Overview of the different types of intellectual property, the details of the patent process, common misconceptions and how-tos. Presented by Crissa A. Seymour Cook, Hovey Williams LLP.

1. From Proof of Concept
to Patent:
The Nitty Gritty About the
Patenting Process

2. Types of Intellectual Property
• Patents
- Inventions:
*Processes/Methods
*Machines/Devices
• Copyrights
- Expressions of Ideas:
*Writings
*Music
*Art Works

3. Types of Intellectual Property
• Trademarks
- Source indicators
• Trade Secrets
- Confidential information that has economic
value:
*Formulas
*Customer lists
*Manufacturing processes
®
®

4. Patents
.

5. Patents: Practical Inventions
Patentable Subject Matter Includes…
• “Anything under the sun that is made by man”
• Excludes laws of nature, physical phenomena, abstract
ideas
• Statutory classes: process, machine, manufacture,
composition of matter
– Compositions, devices, techniques, new
combinations, software, new uses of an old thing

6. Terminology
• 1-year grace period:
– U.S. has a 1-year grace period from first public disclosure
of invention to file patent application
– NO GRACE PERIOD in foreign countries  must file
BEFORE publish.
• Provisional application: Never examined, never issues into
patent.
– Automatically expires after 12 months (consider research
timeline)
– Minimal formality requirements for filing

7. Terminology
• Non-Provisional: Full blown patent application, will be examined,
and may issue into a patent
• PCT: Patent Cooperation Treaty – international non-provisional –
“filed” in 148 countries
– Examined, but never issues into a patent unless proceed to
national stage.
• National stage/phase: individual
filings for patents in each country
of interest – based upon the
PCT application.

8. Process Overview
Provisional First Approach
“non-provisional”
Manuscript may be submitted in-between

9. Process Overview
Consider this timeline in planning when to file a
provisional, when to submit a manuscript, etc.
Estimated time when
proof of concept may be
close to finished (major
questions answered)
Work backwards
so that provisional
filing isn’t
premature

10. How to disclose?
Invention Disclosure Form
-Submitted to Tech Transfer Office or Appropriate Division of Company
-Important to meet with Tech Transfer early in process – keep apprised of
manuscript deadlines, etc.
-Important to document invention development.
-Company or University Policy may require employees or faculty to
submit all IP for consideration

11. The Invention Disclosure
• What to disclose?
• Identification of full scope of invention
• Explore metes & bounds
• Explore alternative or non-optimized versions
• Any proposed manuscripts should be included with disclosure
form
• Materials and methods for any working examples – very
important
• How to disclose?
– In writing most preferred, e.g., manuscripts, grant applications
– Oral interview – expand on concepts contained in written
document

12. How much disclosure?

13. Disclosure considerations
• Patent application disclosure must enable one skilled in the art to
practice the invention without undue additional experimentation
– “show your work”
– Best mode must be disclosed
• Patent application must adequately describe the invention
(sufficient species to claim a genus)
• Once the application is filed there is virtually no possibility to
add to it or update it*
* Added material is considered “new matter” and gets a new filing
date.
• Important that disclosure/application is as comprehensive as
possible.

14. Disclosure considerations
• Patent application will and should be more comprehensive
than your manuscript (the patent attorney will help with
this)
• Patent application should be submitted BEFORE your
manuscript, poster presentation, etc.

15. Disclosure considerations
Road Trip - Hitting the Slopes!
•The Manuscript Approach
• Why go to the mountains?
• How do we get there?
• I-70 is East/West Highway to Colorado
• We suspected that driving I-70 west, we’d eventually run
into mountains
• Report results—after driving west for 500 miles, we
encountered mountains
• Future investigation – alternate routes to the mountains

16. • The Grant Application Approach
– We’ve driven I-70 west and reached mountains
– Problems with this approach – boring, not enough
places to stop
– We suspect there are better routes, but need funding
to investigate (Dodge City route?)
Disclosure considerations

17. • The Patent Application Approach
– Go North on I-135 for 1.5 miles, take the exit to West
I-70 for approximately 530 miles
– Providing directions to achieve an outcome
– Provide alternative directions, not just your preferred
route (back highways through Dodge City)
– Disclosure should enable others to also reach the
mountains
Disclosure considerations

18. The Drawings
• Drawings helpful to understanding the
invention
• PCT drawing quality issues:
• Must be black & white – avoid colored lines!
• Amenable to reproduction
• Original, editable files preferable

19. Example – Experimental Setup

20. How do I know if my invention is
patentable?
• Ask Tech Transfer or Patent Attorney
• The patent act defines what is patentable:
– Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of the matter, or any new
and useful improvement thereof, may obtain a patent therefore,
subject to the conditions and requirements of this title. (35 USC §
101)
– The remaining fundamental requirements are that the invention
be novel and non-obvious.

21. Basic Requirements for Protection
• Novel: loosely means that the invention is new
and is non identical to the previous work of
others. (35 USC § 102)
• Non-obvious: means that the invention must
not be an obvious extension of what has gone
before. (35 USC § 103)
- Obviousness is measured by what one of
ordinary skill in the subject area of the patent
would have known at the time of the invention.

22. America Invents Act
• The AIA significantly encourages early (and
often) filing of patent applications
• U.S. patent laws are now based on “first-
inventor-to-file” rather than “first-to-invent”

23. America Invents Act
• File patent applications before any public
disclosure, use, presentation, commercial
activity, etc. involving the invention
– Limited “grace period” still available
– Use Non-Disclosure Agreements consistently, but do not
rely on NDAs to fully protect invention
– Inter-institutional inventions: Use written joint
development agreements with confidentiality provisions
and publication restrictions

24. America Invents Act
• Invention Disclosure forms and streamlined
protocol for submitting and evaluating
inventions becomes even more important
under the AIA

25. Patent Acquisition
. Prepare and File
Post-issuance
Challenges Examination
Issuance

26. Examination process
• Patent examiner will do a search based upon the application
claims to see if there is any “prior art” related to the invention
– Claims describe the metes and bounds of protection
– “A method of…” “A composition comprising…”
– Claimed invention must be: new, non-obvious as compared to
one or more prior art references located by Examiner.
• Examiner issues an “Office Action” – patent attorney will
have a back and forth exchange with the Examiner regarding
the prior art and the claims.
– Inventor input can be helpful – “person skilled in the art”
– Often Examiner is misinterpreting the claims, the prior art, or
both

27. Common Patent Misconceptions
• A patent gives the right to use or make the
invention.
• Patented products are better than unpatented
products.
• If I find a new use for an old product, I can get a
patent on the product.

28. ThankYou!
Crissa A. Seymour Cook
HoveyWilliams LLP
84 CorporateWoods
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
913.647.9050
www.hoveywilliams.com