Patent/product search and patent claims
Download
Report
Transcript Patent/product search and patent claims
Patenting:
Intellectual property overview and
Georgia Tech’s role
Sep 13, 2011
Craig Forest
ME 4182
Special thanks for slides and assistance from:
Patent It Yourself, David Pressman, NOLO, 2006.
Jonathan Colton: Georgia Tech Mechanical Engineering
LAURENCE P. COLTON, Smith, Gambrell & Russell LLP,Atlanta, GA 30309
Jonathan Goldman, VentureLab, [email protected]
"That reminds me to remark, in passing, that
the very first official thing I did, in my
administration -- and it was on the very
first day of it, too -- was to start a patent
office; for I knew that a country without a
patent office and good patent laws was
just a crab, and couldn't travel any way but
sideways or backways."
» Mark Twain (1889) - A Connecticut Yankee in King
Arthur's Court
US Patent office
• "Congress shall have 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." - U.S. Constitution Article
1. Section 8.
(1790)
Invention?! (patent = novel, non-obvious, useful)
Dieter and Schmidt.
ME450, F2008 – 5
[email protected]
ME450, F2008 – 6
[email protected]
Write your own claims
• Looking at prior art what is the essence of
the invention?
• Claims:
– Independent, broad statements
– Don’t recite specific features
Why would I want to take the
time to write and submit a
patent?
• Right to exclude – a utility patent
confers the right to exclude others
from making, using, selling, offering
for sale, or importing the patented
technology for 20 years
• To become rich and famous? Not likely
Patent Value Proposition
• Enhance value –
– increase the valuation of your company
– source of revenue to company
– provide collateral that can be used to obtain loans
• Attract investors –
– patents make company more attractive to investors
– patents are an asset
– investors prefer companies w/ limited or no viable competition
• Taxes –
– revenue can be channeled to low-tax jurisdiction
– research & development tax credits may be available in
favorable jurisdiction
Valuable Patents Characteristics
• Pioneer technology or major improvement –
– a. invention creates new industry - early transistor
patents, lasers.
– b. invention is so new that very little “prior art” exists
that can be used to reject claims (result can be
broad patent protection)
• Roadblocks – competitors or others must infringe
patent to carry out their enterprises (“land mines”)
• Widespread applications – valuable patents often
have applications across many different industries
TYPES OF PATENTS
•
•
•
•
Utility (the “normal” patent)
Design (“ornamental”)
Plant (roses and peaches)
Provisional (date holder)
A design patent
CONDITIONS OF
PATENTABILITY
• Utility (usefulness)
Subject matter:
– a. “machine” - apparatus, e.g. a computer executing
s/w
– b. “process” – e.g., one or more functions performed
by computer software
– c. “article of manufacture” - CD-ROM, diskette, DVD
storing computer software
• Novelty (newness)
• Non-Obviousness (not just the next step)
• Disclosure (enabling)
WHAT IS UTILITY?
•
Must be operable to perform intended
function
– must work
•
Must be directed to useful function
– must have a use
WHAT IS NOVELTY?
Must NOT be:
• Publicly known or used by others in the US
before the invention date
• Patented or described in a printed publication
anywhere either before the invention date or
more than 1 year prior to the US application
date
• In public use in the US more than 1 year prior to
the US application date
• On sale or offered for sale in the US more than
1 year prior to the US application date
WHAT IS NOVELTY?
Must NOT be:
• Abandoned or dedicated to the public
• Described in a later issued patent whose
application was filed prior to the invention date
• Invented by someone else
• Made by another in the US prior to the
invention date
WHAT IS NONOBVIOUS?
• The subject matter of the invention as a
whole must not be obvious at the time the
invention was made to a person having
ordinary skill in the art to which the subject
matter of the invention pertains
+
=
WHAT IS NON-OBVIOUS?
• This determined by:
– Survey the scope and content of the prior art
– The differences between the prior art and the
invention
– The level of ordinary skill in the art
1886 patent, Benz and Cie
Budgeting for Patents
(US Dollars, estimated)
1. US Application Budgeting
• patent search hard cost
• search report and analysis
• prepare patent application with
specification, claims, drawings, assignment
of patent rights, information disclosure
statement and cited documents
• patent prosecution
(per application)
$ 500 - 1,000
$ 2,500 - 5,000
$10,000 - 40,000
$ 5,000 - 15,000
TIMELINE
Georgia Tech’s role
• 2 options
– Work with GT’s lawyers in the OTL to search,
file PPA, utility, etc.
• Benefits: free, less diligence required of you
• Drawbacks: less royalties for you, your own
company may have to pay GT to license invention
– Get a release, takes a week if minimal use of
GT resources in invention process
• You’re on your own… don’t be afraid
Patent search
• Look for something with the hope that you
won’t find it!
• Steps:
– Write out nature and essence of your
invention
– Identify key words, classes, and subclasses
– Study patents found to see if invention is
patentable, identify prior art to write claims
around it
Write your own claims
• Looking at prior art what is the essence of
your invention?
• Claims:
– Independent, broad statements
– Don’t recite specific features
How to search patents and prior art
•
•
•
•
•
•
•
•
•
•
•
http://patft.uspto.gov/
http://free.patentfetcher.com/
http://www.thomasnet.com/
http://www.library.gatech.edu/
Pay a guru to search with/for you using $$$ databases
USPTO, full text of US patents and applications,
http://www.uspto.gov/patft/index.html
Applications published 18 months after filing date
WIPO, PCT applications, http://www.wipo.int/pctdb/en/
Euro: http://ep.espace.net.com
Google Patents, US granted only, http://www.google.com/patents
Patent fetcher – input #, get a pdf, http://www.patentfetcher.com
Other types of IP
•
Patent: utility, design, plant,
international, provisional
• Trade Secret
• Trademark/Service Mark
• Copyright
INTERNATIONAL PATENT
PRTOECTION
• Each country’s or region’s patent protects the
invention only in that country or region
• Regions include Europe (EPO), Parts of Africa
(ARIPO and OAPI), and Eurasia
• Most Non-US countries do NOT have the 1year grace period
• Patent Cooperation Treaty (PCT) is an umbrella
filing for member countries
• Paris Convention allows claiming priority on
previously filed applications in member
countries
end
WHAT IS A
DISCLOSURE?
• The patent application must contain:
– Sufficient written description of the invention
– Sufficient detail to enable one of ordinary skill
in the art to make and use the invention
– The best mode of the invention contemplated
by the
inventor at the time of filing
– One or more claims particularly pointing out
and
distinctly claiming the invention