Becoming a Patent Professional Jeffrey G. Sheldon 2014 PLI
Introduction What you are going to learn How to interview an inventor Does the inventor have patentable subject matter? Obtaining a patentability study Why this is important Starting point for the entire process Many times stop at the interview
Organizations American Intellectual Property Law Association (AIPLA) American Bar Association (ABA) Intellectual Property (IP) section Inns of Court Local Bar Groups State Bar IP section Licensing Executive Society
Book and Other Materials How to Write a Patent Application by Sheldon Materials, including pre-recorded videos Manual of Patent Examining Procedure (MPEP) U.S. Code: Title 35 Patents (35 USC) Title 37 Code of Federal Regulations (37 CFR ) MPEP, 35 U.S.C. and 37 CFR are available at the U.S. Patent and Trademark Office website http://www.uspto.gov
Course Structure Pre-recorded lecture Reading Written assignment (none for week 1) Due the Monday BEFORE class by e-mail Address e-mail to ProfSheldonPLI@leechtishman.com AND copy jhargis@leechtishman.com. Live webinar Review written assignments More material
This Week s Topics Interviewing an Inventor Chapter 4 Checklists Patentable Subject Matter Chapter 6A Ordering a Patentability Search Chapter 5 Conducting Your Own Patentability Search
Interviewing an Inventor Preparing for the interview Budget Send background information Wikipedia Should a patent application be filed? Patentable subject matter Not copyright, trademark, or trade secret
Patentable Subject Matter Anything under the sun created by man except: Human organisms ( 6A:2) Abstract ideas ( 6A:3) Natural phenomena ( 6A:4) Products of nature ( 6A:4) Printed Matter
PTO Guidelines Abstract Ideas and Method Claims Same standard as for laws of nature and natural phenomena Alice notice 6/25/2014 Safe harbor - machine or transformation of a particular article test
Satisfying Machine or Transformation Test Machine/apparatus is specifically identified General purpose computer specifically programmed for method may be OK Machine/apparatus implements steps Machine/apparatus imposes meaningful limitations Not mere field-of-use or extra-solution activity
Satisfying Machine or Transformation Test (cont d) Particular article is changed in state or to differ Actual physical article Not intangible like a contract Data representing physical object OK Not mere change in location Not merely use of article There is new or different function or use for article Not mere field-of-use or extra-solution activity
PTO Guidelines Prior to evaluating a claim for patentability, establish the broadest reasonable interpretation of the claim. Analyze the claim as a whole when evaluating for patentability.
Natural Phenomena and Natural Products Step 2A first For natural products, markedly different from what exists in nature Step 2B - Does claim recite something significantly different than judicial exception? Recites meaningful limitations that add something of significance to the judicial exception
Abstract Ideas Abstract not defined by Supreme Court Includes: Fundamental economic practices Certain methods of organizing human activity Contracts, managing bingo, advertising Idea by itself Can be performed by human mind or pen and paper Mathematical relationships/formulas
Not Significantly More Adding the words apply it Mere instructions to implement abstract idea in a computer Adding routine and conventional known activities Requiring a generic computer to perform generic computer functions Adding insignificant extra solution Generally linking the judicial exception to a particular technological environment or field of use
Significantly More Improvements to another technology or technical field Improvements to functioning of a computer Apply judicial exception with a particular machine (the Bilski test) Transform a particular article to different state or thing
Significantly More (cont d) Adding limitation not well understood, routine or conventional Adding unconventional steps that combine a claim to a particular useful application Limitations linking use of judicial exception to a particular technological environment
Topics to Cover with Inventor Patent requirements Patentable subject matter Utility perpetual motion machine Novelty Inventor s own activities
Topics to Cover with Inventor (cont d) Patent requirements (cont d) Non-obvious Should do search in most cases unless -» Not enough money» Inventor is really an expert» Not enough time» Not for design
Topics to Cover with Inventor (cont d) Let the inventor talk ( 4:5.1) Why is this better than what is known? Do we need enough information to comply with 35 USC 112? Use checklist (Exhibit 15-1) Label the drawings with part names (Exhibit 8-1)
Topics to Cover with Inventor (cont d) Name the parts Take pictures Expedited examination
Topics to Cover with Inventor (cont d) Who are the inventors? ( 4.3) Anything special about the inventors? Age ( 2:9.3) Ill health ( 2:9.3) Deceased Uncooperative Do not become an inventor ( 4:5.3)
Topics to Cover with Inventor (cont d) Who are the inventors? ( 4.3) Anything special about the inventors? Age ( 2:9.3) Ill health ( 2:9.3) Deceased Uncooperative Do not become an inventor ( 4:5.3) Microentity, Small Entity ( 2:3.4)
Should an Application Be Filed? See checklist provided (Exhibit 4-1) Other reasons Ego Patent Pending Obtain Investors
Ordering a Patentability Search Reasons for ordering ( 5.3) Economics Helps in preparing the application Can be important for those situations where a patent has to issue Avoid Festo Determining whether to file foreign applications Expedited examination (Design applications)
Ordering a Patentability Search (cont d) Reasons not to order a patentability Search ( 5.4) Economics (Provisional application option) Time maybe in parallel with application preparation Little to be learned because of technology Inventor knows the art Design patent
Factors Affecting Cost of Search Technical area effect Searcher ( 5:5.1) Attorney fee portion ( 5:5.1)
Strategy re Patentability Searches Combine with a right to use search Where to search
Conducting Your Own Search For Patents http://www.uspto.gov Limits on keyword searches http://www.google.com/patents http://www.espacenet.com/index.en.htm http://www.pat2pdf.org http://www.freepatentsonline.com (advanced search) Lexis Total Patent
Conducting Your Own Search (cont d) Non-patent literature Databases of scientific articles Westlaw and Lexis have access to some journal articles and newspaper stories The Internet Google search; Wikipedia.org
What Searcher to Use Turn around time Price Technical background Used on similar technology Overseas searchers? Trade secret protection Technology export concerns Quality
Summary Interview well Weed them out Get a good search