What is a Patent?

And why should I care?

August 13, 2015

Ryan Davies

M.S., Postech – Mechanical Engineering, 2012

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특허단어• IP – Intellectual Property – 지적재산• Patent Prosecution – 특허출원경과

– 특허를얻는과정• Patent Attorney – 특허변리사 (변호사)

• Patent Agent – 특허변리사 (변호사아님)

• Examiner – 심사관• USPTO – U.S. Patent and Trademark Office – 미국특허청• Office Action – 의견제출통지서 / 거절이유통지서• Claim – 청구항• Infringe – 특허권을침해하다• References – 참고문헌• Duty of Disclosure – 정보개시의무

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Inventor

Company /

Postech

Academy-

Industry

Foundation

Korean Patent

Agent

American

Patent AgentUSPTO

The Patent Prosection Process

Intellectual Property (IP)

• Definition: “property that derives from the work of the mind”

• Includes intangible assets:

– Ideas

– Inventions

– Phrases

– Symbols

– Designs

– Musical, literary, artistic works

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Why Protect IP?

• Like tangible property, society protects IP rights to promote progress and economic growth

• U.S. Constitution grants Congress the 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”

• Recent studies: 2/3 of the value of large businesses in the US are traced to intangible assets (Shapiro/Pham, July 2007)

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Types of IP

• Patents – protect useful, tangible ideas

• Copyrights – protect creative works

• Trademarks – protect identities of products

• Trade Secrets – protect commercial knowledge

®

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What is a Patent?

• Legal document – An agreement between inventor and government

• Obtained by filing an application with the United States Patent and Trademark Office (USPTO)

• Gov’t grants the right to prevent others from making, using, selling, or offering to sell an invention for a period of 20 years from the date of filing (14 years for Design patents)

– It is a NEGATIVE right – does NOT give inventor the right to make or use; e.g., may still need FDA approval

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What can be patented in the U.S.?

• “Any person who 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.” –(35 U.S.C. §101)

• “Anything under the sun made by man” –(U.S. Supreme Court, 1980)– Excludes laws of nature, physical

phenomena, and abstract ideas

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Utility Patents

1. UtilityUtility patents are those patents which are new and useful, and directed to a method, process, machine, device, article of manufacture (e.g., chairs, shoes, and mouse-pads), computer program, or chemical compound.

TYPES of PATENTS

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Example Utility Patent

• Cablecam’s Multi-V camera system

– U.S. Patents 6,809,495, 6,975,089, 7,088,071, etc.

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Design Patents

2. DesignDesign patents are

those patents granted

on the ornamental

design of a functional

item.

TYPES of PATENTS

Surface Pattern Applied to DoughnutUSPD458,003

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Example Design Patent

• D522,370 Perfume Bottle – covers the

ornamental design of the bottle, i.e., how it

“looks”:

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Plant Patents

3. PlantPlant patents are those patents granted to new and distinct asexually reproducing plants which are invented or discovered.

TYPES of PATENTS

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Example Plant Patent

• PP17,742 – Peach Tree “White Country”,

asexually produced peach variety:

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Types of Patent Applications

1. Provisional (optional)

– Establishes priority date

– Minimal requirements

– Starts 1 year clock to file non-provisional

2. Non-provisional

– Full, regular patent application

3. Foreign

– Patent Cooperation Treaty (PCT) streamlines process of filing in other countries

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Contents of a Patent Application

• Specification

• Drawings

• Claims

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Disclosure

• Specification:

– A written description of the invention

• May include a brief description of related references

and previous work

– The manner and process of making and using

– Sufficient to enable a skilled worker to make and

use

– Includes the best mode of practicing

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Claims

• Limits the scope of the exclusionary right

• Must point out and distinctly claim what the

applicant regards as the invention

• A critical part of the application

– “The name of the game is the claim” –(Court of

Appeals for the Federal Circuit, 1990)

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Types of Claims

• Apparatus– Most common, and strongest

– Can be infringed by making, selling an article

– Programmed computer

• System– Multiple elements, e.g., a kit

• Method– A set of steps for making or using

– Can define a product by process

– Is usually infringed by the manufacturer or end user

• Compound (e.g., chemicals)

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Independent/Dependent claims

• Independent claims =

broad scope

• Dependent claims =

narrow scope

– Should add many specific

implantations

– Potential commercial

embodiments

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What is claimed is:

1. A wire harness including one or a plurality of electrically conducting paths and a tubular braided wire which is made from a plurality of fine element wires and which covers the one or plurality of electrically conducting paths, wherein

the element wires are conductive and made of non-metallic fibers, and

terminals of the tubular braided wire are folded to the inside in the axial direction.

2. The wire harness according to claim 1, wherein the non-metallic fibers are electrically conductive resin fibers made by carbon fibers or a resin material mixed with a conductive material.

3. The wire harness according to claim 1, further comprising one of a metallic shell that is to be a conductive metallic component and a conductive resin shell that is to be a conductive resin molded article, and

a terminal portion of the braided wire is integrated with the metallic shell or the conductive resin shell by insert molding.

Disclosure (cont.)

• Drawings

– Must be filed when necessary to understand the

invention

– Must show every feature recited in the claims

– Can be relied on for adding additional elements

not explicitly described in the specification

– *THE MORE THE BETTER

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Requirements for Patentability

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Utility Novelty

Non-

ObviousnessDisclosure

Utility – 35 U.S.C. §101

• One invention

– Only one patent may be granted per invention.

• Useful/utility

– Can be fulfilled by almost anything

• Statutory subject matter

– A patent may be granted for a process, machine, article of manufacture, or composition of matter. Only these categories constitute statutory subject matter.

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Novelty – 35 U.S.C. §102

• Was it 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?

• Was it described in a patent, or in a published application for patent, which names another inventor and was effectively filed before the effective filing date of the claimed invention?

• *STATUTORY BARS

– Be sure to notify your patent counsel of prior disclosures

– 1 year grace period triggered by public disclosure

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Non-Obviousness– 35 U.S.C. §103

• Even when the prior art and the claimed

subject matter are not identical, a claim is

unpatentable if the differences are such that:

– the subject matter as a whole would have been

obvious at the time the invention was made;

– to an artisan of ordinary skill in the art to which

the subject matter relates.

• *Inventor’s technical comments are highly

appreciated!

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Disclosure – 35 U.S.C. §112

• Enablement– Must disclose how to make and use invention without

undue experimentation

– It is acceptable that one of ordinary skill must perform routine experimentation to make the invention

• Written Description– Clarity

– must show that the inventor possessed the invention(all claim limitations) at the time of invention (e.g., filing date)

• Best mode

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Patent Timeline

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File provisional

applicationPay Issue fee,

maintenance fees

File application

in USPTO

Second/ Final

Office Action

Appeal,

Pre-Appeal, RCE,

Continuation

Advisory Action

Publication /

First Office

Action

Conduct prior art

search,

Draft application

Allowance

USPTO Examination

• A complete application receives a filing date

and is classified

• Based on classification, application is assigned

to an examining group

• Supervisors assign cases to examiners

• Examiner reviews application

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Office Actions

• The Examiner responds to the

Applicant’s request for a patent

with written rejections/objections

• *Rejection does not mean failure!

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Response to First Office Action

• Arguments

– Respond to rejections

• Amending the claims

– Amend the scope of the claims to distinguish the

claims over the prior art

• Examiner interview

– Attempt to expedite prosecution, simplify issues

and arrive at allowable subject matter faster

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Second/Final Office Action

• Allowance

• Final Rejection

– Occurs if the Examiner finds the arguments

unpersuasive or new grounds for rejection, such

as a new reference

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Advisory Action

• The Examiner maintains the rejection of the

claims in view of the cited prior art

• Status of claims for appeal

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Response to Advisory Action

1. Abandon

– Cut your losses now

– Can abandon at any point in the process

2. Appeal

– Argue before Appeal Board – CAFC – District Court – Supreme Court

3. Request for Continued Examination (RCE)

– Try again, pay for another round

4. Continuation

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Allowance

• Allowable Subject Matter – Claims Allowed

• Examiner’s Reasons for Allowance

• Maintenance Fees

– (3.5 years, 7.5 years, 11.5 years)

– ($1,600, $3,600, $7,400)

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What to do now?

Protect your patent!

• Patents do not police themselves

• Patent holder must watch out for and assert

own rights

• Patent rights can be licensed and/or assigned

• Infringement remedies:

– damages

– injunction

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Case Law Updates

• Recent Noteworthy Patent Law Cases

– 35 U.S.C. §101

– Association for Molecular Pathology v. Myriad

Genetics, Inc., 133 S. Ct. 2107 (2013) – broad

applicability to biotech and chemical arts

– Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct.

2347 (2014) – initial guidelines have broad

applicability, particularly to computer inventions,

may be applied to biotech or chemical arts

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Association for Molecular Pathology v.

Myriad Genetics, Inc., 133 S. Ct. 2107

(2013)• Summary

– Patents directed to various isolated DNA (including synthetically created complimentary DNA), methods for diagnosing propensity of cancer, and methods for screening potential treatments

– Court held that “[a] naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated”

– However, the complimentary DNA (cDNA), which was synthetically created, was deemed not naturally occurring and was thus patent eligible

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USPTO Guidelines after Myriad

• Inquiry Analysis

– Does the claim as a whole recite something

significantly different than the judicial exception?

– “Significantly different” – no bright line rule, but

factors which are weighed to determine patent

eligibility

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Examples – What is Patent-

Eligible Subject Matter?

• Example Claim 1: A stable energy-generating

plasmid, which provides a hydrocarbon

degradative pathway

• Example Claim 2: A bacterium from the genus

Pseudomonas containing therein at least two

stable energy-generating plasmids, each of

said plasmids providing a separate

hydrocarbon degradative pathway

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Examples – What is Patent-

Eligible Subject Matter? (cont.)

• Analysis Example Claim 1

– Statutory eligible subject matter?

• Yes, a composition of matter

– Does claim involve judicial exception?

• Yes, a plasmid is naturally occurring

– Does claim recite something "significantly different?"

• No, the claimed plasmid does not provide anything

markedly different from the naturally occurring

plasmids

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Examples – What is Patent-

Eligible Subject Matter? (cont.)

• Analysis Example Claim 2

– Statutory eligible subject matter?

• Yes, a composition of matter

– Does claim involve judicial exception?

• Yes, a plasmid is naturally occurring

– Does claim recite something "significantly different?"

• Yes, the example claim is both structurally and

functionally different from naturally occurring plasmids

to rise to the level of being markedly different

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Alice Corp. Pty. Ltd. v. CLS Bank Intern.,

134 S. Ct. 2347 (2014)

• Summary– Claims directed to a method and a system for

exchanging obligations (in the financial markets)

– Court reiterated the framework of Mayo v. Prometheus

• Determine whether the claim is directed to patent-ineligible subject matter

• If directed to patent-ineligible subject matter, determine whether there are additional elements that “transform the nature of the claim” into a patent-eligible application

– Court made clear that merely reciting a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention

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USPTO Alice Guidelines

• Guidelines issued June, 2014; updated July, 2015

• Guidelines apply to all types of judicial exceptions

and are used for all categories of claims

• USPTO provides categories of four examples of

abstract ideas

– Fundamental economic practices

– Certain methods of organizing human activities

– “An idea itself”

– Mathematical relationships or formulas

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USPTO Preliminary Alice Guidelines

(cont.)

• USPTO provides examples of what qualifies as “significantly more” than the abstract idea

– Improvements to another technology or technical field

– Improvements of the functioning of the computer itself

– Meaningful limitations beyond linking the use of the abstract idea to a particular technological environment

• Adding the words “apply it” to a judicial exception or merely requiring a generic computer be used to perform the abstract ideas do not meaningfully transform patent-ineligible subject matter into a patent-eligible application

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Practice Tips

• Include plenty of specific details/practical applications and examples (real world implementations) in initial disclosure– Focus on end result

– These can be "significantly more" than the abstract idea

• Prepare arguments as to why claimed features are more than just generic– E.g., directly tied to technical improvements

– Solves a specific problem necessarily rooted in a specific technological environment

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Questions?

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