This document provides an overview of the patent process. It discusses how patents provide limited monopoly rights to prevent others from practicing an invention for up to 20 years. Key aspects of patentability include the invention being useful, novel, and non-obvious. The patent application process involves drafting a specification and claims, filing, responding to office actions, and iterating until the patent is allowed. Public disclosure prior to patenting can result in losing patent rights, so applications should be filed before any unprotected disclosure.

1. Mintz Levin. Not your standard practice.
Patents 101: Protecting Innovations
Michael Van Loy and James Cleary

2. Importance of Patents
• A patent grants the patent owner the right to
prevent others from making, using, selling,
offering to sell, or importing the protected
innovation(s).
– Limited monopoly (up to 20 years from earliest
priority date)
– Does not grant the right to practice the invention –
only to prevent others from doing so

3. Importance of Patents
• Competitive business advantage - “Speed bumps” & “Barriers”
• Revenue stream from licensing
• Access to others’ technology via cross-licenses
• Leverage - Patents are valuable as sword and shield
• Demonstrate viability and value to investors
• Ability to collect damages via litigation
– Reasonable royalty / lost profits / hybrid approach
– Enhanced Damages for willful infringement

4. What Makes an Invention Patentable?
• Statutory requirements
– Utility - (35 U.S.C. § 101) – Must be “useful” and non-abstract
– Novelty (35 U.S.C. § 102) – Must be new
– Inventiveness/Non-obviousness (35 U.S.C. § 103) – Must not be an
“obvious” modification of known approaches
– Sufficient, enabled description, including the “best” mode (35 U.S.C. § 112)

5. OK, So… Did We Invent Something Or Not?
• If in doubt, assume that you did
• Exploratory questions:
– “What do we do that gives us a competitive advantage?”
– “How do we maintain this competitive advantage?”
– “What barriers to entry can we create for potential competitors?”
– “What would a competitor want to copy?
– “What problems did we encounter and how did we solve them?”
• Look at the “core” technology, “interfaces” to the core
technology, ancillary aspects, consumables, and the like.

6. Process
Conception
Reduction to
Practice
Invention
Disclosure
Form
File Patent
Application

7. Patenting Overview
• Types of patents
– Provisional
– Utility patent (a.k.a. a “non-provisional” patent)
– Design (ornamentation – can cover aspects of a
unique user interface, etc.)
– Plant

8. Contents of Patent Application
• Specification –
– Why is the invention needed/how is it useful?
– What is the invention/what does it do?
– How does it work?
• Figures
– Useful for understanding and implementing the invention
• Claims

9. Claims: Define Scope of Invention
• Validity vs. “Infringe-ability”
• Ideally, the claims include the smallest set of features necessary to
differentiate the invention relative to the prior art
• For software or computer-based inventions, the claims generally read
as a list of operations, process steps, etc.

10. Specification and Figures
• Good patents come from good disclosures
– The claims must be supported, explained, etc.
– Insufficient disclosure can weaken or even kill a patent or make it difficult to
secure an allowance
• Too much disclosure is almost enough

11. How Do We Get Started?
• Invention Disclosure Form
– Detailed technical description including flow chart and
system block diagrams
– What does it do?
– How does it do it?
• Identification of known prior art
– Duty of Candor - Obligation to disclose to USPTO
– What you are aware of since there is no obligation to
search
• Who are the inventors?

12. Before We File
• Inventors discuss the invention with an attorney
• Attorney prepares a draft of the application
• Inventors review the draft
• Follow-up discussion (if necessary)
• Inventors sign some paperwork:
– Declaration
– Assignment to the company
• Finalize and file the application

13. After Filing…now what?
• File Patent Application
• Receive an Office Action
– 12-48 months depending on technology
– Application is usually rejected, at least in part
• File Response to Office Action
– Argue patentability of originally submitted claims
– Amend claims and argue patentability of amended claims
• Iterate until patent is allowed / abandoned

14. After Allowance
• Patent issues
• Mark products
• Enforcement
– License
– Payment of royalties in exchange for not being sued for patent infringement
– Litigate

15. Public Disclosure Issues
• Public disclosure prior to filing can trigger loss of patent rights
• United States:
– 1-year grace period to file a U.S. patent application after disclosure:
• Publication: Paper, Slides, Web Site, Blogs, Marketing Literature
• Public Use: Testing without Clear Confidentiality
• Sale, and Offer for Sale

16. Public Disclosure Issues
• Rest of World
– Shorter Grace Period (Typically None) in which to file foreign patent
application after unprotected disclosure
– Disclosure without NDA = Immediate Loss of Patent Rights
• BEST TO FILE AN APPLICATION BEFORE A DISCLOSURE

17. Conclusion
• Good ideas are only valuable if adequately protected
• Patents can increase the value of the company
• There are ways to protect any innovation, but timing
is critical
– IP rights can easily be forfeited (Protect Before
Disclosure)
• Work closely with IP counsel and management
– Do not hesitate to discuss new ideas with manager
– Fill out invention disclosure forms for consideration

18. Michael Van Loy
mdvanloy@mintz.com
Questions/Discussion
James Cleary
jcleary@mintz.com
Please don't hesitate to contact us!