the PTO will be able to offer startups growing companies an opportunity to
have important patents reviewed in one-third the time – with a new fast track option that has a
guaranteed 12-month turnaround. Patent ownership is a critical factor venture capital
companies consider when investing in entrepreneurs hoping to grow their business.
Reducing the patent backlog: Additional resources provided in the law will allow the PTO to
continue to combat the backlog of nearly 700,000 patent applications and will significantly
reduce wait times.
Reducing litigation: The PTO will offer entrepreneurs new ways to avoid litigation regarding
patent validity, at costs significantly less expensive than going to court.
Increasing patent quality: The law gives the PTO additional tools and resources to further
improve patent quality, and allows patent challenges to be resolved in-house through expedited
post-grant processes.
Harmonizing American Patent Law: The new law harmonizes the American patent process
with the rest of the world to make it more efficient and predictable, and make it easier for 26
entrepreneurs to simultaneously market products in the U.S. and export abroad. The PTO has
27. The America Invents Act
“First Inventor to File”
The effective date for the First Inventor to File provision of AIA is March 16,
2013.
An application filed before that date would not be subject to the first-inventor-to-
file provisions. That application would be treated under the first-to-invent
provisions of the law in effect on September 15, 2011.
Even after “First Inventor to File” takes effect, only inventors are entitled to a
patent. Someone who copies another’s idea cannot be the inventor. Someone who
copies another’s idea and files a patent application on the subject matter before the
true inventor does so would not be entitled to a patent.
Regardless of whether an application is filed before or after the “First Inventor to
File” provisions take effect on March 16, 2013, disclosure one month prior to a
filing date is not prior art to the claimed invention by virtue of a one year grace
period.
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28. The America Invents Act
“Best Mode”
The effective date for the Best Mode provision of the AIA was
September 16, 2011.
Under the AIA’s amendment to 35 U.S.C. 282(a)(3), concerning Best
Mode, the failure to disclose the best mode shall no longer be a basis, in
patent validity or infringement proceedings, on which any claim of a
patent may be canceled or held invalid or otherwise unenforceable.
AIA’s amendment to 35 U.S.C. 282(a)(3) is applicable only in patent
validity or infringement proceedings, and does not change current patent
examination practice regarding evaluation of an application for
compliance with the best mode requirement of 35 U.S.C. 112, as set forth
in the Manual of Patent Examination Procedure (MPEP) § 2165.
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29. The America Invents Act
“Derivation Proceeding”
The effective date of the “Derivation Provision” under the AIA is September 16,
2012.
A “Derivation Proceeding” under the AIA requires filing a petition.
A petitioner must claim the same or substantially the same invention as the earlier
application’s claimed invention.
The petition must be supported by “substantial evidence” that the earlier claimed
invention was derived from petitioner, and filed without authorization.
An applicant for patent may file a petition for a derivation proceeding.
The petition must be filed within one year of first publication of a claim to an
invention that is the same or substantially the same as the earlier application’s claim
to the invention.
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30. The America Invents Act
“Inter Partes Reexamination”
The effective date of the inter partes reexamination provisions was September 16, 2011.
Section 6 of the AIA elevates the standard for granting a request for inter partes
reexamination. Under the new standard, the information presented in an inter partes
reexamination request must provide a showing that there is a reasonable likelihood that the
requester will prevail with respect to at least one of the patent claims challenged in the
request. The standard for ex parte reexamination remains unchanged.
The pre-AIA Substantial New Question of patentability (SNQ) standard is applicable in
determining whether a request for inter partes reexamination will be granted for any inter
partes reexamination proceeding with a request filed prior to September 16, 2011.
Inter partes review replaces inter partes reexamination as an avenue for a third party’s
patentability challenge and the provision in the AIA for inter partes review is effective on
September 16, 2012. Inter partes reexaminations pending on that date will not be converted
into inter partes review proceedings.
Any request for inter partes reexamination filed on or after September 16, 2012, will not be
granted. 30
31. The America Invents Act
“Inter Partes Review”
The inter partes Review process will be effective September 16, 2012.
Under the new inter partes Review process, a petitioner may request to cancel as
unpatentable 1 or more claims of a patent based on §§ 102, 103 using patents or
printed publications.
A person who (a) is not the owner of the patent and (b) has not previously filed a
civil action challenging the validity of a claim of the patent may file, accompanied
by payment of the required fee, a petition to institute an inter partes Review of the
patent.
The petition must demonstrate a reasonable likelihood that the petitioner will
prevail on at least one claim challenged.
The petition cannot be filed until after the later of: 1) 9 months after the grant of a
patent or issuance of a reissue of a patent, or 2) the date of termination of any post
grant review of the patent.
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32. The America Invents Act
“Post Grant Review”
The effective date of the provisions for Post Grant Review is September 16, 2012.
Under the Post Grant Review process, a petitioner may request to cancel as unpatentable 1 or
more claims of a patent on any ground that could be raised under paragraph (2) or (3) of
section 282(b) (relating to invalidity), i.e., §§ 101, 102, 103, 112 (except best mode). A Post
Grant Review is generally limited to patents issuing from an application filed under the first-
inventor-to file system.
A person who (a) is not the owner of the patent and (b) has not previously filed a civil action
challenging the validity of a claim of the patent may file, accompanied by payment of the
required fee, a petition to institute a Post Grant Review of the patent.
The petition must demonstrate that it is more likely than not that the petitioner will prevail on
at least one claim challenged or raises a novel question that is important to other patents or
publications.
The petition may be filed only within 9 months after the grant of a patent or issuance of a
reissue patent.
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33. The America Invents Act
“Prioritized Examination (Track 1)”
The effective date of prioritized examination was September 26, 2011.
Prioritized Examination is a procedure for expedited review of a patent application for an
additional fee. The Office’s goal for prioritized examination is to provide a final disposition
within twelve months of prioritized status being granted.
Nonprovisional utility and plant patent applications with no more than 4 independent claims,
30 total claims, and no multiple dependent claims filed on or after September 26, 2011 are
eligible for Prioritized Examination (Track I).
Requests for Prioritized Examination of utility patent applications must be filed using EFS-
Web. Requests for Prioritized Examination of plant patent applications must be filed in
paper. For both utility and plant patent applications, it is strongly recommended that
applicants use Form PTO/SB/424 to request prioritized examination, but the form is not
required.
Fees include, but are not limited to a Track I prioritized examination fee of $4800.00
($2400.00 for small entities).
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34. The America Invents Act
“Micro-Entity Discount”
Often 75% discount
Institutes of higher education are automatic
Or
– No more than 4 previous U.S. non-provisional patent applications
– Gross income not exceeding 3x the median income
“has not assigned, granted, or conveyed, and is not under an obligation by contract or law to
assign, grant, or convey, a license or other ownership interest in the application concerned to”
a non-micro entity.
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35. The America Invents Act
“Tax Strategies, Business Methods”
The AIA makes important changes affecting applications with claims
directed to “Tax Strategies” and certain “Business Methods,” including a
“Transitional Program” for “Covered Business Method Patents.”
If your invention, application or issued patent involves these types of
claims, consultation with patent counsel is suggested.
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36. Patents: Novelty – Pre-AIA
A person shall be entitled to a patent unless -
The invention was known or used by another, or patented
or published before invention by applicant;
It was patented or published anywhere, or publicly used or
on sale in this country >1 year before filing the application;
It was abandoned by the applicant; or
It was patented by applicant in a foreign country prior to
application in the U.S. on an application filed more than
12 months before filing in the U.S.
Applicant did not invent it (derivation)
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37. Patents: Novelty – Post-AIA
A person shall be entitled to a patent unless
“(1) the claimed invention was patented, described in a printed publication,
or in public use, on sale, or otherwise available to the public before the
effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section
151, or in an application for patent published or deemed published under
section 122(b), in which the patent or application, as the case may be, names
another inventor and was effectively filed before the effective filing date of
the claimed invention.”
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38. Patents: Novelty – Post-AIA
‘‘(b) EXCEPTIONS.—
‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE
FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or
less before the effective filing date of a claimed invention shall not be prior art to the
claimed invention under subsection (a)(1) if—
‘‘(A) the disclosure was made by the inventor or joint inventor or by
another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor; or
‘‘(B) the subject matter disclosed had, before such disclosure, been
publicly disclosed by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor.”
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39. Patents: Novelty – Post-AIA
‘‘(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—
A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
‘‘(A) the subject matter disclosed was obtained directly or indirectly from the
inventor or a joint inventor;
‘‘(B) the subject matter disclosed had, before such subject matter was effectively filed
under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor; or
‘‘(C) the subject matter disclosed and the claimed invention, not later than the
effective filing date of the claimed invention, were owned by the same person or
subject to an obligation of assignment to the same person.”
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40. Patents: CREATE Act
incorporated into AIA
Limited safe harbor from obviousness for collaborators
from different institutions;
Invoked upon §103(a) rejection
Available only if:
A Joint Research Agreement (JRA) was in effect at time of
invention;
Prior art and invention both made by parties to JRA;
Invention resulted from activities within scope of JRA;
Amend application to identify parties to JRA
For any collaborative effort, e.g., MTA, NDA, CRADA ...
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41. Utility Patent: Priority
Recordkeeping – Still Important After American Invents
Act!
Changes “First to Invent!”
US patents will no longer be available for a first inventor
if a second inventor files first
Ways of proving derivation:
Permanent record, e.g., laboratory notebook
Dated
Witnessed
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42. The America Invents Act
Learn More at PTO AIA Web Pages
PTO has set up a web page devoted to AIA that is being frequently updated:
http://www.uspto.gov/aia_implementation/index.jsp
Look for multiple Notices of Proposed Rule Making from the PTO over the next
year as it implements the AIA, with short comment periods and no extensions.
The PTO is encouraging stakeholders not to wait for a specific Notice to submit
comments.
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