Patent BasicsApril 9, 2003

Fernandez & Associates LLPStanford BioDesign Invention Challenge IP

Lecture

Types of Intellectual Property Copyright Trademark Trade Secrets/ Know How Mask Work

Patents

Basic Idea Behind IP Protection:

To grant period of monopoly to inventor/author in exchange for enriching the public domain

Basic Patent Criteria

Novel

Useful

Non-obvious

Examples of Patents:

Mechanical

Device

Chips

Drugs

Genes

Software

New Compounds

Business Methods

Designs

Types of Patents

Utility

Design

Plant

Patent Application Requirements

Specifications abstract, background, detailed

description of preferred embodiments

Claims carves out your monopoly

What is Prior Art?

Any information related to your invention e.g. journal publications, issued patents,

pending patent applications

Patent examiners cite prior art to show that an invention is not patentable

When will a patent be issued?

After a few rounds of arguing with the examiner and possible amendments

~3 years from filing

Patent covers 20 yrs. from filing or 17 yrs. from issue

Patent Timeline

2-3 years

20 years

Idea

FileOfficeAction

PatentIssues

Publication

18months

PatentExpires

Intellectual Property Tips

DO: Maintain an inventor notebook with

conception dates and concept diagrams Determine the strength of your invention

Search on www.uspto.gov for issued/pending patent applications

Browse related tech journals/publications Submit invention disclosure even before

the prototype is built

Intellectual Property Tips

Without checking with a patent attorney: Don’t disclose any concepts or

make offers for sale Don’t use technology that is not

your own Don’t admit infringement liability

Procedural Strategy

Early Filing Date

Provisional Filing

International Filing

Foreign Filing

Continuation-in-Part (CIP) Filing

What to Protect?

Portfolio Development Defending Approach Defending Core Technology

Current Products/Future Products

Offensive Blocking Claims Anti-Competitor Emerging Standards Acquisition/Partnership Positioning

Issues of Concern

Damage Control Imminent Deadlines

Bar Date: US Rule, Foreign Rule 3rd Party Activity Infringement Exposure Internal Procedures

Issues of Concern

Infringement Risk Wilfulness Exposure Prior Art vs. Design-Around Licensing Option

Disclosure Submission Invention Disclosure Prior Art Search? Best Mode Figures Alternate Embodiments

dennis@iploft.com

Questions?