from idea to patent pending: writing a good provisional · 2018-12-20 · provisional writing tips...
Post on 04-Aug-2020
1 Views
Preview:
TRANSCRIPT
From Idea to Patent Pending: Writing a Good Provisional
Von Liebig – OIC Entrepreneurism “VOICE” SeriesNovember 4, 2016
Greg Einhorn – Greer, Burns & CrainVictoria Cajipe – UC San Diego OIC
Disclaimer: The materials presented herein are for informational purposes only and not for the purpose of providing legal advice.
FIRST INVENTOR TO FILE REGIMEEffective March 16, 2013
America Invents Act (AIA) Modernizing U.S. Patent Law
The Innovation & Commercialization Loop
Disclose to OIC before publishing
LaunchStartupIf advantageous
License, develop, monitor diligence, support startups
Pursue patent strategy in sync with
merits & market
OIC will work closely with UCSD researcher through all phases of the cycle
Commercialize, reap economic & social benefit, fuel new
research
Seek commercialopportunities
Patenting Process Timeline
http://www.research.ucla.edu/tech/patent_timeline.pdf
Outline
Patent basicsProvisional: what, why, when, how
Examples/ExercisesQ & A
What is a Patent?
form of intellectual property exclusive rights granted by state to inventor (or assignee) for limited time period in exchange for disclosing invention to the public NOT the right to make, use, offer for sale, sell or import, but the right to EXCLUDE OTHERS from making, using, offering for sale, selling or importing the invention
Qualcomm – over 14,000 US Patents•“Patent Wall”: right to exclude others• But including others can be lucrative: License patent rights -> royalty stream ($B profit)
http://www.politico.com/story/2011/03/small-businesses-make-a-big-impact-051512
Types of Patents
Utility Patents Term: 20 years from filing of application 90% of USPTO patents
Design Patents14 years from grant
Plant Patents20 years from filing
Utility Patent
New Non-obvious Useful Subject matterComposition of matterProcess MachineArticle of manufactureImprovement
• Novelty Not previously patented, published or
known to public In US, 1-year grace period between public
disclosure and filing Avoid public disclosure with confidentiality
agreement• Non-obviousness or Inventive Step Not obvious to one with ordinary skill in art
• Utility Has useful purpose and will perform
Anatomy of a Patent(or Patent Application)
Front page
Anatomy of a Patent (continued)
Formal Drawings Show every feature of invention given in claims
Specification Background, Summary, Description, Examples Support every feature given in claims In Description: explain invention, process of
making and using invention in full, clear, concise, exact terms so person of ordinary skill in art can make and use invention without extensive experimentation -> teach the invention
Anatomy of a Patent (continued)
Claim(s) Point out and distinctly claim that which is regarded
as the invention (composition, process/method, machine/device, manufacture/product) Construct and word carefully Stake out invention’s boundariesWhat is examined/allowed by USPTO*What is protected, what others are excluded from
making, using, selling …
Hire/consult a patent attorney/agent!*United States Patent and Trademark Office
What is a provisional application?
Legal document describing invention filed with USPTO Establishes early filing “priority” date Does not mature into issued patent no examination of claims
Unless applicant files regular non-provisional patent application within one year
What is a provisional application? (continued)
Not published officially But becomes publicly available if pursue regular patent application (when regular publishes) USPTO PAIR (Patent Application Information Retrieval)http://portal.uspto.gov/pair/PublicPair
WIPO* Patentscopehttps://patentscope.wipo.int/search/en/advancedSearch.jsf
*World Intellectual Property Organization
Why file a provisional?
Inexpensive Helps ensure “first inventor to file” status Puts invention in “patent pending” state Gives applicant time to further develop, market and assess commercial potential of invention
Good strategy for universities (high volume) & startups/independent inventors (low cash)
When to file a provisional?
Before public disclosure (or, if published, before 1-year from publication, to preserve US patent rights)
Invention is sufficiently “enabled” (you are in possession of invention) Can describe how to make and use Preferably, reduced to practice & works
Balance “first to file” with need/ability to develop during 1-year provisional term
A good provisional? Much like a patent or non-provisional patent application (ideally, not just an already existing document attached to provisional cover sheet) Specification should be as complete, clear and exact as possibleInclude everything you have/know about inventionTry to be prophetic, broaden invention scope Priority date only for what provisional discloses
Even if not examined, provide some claimsElucidates invention & what to include in spec
Provisional writing - preparation
Answer questions:What is your invention (composition, process, machine, article of manufacture)?What is unique about it?What is existing art? compare with invention? How does invention work? Possible applications?
Provisional writing – preparation (continued)
Find patents for similar, related inventionsPatent landscape clarifies novelty, non-obviousness,
potential of your inventionUse as model for content, language, claims
Databases:USPTO https://www.uspto.gov/patents-application-process/search-patents
WIPO Patentscope https://patentscope.wipo.int/search/en/search.jsf
EPO Espacenet https://worldwide.espacenet.com/
Google Patents https://www.google.com/patents
Free Patents Online http://www.freepatentsonline.com/search.html
Provisional application proper• Title: short, precise, specific• List of Inventors• Government Support Statement• Technical Field• Background: context, other approaches, “prior art” (patent, publications, other public information)
• Brief Summary of the Invention: problem addressed, novel solution provided
• Brief Description of the Drawings
Provisional application proper (continued)
• Detailed Description of the Invention• References• Claims• Abstract• Drawings: marked up figures, photos OK• Appendices or Attachments: for completeness
Provisional writing tips Description: specific and broad at same timeDescribe best mode; detailed parts, connections,
properties - enough so can reproduce inventionUse quantitative bounds and rangesAvoid restrictive language (e.g., “must”, “essential”)Discuss variations, extensions
Explain why your invention is not obvious Give example(s) of intended use Claims: preliminaryFocus on main featuresGive details but do not limit
Provisional filing preparation Make PDF of written description documentTitle...Detailed Description…Claims, Abstractspecification.pdf
Make PDF of drawingsdrawings.pdf
Make PDF of attachments, if anyattachments.pdf
Fill in and save PDF provisional cover sheethttps://www.uspto.gov/sites/default/files/forms/sb0016.pdftransmittal.pdf
Provisional filing online (continued)
Or, EFS-Web Unregistered eFiler
for basic initial filing of new patent applicationshttps://efs.uspto.gov/EFSWebUIUnregistered/EFSWebUnregistered
http://patentfile.org/filing-provisional-patent-at-uspto/
• Attach PDF files; choose Document Description• Press Upload & Validate, if No errors, Continue• Next screen, Calculate Fees
Small/micro entity (independent inventor, small company, non-profit) Select Provisional Input number of pages (including drawings) Press Calculate
• Review• Pay
USPTO Receipt = Patent Pending! Provisional Application Number Filing Date 12 month clock
• Provisional Application filing fee = $260 • Small entities = $130• Micro entitiy = $65 USPTO-defined small entity Not > 4 previously filed applications Gross income not > 3X median household income in
previous year No obligation to assign, grant, or convey to another
entity not meeting inventor’s income requirements
Pay filing fee
Provisional writing web resourcesHow to Patent an Idea in 3-Steps with a Provisional Applicationhttp://patentfile.org/how-to-patent-an-idea/http://patentfile.org/category/provisional-patent-applications-how-to-file/Nolo’s Guide to Provisional Patent Applicationshttp://nolonow.nolo.com/noe/popup/provisional_patent_application_guide.pdf Free Provisional Templateshttp://patentfile.org/free-provisional-patent-template/http://www.noreklaw.com/forms/Provisional-Template.docLegal Zoom: How to Write a Provisional Patent Applicationhttp://info.legalzoom.com/write-provisional-patent-application-20204.htmlTips For Drafting Provisional Patent Applicationshttp://www.kb-ip.com/articles/tips-drafting-provisional-patent-applicationsWriting Provisional Software Patent Applicationshttp://www.pckip.com/patent-strategy/writing-provisional-software-patent-applicationsIP Watchdog Do It Yourself Patents: Patent Filing Made Easy – Just $99http://www.ipwatchdog.com/patent/invent-patent-system/
USPTO: Provisional Application for Patenthttps://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent
Google “provisional patent videos”
Examples / Exercises
http://rpsec.usca.edu/campinvention/camp-invention-lightbulb2.png
Example #1
Problem: Misplacing eyeglasses
Idea!• What is it?• Novel, non-obvious, useful?• How to make, how to use?• Draft claims ?
US 7066592 Frameless glassesattaching to body https://www.google.com/patents/US7066592
US 7066592 Frameless glasses attaching to body https://www.google.com/patents/US7066592
CLAIMS[…]5. In combination with a body piercing nose bridge stud, an improvement comprising; a first stud anchored on an inbound portion of a left eyeglass member; a second stud anchored on an inbound portion of a right eyeglass member; wherein each stud mounts to a respective left or right of the nose bridge stud for support.
6. The improvement of claim 5, wherein the left and the right eyeglass members each have a nose rest.
7. An eyeglass support comprising: an eyeglass member; connector means for holding an eyeglass member to a body piercing member, said connector means functioning to removably attach the eyeglass member to the body piercing member; and anchor means for removably connecting the connector means to the eyeglass member.
Example #2Problem: Cancer
Example #2: Solution: Synthetic Hollow Enzyme Loaded Shells
Nano Shark Cages and CancerInanc Ortac, UC San Diego ECE PhD, 2013
https://www.youtube.com/watch?v=BgjuVAU-5to
Synthetic Hollow Enzyme Loaded Shells (SHELS)
• Circumstances at time of provisional 2011 Research Expo poster presentation imminent Available: draft manuscript, group meeting &
qualifying exam presentations, poster
• How to do the provisional? What to include? What type claims?
Provisional 61/475,649 Multifunctional Nanoparticle Designs & Applications• Incorporated all material• Claims: techniques and structures, including: 1. Method of fabricating nanoparticles with hollow core, porous surface and resealable holes, the method comprising: using a varying efficiency of colloidal templating reactions on surfaces with different chemical and physical properties. […]6. Material as described and shown herein and in appendix.7. Apparatus as described and shown herein and in appendix.8. A system as described and shown herein and in appendix.
International PCT/US2012/033853 US Application US 14/111,713
Claims: methods of fabricating, nanoparticle devices 1. Method of fabricating a particle, comprising: combining a core particle with one or more masking particles to form a template, wherein one or more masking particles bind to core particle and cover one or more regions of the core particle surface […]19. Nanoparticle device for carrying a load, comprising: shell structure including at least two layers […] wherein shell structure contains a substance within hollow interior region […]
1. A nanoparticle for carrying a payload substance, comprising: a shell structure including at least two layers including an internal layer and an external layer;wherein the internal layer encloses a hollow interior region comprising a payload substance in the hollow interior region;wherein the internal layer includes one or more holes penetrating said internal layer;wherein the external layer is attached to the internal layer and formed around the internal layer;wherein the payload substance is capable of passing through the one or more holes of the internal layer;and wherein the payload substance is incapable of passing through the external layer.
http://invent.ucsd.edu/invent/portfolio/devacell/
http://devacell.com/
Example #3Problem: Control stem cell differentiationIdea• Guide, induce stem cell differentiation• Use nanostructured cell culture substrates• Dimensions/geometric cues of surface nanotubes augmented human mesenchymal stem cell (hMSC) adhesion specific differentiation of hMSCs into osteoblasts
Published before provisional filing, only US rightsStem cell fate dictated solely by altered nanotube dimensionProc Natl Acad Sci U S A. 2009 Feb 17;106(7):2130-5. http://www.pnas.org/content/106/7/2130.abstract
2 startup licensees!
Example #3 exercise:Compare PNAS paper & provisional or full application
• Full US patent application 12/900,249 “Articles comprising nano-materials for geometry-guided stem cell differentiation and enhanced bone growth” https://www.google.com/patents/US20110085968
• Find provisional in USPTO PAIR http://portal.uspto.gov/pair/PublicPair
Title and Inventors vs Authors
PNAS 2009 Feb 17;106(7) 61/251,135 & 12/900,249
Stem cell fate dictated solely by altered nanotube dimension
Articles comprising nano-materials for geometry-guided stem cell differentiation and enhanced bone growth
Oh S, Brammer KS, Li YS, Teng D, Engler AJ, Chien S, Jin S.
Sungho Jin, Seunghan Oh, Karla Brammer
Compare AbstractsPNAS 2009 Feb 17;106(7) 61/251,135 & 12/900,249
Two important goals in stem cell research are to control the cell proliferation without differentiation and to direct the differentiation into a specific cell lineage when desired. Here, we demonstrate such paths by controlling only the nanotopography of culture substrates. Altering the dimensions of nanotubular-shaped titanium oxide surface structures independently allowed either augmented human mesenchymal stem cell (hMSC) adhesion or a specific differentiation of hMSCs into osteoblasts by using only the geometric cues, absent of osteogenic inducing media. hMSCbehavior in response to defined nanotube sizes revealed a very dramatic change in hMSCbehavior in a relatively narrow range of nanotube dimensions. […]
The present invention provides articles of manufacture comprising biocompatible nanostructures comprising significantly increased surface area for, e.g., organ, tissue and/or cell growth, e.g., for bone, tooth, kidney or liver growth, and uses thereof, e.g., for in vitro testing of drugs, chemicals or toxins, or as in vivo implants, including their use in making and using artificial tissues and organs, and related, diagnostic, screening, research and development and therapeutic uses, e.g., as drug delivery devices. The present invention provides biocompatible nanostructures with significantly increased surface area, such as with nanotube and nanopore array on the surface of metallic, ceramic, or polymer materials for enhanced cell and bone growth, for in vitro and in vivo testing, cleansing reaction, implants and therapeutics. […]
Compare Abstracts (continued)
PNAS 2009 Feb 17;106(7) 61/251,135 & 12/900,249
[…] Small (approximately 30-nm diameter) nanotubes promoted adhesion without noticeable differentiation, whereas larger (approximately 70- to 100-nm diameter) nanotubes elicited a dramatic stem cell elongation (approximately 10-fold increased), which induced cytoskeletal stress and selective differentiation into osteoblast-like cells, offering a promising nanotechnology-based route for unique orthopedics-related hMSC treatments.
[…] The present invention provides optically transparent or translucent cell-culturing substrates. The present invention provides biocompatible and cell-growth-enhancing culture substrates comprising elastically compliant protruding nanostructure substrates coated with Ti, TiO2 or related metal and metal oxide films.
Compare other parts (homework)• Map sections between paper & patent application• Compare contents
Example #4Problem: Keep airway open in anesthetized patient
US Patent Application 14/401,517 “Combined bite block/oral airway/tongue depressor appliance” Two provisionals: design evolved (61/647,055 & 61/784,097) No publication Licensed at provisional stage
Other examples (for home study)Prof. Yuhwa Lo: US 13/254,851; US9134221 Fluidic flow cytometry devices and particle sensing based on signal-encodinghttps://www.google.com/patents/US20120078531• Provisional 61/262,787 and 61/158,969 accessible via USPTO PAIR• Journal articles:
Microfluidic cell sorter with integrated piezoelectric actuator Lab-on-a-chip flow cytometer employing color-space-time coding Optofluidic Waveguides in Teflon AF-Coated PDMS Microfluidic Channels
http
://w
ww.
nano
celle
ct.c
om/ Nominated for 2016 CONNECT
Most Innovative New Product AwardLife Science Diagnostics/Research Tools
Other examples (continued)
Prof. Adah Almutairi: PCT/US2013/040219; US9333258 & US 9333259Fine spatiotemporal control of thermolysis and lipolysis using NIR light https://patentscope.wipo.int/search/en/detail.jsf?docId=WO2013169955Provisional US 61/644,328 accessible via Patentscope
http://invent.ucsd.edu/invent/portfolio/elux-medical/
Thank You!http://innovation.ucsd.edu/
http://invent.ucsd.edu/
Room #013, Powell-Focht Bioengineering Hall
top related