Transcript UNIVERSITY OF PENNSYLVANIA ESE Senior Design Lecture The America Invents Act (AIA) and Engineering Notebooks September 22 2014 William H.

UNIVERSITY OF PENNSYLVANIA
ESE Senior Design Lecture
The America Invents Act (AIA)
and
Engineering Notebooks
September 22 2014
William H. Murray, Esq
[email protected]
1
What Is Protectable Intellectual
Property?
Product of human intellect that is:
 Unique
 Unobvious
 Has value
2
Basic Forms of Protection of
Intellectual Property

Patent

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Trademark
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Term – 20 years from effective filing date
Term – 10 years plus 10 year renewals
Copyright

Terms –
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Named author - 70 years after death
Anonymous work – 120 years after creation
Corporate author – 95 years after creation
Trade Secret
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Term – indefinite as long as secrecy is maintained
3
Patent Protection

Patent owners granted the right under U. S.
patent law (35 USC) to exclude others from

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making
selling or offering to sell
using
importing into the US
the patented invention
4
Patent Protection (cont)

The grant is the right to exclude only.


Not the right to practice the patented
invention
Example: Patents on improvements to the
patented invention of another
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Has exclusive rights to improvement but cannot
practice the combination of the basic invention and
the improvement without permission of owner of
patent on the basic invention
5
Foreign Patent Protection


The grant conveyed by a United States patent is the
right to exclude others from making, using and selling
only in the US.
One must apply for patent protection in those foreign
countries where such protection is desired.
 Patent protection cannot be obtained in most foreign
countries if the invention has been publicly disclosed
or used before the earliest patent application filing
date.
 Foreign patent applications must be filed within 12
months of the US filing date in order to obtain benefit
of the earlier US filing date.
6
US Patent Process
Overview

Initiated by filing a patent application, either
provisional or formal
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the provisional application must be converted to a
formal application within 12 months of filing to
prevent it from becoming abandoned
The formal application is examined by a PTO
examiner, familiar with the art to which the
claimed invention pertains, for compliance with
the patent laws
If compliant, the application issues as a patent
7
US Patent Process
Basic Documents
 Provisional
Patent Application
 Patent Application
 Patent
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Provisional Patent Application
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Provisional Patent Applications 35 USC §111(b)


Requires a specification and drawing but does not require
claims.
 The specification must meet the disclosure requirements – a
clear and concise written description of the invention
sufficient to enable one skilled in the art to make and use
same (§112(a)) – but need not be in a formal patent
application style
 If drawings are necessary to understand the invention, they
may be informal
Note - Will become abandoned 12 months after filing if
not converted to a formal application 35 USC §111(b)(5)
9
Patent Application

Formal Patent Applications

Requires a specification, drawing and claims.
Specification – must contain a clear and concise
written description of the invention sufficient to
enable one skilled in the art to make and use
same – 35 USC §112(a)
 Claims – one or more at the conclusion of the
specification which particularly point out and
distinctly claim the invention – 35 USC §112(b)
 Drawings - required if necessary to understand the
invention – 35 USC §113
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Patent

Contains –
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short title of the invention claimed,
the specification and drawing, and
a grant to the patentee, his heirs or assigns, of the
right to exclude others from making, using, offering
for sale, or selling the invention throughout the
United States or importing the invention into the
United States, and, if the invention is a process, of
the right to exclude others from using, offering for
sale, or selling throughout the United States, or
importing into the United States, products made by
that process – 35 USC §154
11
What’s Up With AIA?

Implements the conversion of the U.S.
patent system from a “first-to-invent” to
“first inventor to file”

the new regime is contained in Title 35 of the
United States Code section 102 (35 USC 102)
spells out what is prior art to an invention in new
35 USC 102(a)
 provides exceptions to new 35 USC 102(a) in new
35 USC 102(b)

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35 USC §102(a)
Prior Art
A person shall be entitled to a patent unless —
(1) the claimed invention was patented, described in
a printed publication, or in public use, on sale, or
otherwise available to the public before the effective
filing date of the claimed invention; or
(2) the claimed invention was described in an issued
patent or a published patent application which names
another inventor and was effectively filed before the
effective filing date of the claimed invention
13
35 USC §102(b)(1)
Exceptions - Grace Period

35 USC §102(b) defines exceptions to the prior art
which includes a grace period - 35 USC §102(b)(1)
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The grace period applies to the public disclosure of an invention
within one year prior to the effective filing date of the
application disclosing and claiming that invention, but only if the
disclosure was by an inventor or one who derived the invention
from an inventor
 No longer can an inventor antedate a disclosure by another
within one year of the effective filing date, unless that
disclosure was obtained from the inventor (no swearing
behind another’s publication)
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Effect of Grace Period On Prior Art
First Example
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A invents X and immediately publishes
thereafter, B independently publishes
subject matter of invention X
Within one year of A’s publication of
invention X, A files patent application
claiming X
RESULT?
15
Result

B’s publication is not prior art even
though published before A filed application
because A made the first public disclosure
no earlier than one year prior to filing the
application – 35 USC §102(b)(1)(B)
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Effect of Grace Period On Prior Art
Second Example

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A invents X and communicates X to B as
part of a collaboration
thereafter B, a non-inventor, publishes the
subject matter of X
Within one year of B’s publication of
invention X, A files patent application
claiming X
RESULT?
17
Result

Assuming X is patentable, A is entitled to
the patent if A can establish inventorship
and communication of X to B - 35 USC
§102(b)(1)(A)
18
Grace Period And
Defensive Publications

An inventor’s disclosure within the one year grace
period eliminates from prior art any subsequent
disclosures of the same invention by another occurring
after an inventor’s disclosure but before that inventor
files a patent application.
 Early public disclosure by the inventor can be used to
protect the patentability of an invention while an
application is being prepared – but such a strategy
results in surrendering most foreign rights.
 Note - a better strategy would be to file a provisional
patent application
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Grace Period
Summary
Disclosures during the grace period of the
invention by the inventor, or by a third
party that derived the invention from the
inventor, will not be considered prior art
20
Derivation
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Effect of Derivation on Prior Art –
disclosures appearing in applications and
patents shall not be considered prior art if
the subject matter disclosed was obtained
directly or indirectly from the inventor or
joint inventor (§102(b)(2)(A)).
21
Derivation (cont)

Effect of Derivation on Patent Rights –
the first filer is not entitled to any claims
in either a patent application or issued
patent which are directed to an invention
shown to have been derived from a later
filer (§291 “Derived Patents” and
§135(d) “Derivation Proceedings, Effect
of Final Decision”).
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Derivation (cont)

There are three requirements necessary to
establish derivation  First - a prior, complete conception of
the claimed subject matter, and
 Second - communication of the
complete concept to the party charged
with derivation
 Third – the prior application was filed
without authorization.
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Inventors
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Who Is An Inventor?
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One who contributes to the conception of the subject
matter of the claimed invention.
Conception is the formation of a definite and
permanent idea of the complete and operative
invention.
 The idea must be sufficiently detailed that the
inventor could describe all of the elements of the
invention in a manner that would permit one of
ordinary skill to understand and then reduce the
invention to practice without undue
experimentation
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Joint Inventors

A joint inventor is one whose contribution to the
conception of the claimed invention is not
insignificant in quality, when that contribution is
measured against the dimension of the full
invention.
The principle of joint inventorship contemplates
some form of collaboration or concerted effort
between inventors.
 Joint inventorship can be based upon contribution
to a single claim.
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Conception
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Rules of Conception
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To show conception, an inventor must present proof showing
recognition or knowledge of each feature of the count and
communicated to a corroborating witness in sufficient detail to
enable one of skill in the art to replicate the invention.
Conception does not occur until the inventive idea is crystallized
in all of its essential attributes and becomes so clearly defined in
the mind of the inventor as to be capable of being converted to
reality and reduced to practice by the inventor or by one skilled
in the art
Engineering notebooks, which contain contemporaneous entries
of the work performed, are an important form of proof of
conception and the date on which conception was achieved
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Conception (cont)
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Corroboration
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proof of complete conception cannot be established with
the prior inventor’s testimony alone; such proof requires
corroboration with contemporaneous evidence
One must present corroborating evidence of a complete
conception of the claimed subject matter
Adequate corroborative evidence includes physical,
documentary or circumstantial evidence, or reliable
testimony from individuals other than the alleged inventor
or an interested party.
An important form of the required corroboration is
typically provided by engineering notebooks which
contain contemporaneous entries of the work performed.
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Engineering Notebooks
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Provide a permanent, chronological record
of research which
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documents what was done during the course
of a task or project
establishes what inventions were made, when
and by whom
can provide credible evidence of inventorship
when properly corroborated
Important when issues of derivation arise
28
Engineering Notebooks
Best Practices
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Preferably bound with numbered pages.
Should be kept by everyone whose work involves innovation and
creativity.
Entries should be made contemporaneously as the work is
performed and maintained in chronological order.
Each page should be signed and dated by the inventor and should
be signed by a witness who understands the entries.
Thus, each page of the laboratory notebook preferably contains the
following notation in addition to the signature of the person
performing the work and the date the entry was made:
“Witnessed and understood by:
_____________________
Date: _________”
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Engineering Notebooks
Best Practices (cont)
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Engineering Notebook Entries
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Identify task or project
Record everything related to that task or project
Entries should be as descriptive as possible including
sketches if required to provide a detailed
understanding of the entry
All entries should be dated, legible, factual
information and data, both qualitative and
quantitative
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Engineering Notebooks
Best Practices (cont)
 CAUTION
 Never
erase entries – place a line
through an entry to be deleted,
leaving the underlying material legible
 Never remove pages
 Never leave a page totally blank
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Engineering Notebooks
Best Practices (cont)
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Best Practices Checklist
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Make entries legibly and in permanent form
Date entries
Do not erase or otherwise change entries
Use consecutive pages
Do not remove pages
Avoid blank pages
Identify task or project
Include and explain sketches, diagrams, etc
Permanently attach and identify photos, charts, etc
Have entries frequently witnessed
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DON’T FORGET
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Engineering Notebooks
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Why Are They Important?
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Can be used to provide credible evidence of date of
conception
Can be extremely important if an allegation of derivation
is made
 chronological detailed factual entries can be used
later to provide the date of invention
 witnesses can later provide corroborating testimony
Can be used as the basis for filing a provisional patent
application.
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DON’T FORGET (cont)
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Provisional Patent Applications §111(b)
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Why Are They Important?
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Considering the informal nature of a provisional patent
application, a copy of pertinent pages of a well kept
engineering notebook can be used as the basis for the
required specification and drawing.
Benefit – because of its informal nature, a provisional patent
application can be prepared and filed very quickly, especially
if notebook entries are used.
Caveat – to preserve its early filing date, the provisional
application must be converted to a non-provisional
application within 12 months (§111(b)(5)).
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DON’T FORGET (cont)
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Avoid public disclosure of invention before
patent application is filed.
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Why Is This Important?

Although there is a one year grace period in the United
States for filing a patent application after a public disclosure
is made, there is no grace period in the other major
industrialized countries of the world – as a result,
important world-wide rights could be lost
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Electronic Engineering Notebooks
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The courts have long recognized that traditional, hard bound paper
engineering notebooks can be the source of reliable, credible
documentary evidence. However, as with most technology, the law
lags advances, even those readily understood and accepted by the
scientific community. For example:
 results of breathalyzers finally deemed sufficiently reliable as a
reliable indicator of intoxication
 On the other hand lie detector results are still deemed
inadmissible in a number of jurisdictions
Electronic records are gaining recognition as reliable documentary
evidence. However, in an abundance of caution, it is highly
advisable that invention records also be kept in conventional
notebook form, which has traditionally been admitted into evidence.
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QUESTIONS ?
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