Making Smart Patent Decisions:

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1 October 3, 2017 Making Smart Patent Decisions: What Can Be Patented and What Are the Considerations When Deciding Whether or Not to File a Patent Application M. Angela Parsons, Ph.D. Senior Patent Agent Bethany Loftin Chief Operating Officer

2 Why is Intellectual Property Protection Important? Generation of revenue by way of royalty payments Permit revenue without need for making, using, or selling invention Permit revenue by allowing others to use invention multiple parties via field of use licenses Control over invention Who is using it How it is being used Require correct acknowledgement Credibility of research & science

3 Why is Intellectual Property Protection Important? Defensive patenting Enticing a company to: sponsor research bring a product to market

4 Why is Intellectual Property Protection Important? Bargaining chips to exchange with other companies for use of their intellectual property provide defensive counterattacks Exclude competitors from best products or most efficient processes Discourage knock-offs, counterfeits, and other products of similar design Injunctions/damages available if infringement occurs Decrease risks and levels of uncertainty Increase competitors risks and levels of uncertainty

5 Why Making Smart Patenting Decisions is Important Patents are expensive..but can generate revenue In addition to money, good patents take time and effort from you from your inventors Important to remember that a patent is not a publication

6 Types of Intellectual Property Patents Trademarks Copyrights Trade secrets

7 Determining the Technology s Commercial Value Why do I care about commercial value? This can be tricky to explain to your inventors This differs from a legal or scientific evaluation the scientific and creative side of inventions are generally topnotch science alone, even good science, does not create a market a market need for the innovation

8 Commercial Value Things to Consider What is the commercial application? Relationship of invention to a product-commercial application What problem does this invention solve? Competitive technologies What technologies are currently addressing this problem? How many? How is your technology better? Market dynamics What s the target market Who are the players in the market Size and current trendsneed for the innovation

9 Commercial Value Things to Consider Development plan and pathway What s the current stage of development? How much needs to be done (money invested) to get this to market Regulatory considerations Licensing to an existing company v. creating a start-up company Knowing which one is more appropriate Potential Enforceability need for the innovation

10 Types of Patent Applications Provisional application Utility (Non-provisional) application Patent Cooperation Treaty (PCT) application Design application protects the ornamental features of an object; not nearly as common as utility applications Plant application protects distinct and new varieties of plants that are asexually reproduced

11 Types of Patent Applications Provisional application Utility (Non-provisional) application Patent Cooperation Treaty (PCT) application Design application protects the ornamental features of an object; not nearly as common as utility applications Plant application protects distinct and new varieties of plants that are asexually reproduced

12 Prosecution of U.S. Application File Application Possible Formality Issues Notice to File Missing Parts and Possible Restriction Requirement First Examiner s Office Action Applicant s Reply to First Office Action Final Examiner s Office Action Applicant s Reply to Final Office Action Conclusion of Prosecution (allowance, abandonment or appeal)

13 Timeline - from Invention to Patent Expiration $$ $ $ $ Invention File Application Prosecution Issuance Expiration Enforcement = $$$$

14 Requirements for Patentability 35 USC 101 ( 101 ) Statutory Subject Matter Utility Requirement 35 USC 102 Novelty ( 102 ) 35 USC Non-Obviousness ( 103 ) 35 USC 112 ( 112 ) First Paragraph -- Written Description, Enablement & Best Mode Second Paragraph -- Definiteness

15 Requirements for Patentability 35 U.S.C. 101 ( 101 ) Statutory Subject Matter: Mayo, Myriad & Alice Supreme Court decisions Utility Requirement 35 U.S.C. 102 Novelty ( 102 ) 35 U.S.C Non-Obviousness ( 103 ) 35 U.S.C. 112 ( 112 ) First Paragraph -- Written Description & Enablement (& Best Mode) Second Paragraph -- Definiteness

16 Requirements for Patentability Mayo -- diagnostics Myriad -- DNA Alice computer software PTO Guidance

17 Keep Considering Throughout the Patent Process Important to keep the commercial value in consideration throughout the patenting process Talk to your attorney and industry experts about how changes in your patent during prosecution may change the commercial value Choosing the right countries to file in? Where will your product/technology be sold? Where will it be used? Where will it be manufactured? Where are the major players located? Market dynamics the innovation

18 Important Things to Remember The Effect of Publication or Public Disclosure on your ability to patent In the United States Worldwide Federally Funded Technologies Terms and Conditions of your grant require you to tell the funding agency about inventions regardless of whether you decide to file for patent protection Your reporting requirements to the agencies may effect the timeline in which decisions need to be made Importance of Inventor Involvement Just because patent protection may not be available or appropriate, doesn t mean there aren t other means of protecting or disseminating your innovations.innovation

19 Important Things to Remember The Effect of Publication or Public Disclosure on your ability to patent In the United States Worldwide Federally Funded Technologies Terms and Conditions of your grant require you to tell the funding agency about inventions regardless of whether you decide to file for patent protection Your reporting requirements to the agencies may effect the timeline in which decisions need to be made Importance of Inventor Involvement innovation

20 Thank you