Patents. What the Med Tech Innovator Needs to Know. William Durfee. Department of Mechanical Engineering University of Minnesota Minneapolis, USA

Transcription

1 Patents What the Med Tech Innovator Needs to Know William Durfee Department of Mechanical Engineering University of Minnesota Minneapolis, USA 1

2 Session Goals Understand why patents are important to innovators Understand what a patent is Learn how to read a patent Learn how to find patents Understand what a patent costs Understand the IP policies at UMN 2

3

4 Are Patents Important? 4

5 589,410 U.S. Utility Patent Applications in 2015 Source: USPTO 298,407 patents granted in 2015 About 50% foreign applicants 41 patents granted in m patent apps worldwide in m filed in China Source WIPO 5

6 6

7 7

8 8

9 We regularly sear h pu lished patents to see where our o petitors are goi g. VP Research and Business Development, Medtronic,

10 IP Protection is Critical Value of company is in its intellectual property and the ability of staff to generate IP, not in the products Investors look at people and IP ownership more than the concept 10

11 What is a Patent? 11

12 Intellectual property Product of the mind: idea, invention, artistic expression, name, business process, chemical formula,... 12

13 A patent is a government-brokered deal between inventor and society Inventor gets limited term monopoly Society gets disclosure of invention 20 years from filing date Not based on commercial value of invention Gives inventor right to exclude others from make, use or sell 13

14 U.S. Constitution Article I, Section 8 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; 14

15 To receive a patent your invention must be New Useful Nonobvious Can be reduced to practice (made) Is not a perpetual motion machine 15

16 Types of IP Activity Technology Disclosure Provisional Patent Application Patent Application Published Patent Application Issued Patent 16

17 How many months to get a patent? Source: USPTO, Oct

18 Avoid Disclosure A publicly disclosed idea cannot be patented Ways that you can disclose Publishing in a journal or conference article Describing in a presentation at a scientific meeting Posting a YouTube animation Including on a website Demonstrating at a trade show Discussing with colleagues Be aware when writing about or taking about your idea. 18

19 Learning From Patents 19

20 US 6,682,544 20

21 21

22 22

23 How To Read a Patent Front matter Drawings Specification Claims To learn To disclose To protect To avoid infringing 23

24 How to Read a Patent 24

25 25

26 26

27 27

28 28

29 29

30 30

31 31

32 32

33 What is claimed is: 1. An ultrasonic instrument comprising: an outer tube defining a longitudinal axis and having a proximal end and a distal end; an actuation member positioned within the outer tube; a vibration coupler positioned within the outer tube, the vibration coupler having a distal end and a proximal end; a jaw member extending from the distal end of the vibration coupler; a clamp pivotally mounted adjacent the distal end of the outer tube, the clamp being movable in relation to the jaw member between open and clamped positions, the clamp including a camming member which operatively engages the actuation member such that movement of the actuation member pivots the clamp between the open and clamped positions. 33

34 1. An ultrasonic instrument comprising: an outer tube defining a longitudinal axis and having a proximal end and a distal end; an actuation member positioned within the outer tube; a vibration coupler positioned within the outer tube, the vibration coupler having a distal end and a proximal end; a jaw member extending from the distal end of the vibration coupler; a clamp pivotally mounted adjacent the distal end of the outer tube, the clamp being movable in relation to the jaw member between open and clamped positions, the clamp including a camming member which operatively engages the actuation member such that movement of the actuation member pivots the clamp between the open and clamped positions. 34

35 Patent Search Freedom to Operate Does my idea infringe? Patentability Can I get a patent for my idea? 35

36 Patent Searching 1. Key word 2. Class & sub-class 3. Forward and reverse citations Issued & published applications 36

37 Search Tools Uspto.com U.S. issued and published Most up to date Google.com/patents U.S. and European Prior art feature USPTO, Freepatentsonline.com See tutorial at freepatentsonline.com Frequent changes in features Google, 37

38 Search by Class / 606 / 169: Surgery / Cutter having vibratory drive means 38

39 Search by Forward and Reverse Citations 39

40 What Does a Patent Cost? 40

41 Filing Fees, USPTO (US$) What Provisional Fee Micro Entity Fee Small Entity Fee , Each indep claim > Issue fee Maintenance, 3.5 yrs 1, Maintenance, 7.5 yrs 3,600 1, Maintenance, 11.5 yrs 7,400 3,700 1,850 Utility filing+search+exam Source: USPTO 41

42 Attorney Patent Preparation Fees What Fee (US$) Provisional application 1,500 Utility, simple (paper clip) 6,000 Utility, minimal (umbrella) 8,000 Utility, complex (MRI) 15,000 + Source: ipwatchdog.com 42

43 Provisional Patent Application Establishes early filing date Can disclose invention after filing Effectively gives 21 year protection Can market patent pending Easy Describe the invention, inventors, best mode No claims $130 filing fee Must describe claimed invention Is not reviewed for patentability Must be prepared to file patent application within 12 months Claims must depend on invention described in provisional Patent Pending in 24 Hours, Nolo Press 43

44 Summary Without IP your med tech innovation has little value Your invention must be new and nonobvious Hire a patent attorney to write your patent Search the patent database early and often Avoid unintentional disclosure 44