Transcript Lorem Ipsum - Brandeis University

PATENTS
What You Need To Know
Robert Benson
Office of Technology Development
Harvard University
Brandeis University – October 20, 2005
Patents – what you need to know
• What a patent is and what it isn’t
• What legal rights they provide
• Why they are important
• What makes an invention patentable
• What you need to know to protect your patent rights
• Patenting Process
A patent is a legal document that, for
a certain time, provides the owner the
right to prevent others from making,
using, selling or importing the
claimed invention
Claim 1 of Lieber US Patent 6,781,166
An article comprising:
An electrical crossbar array comprising at least two crossed
wires, at least one of which is a nanoscopic wire,
wherein the at least two wires are in contact with each
other.
A patent is not a monopoly
• It is the right to exclude others from the claimed invention
• Other dominating patents may prevent you from
practicing your own invention – for example carbon
nanotubes are patented by others
• Patents don’t last forever – typically (with exceptions)
they last 20 years from the filing date of the first regular
patent filing
Patents are important to companies
because they limit competition for a
time and thereby encourage
investment to develop the invention
into a marketable product
Example: Nantero
A Woburn startup and exclusive licensee of
this Lieber patent that is developing a nonvolatile universal computer memory based on
carbon nanotubes
The Nantero example shows why
it is so important for universities to
patent their inventions – it would
have been unlikely that Nantero
would have started without the
licensed Lieber patent offering
security to the initial investors
What makes an invention patentable?
The claimed invention must:
a) be within a certain class of invention
b) be novel & unobvious in view of prior art
c) be described and enabled by the specification – you
must teach the world how to make and use your
invention, including the best way you know
d) the invention must have a practical use
Patentable Classes of Invention
a) Compositions of Matter
b) Articles of manufacture
c) Methods
d) Improvements to the above
Prior Art
The totality of what is publicly known the
day before you file your patent application
Practically, this means:
• Journal articles – published or on web
• Published patents and patent applications
• Abstracts and Poster Sessions – published, on web or
presented
• Talks at public meetings
Novelty: Prior art describes your
claimed invention
Obviousness: prior art suggests your
invention and its likely success
Written Description, Enablement
and Best Mode
The patent specification must:
a) describe what the invention is - written description
b) how to make and to use the invention – enablement
c) including the best ways you know - best mode
The broader the enablement the broader the
claims
Claim 1 of Lieber US Patent
6,781,166
An article comprising:
An electrical crossbar array comprising at least two
crossed wires, at least one of which is a nanoscopic
wire, wherein the at least two wires are in contact with
each other.
Written Description,
Enablement and Best Mode
“While nanotubes, and in
particular carbon
nanotubes, are preferred
for use in the invention,
any nanoscopic-scale
wires can be used,
including nanoscopic
wires such as nanorods,
nanowires, organic and
inorganic conductive and
semiconducting
polymers, and the like.”
Utility Requirement
The claimed invention must have a practical,
immediate and specific utility
In Re Fisher
Just decided by the patent appeals court,
ESTs, Expressed Sequence Tags, generally
do not have a patentable utility
Prior art in more detail
For Universities prior art from other
parties and from their own disclosures
before filing are the biggest obstacles
to getting strong patents
Provisional Patent
Application Serial No.
60/142,216, filed Jul. 2,
1999.
Rueckes, Thomas et al.,
"Carbon NanotubeBased Nonvolatile
Random Access Memory
for Molecular
Computing," Jul. 7,
2000, Science, vol. 289,
pp. 94-97.
Effect of your own public disclosure
of your invention before filing a
patent application is different in the
US and most foreign countries
In the US –
a one year grace period allows you to
file a year after the disclosure and
your public disclosures will not be
considered prior art
In most foreign jurisdictions –
If you fail to file prior to disclosure,
you lose the right to get a patent.
This includes Europe, China, and
Korea
Lesson 1:
Report your inventions early so they
can be filed before disclosure
When should you report your invention?
• Ideal: As soon as think you have discovered something
important (even if more experiments may need to be
done)
• Adequate: At same time manuscript is sent to journal or
abstract is sent to conference organizers
When should you report your invention?
• Possible: Day before disclosure if invention is in written
form (ROI or manuscript)
• Minimal: Before a year has passed since public
disclosure – can get valuable US rights
Secret prior art:
Other parties’ patent applications
claiming same invention as your
invention
What happens if two parties file
patent applications on the same
invention?
Only one gets a patent, the other
doesn’t.
In most foreign jurisdictions:
the party that files first wins
“first-to-file”
includes Europe, China, Japan
In the US an interference proceeding
at the US Patent Office determines
who was the first inventor
“first-to-invent”
How to protect your patent rights:
#1 report your inventions as early as possible so they can
be filed as early as possible to beat out competitors in
first-to-file countries
#2 Document your work in bound notebooks, describe your
work and its significance and date the pages so you can
win an interference in the US
Patenting Process
• File provisional patent application in USPTO
• At one year: file PCT International Patent Application
which gives right to file in all industrial countries later
(except Taiwan)
• At two and one half years: file in individual patent offices
around the world: US, Europe, China etc.
Typical Patenting Path
File National
Phase
Application
File Initial
Patent
Application
(US, Korea,
Europe, etc.)
1 yr
Patents!
2 ½ yrs
0 yrs
Prosecution
File PCT
International
Application
Types of Patent applications
• US Provisional application
• Regular or Utility US application
• PCT International Patent Application
• National Phase filings – regular filings in foreign patent
offices
• European patent application – EU wide patent
application – still requires eventually filing in individual
EU countries
Reconciling the fundamental
academic value of open
communications and public
disclosure of advances with the
global patent system
It can be done: First Year of the
Patenting Process
Initial
Discovery
Disclose Initial
Discovery
Disclose
Further
Discovery
File PCT
International
Application
Combining all
discoveries
0 yrs
1 yr
File first
Patent
Application
Further
Discovery
File 2nd
Patent
Application
adding
further
discovery
More
Discovery