Presentation by Dr. Michael Meehan

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Transcript Presentation by Dr. Michael Meehan

How to Lose your Innovation in
Ten Easy Steps
Michael J. Meehan, JD, PhD
Registered Patent Attorney
Knobbe Martens Olson & Bear
[email protected]
There are numerous types of innovation
 Innovation, innovation, innovation
 Patent – Novel, non-obvious, protectable*
Windshield and wiper for a horse (sorry, but its
 Trademark – The image of my product
Nike’s swoosh
 Copyright – Expression of an idea, not the idea itself
Text of a book
 Trade Secret – Anything you can hide*
Formula for Coke
Now that I have an innovation…
 How can I lose it?
 So many ways
 For most of these actions, you have one year
Test it out
 Perform a few test runs, Give to beta customers
 Mechanic Lough v. Brunswick
 Mr. Lough – a boat repair man that made a new seal for a motor
 Tried it in his & friends’ boats & Patented it 2+ years later
 Brunswick “stole” the idea – But patent invalid
 Rubik’s cube (Moleculon Research Corp)
 Nichols invented it in grad school, used it in private and where he
had a “legitimate expectation of privacy” – not public use.
Moleculon’s patent stands in later litigation
 Lesson: Get an NDA from test subject and beta customers! Or just
patent it before testing.
Publish it
 Publish?
 You have one year to file a patent
 MIT Patentee spoke and distributed copies at a
 Even distributed copies are considered “published”
 Undergrad students’ theses, indexed by subject matter in
a Reed College Library –”published”
 Lesson: If you plan to patent, do it before publishing, but
at the very least right after
Inspire, but don’t invent
 Dr. E. and American Cyanamid were trying to increase
absorption of iron in pregnant women
 They performed a test and told others
 Other Drs. Performed follow up studies, & published their
results in the New England Journal of Medicine
 Dr. E and Cyanamid copied (literally) their results and
patented them
 Once the Drs saw the patent, they filed for unjust
enrichment and other claims – and won over $50 million
 Lesson: Even if the idea to innovate is yours, you have
to be the inventor to patent
 Chou v. U. Chicago
 (Now Dr.) Chuo was a grad student of Dr. R. working
on using herpes virus as an avirulent vaccine
 Dr. R patented the work as sole inventor
 Invention later assigned to a company
 Chuo should be allowed a share of proceeds
 She received a “favorable” settlement
 Lesson: If you collaborate and invent, make sure you get
the inventors right!
Collaborate (again – so important!)
 Dr. Yoon working on a trocar (a device to make small incisions for
endoscopic surgery)
 Hired Choi, an electrician, to help on trocar and other projects
 Dr. Yoon fired Choi & filed a patent as sole inventor
 Dr. Yoon (“Ethicon, Inc.” ironically) later sued US Surgical
 US Surgical obtained a license from Choi ($300k + $100k / year!)
 Then filed to get Choi added as an inventor
 They won
 Dr. Yoon got nothing!
 Lesson: If you collaborate and invent, make sure you get the
inventors right!
Sell it
 Paragon patented orthotics & brought suit against KLM
 Paragon had sold the orthotics > 1 year before patenting
 Patent invalid
 Lesson: Patent before you sell – or at least within one
Offer it for sale
 UMC Electronics patented an accelerometer system for
counting the times a plane has lifted off & landed
 It sued US government
 On-sale bar found – patent invalid
 Prototypes (not the invention, but a “substantial
embodiment of the invention”) made > 1 year before
 Invention (not prototypes) was offered for sale > 1
year before patenting
 Lesson: Even if your invention is not 100% built,
consider an offer to sell it as triggering the on-sale bar
Forget to patent
 “Theft” of your idea
 Is it really stealing? Only if you have a “property right”
 Facebook: Winklevosses and Narendra received settlement of $65
million, but not clear why
 Contract breach?
 Public relations move for Facebook?
 Not patent rights
 If the ConnectU team had a patent, that $65 million likely much
 Lesson: protect your ideas or you cannot protect yourself
Abandon, suppress, or conceal it
 Gore v. Garlock:
 Gore invented a process for stretching Teflon
 Budd created same (?) process earlier, but kept it secret
 Budd’s same or not: suppressed / concealed
 Public not “in possession” – not prior art to Gore
 If Budd had later filed a patent application (not in this case),
earlier “invention” irrelevant – cut off by concealment
 Lesson: If you are going to hold off on something for a
while, patent it or risk intervening innovation by another
Forget to tell people it is secret
 Paragon’s orthotics again
 Claimed that the sales were for experimental use and
were meant to be “secret”
 Forgot to tell anyone else that
 Sales barring
 Lesson: get an NDA, contract, or some sort of protection
of privacy
Lose your patent everywhere
 Most international rights lost upon disclosure
 US: you get one year…for now
 Proposed patent reform could revise this
 Appears to be first-to-file, with one year grace period
Let me count the ways
 There are so, so many other ways
 Advice: Treat your innovations as trade secrets until you
file a patent
 Keeping it secret
Forever: trade secret
For now: then file a patent (or a provisional)
PS: If this were legal advice,
you would be getting a bill
[email protected]