Fundamentals of Patenting and Licensing for Scientists and Engineers

1. Fundamentals of Patenting and Licensing for Scientists and Engineers Part 2: Fundamentals in Patenting Book by Matthew Ma Summarized by Constance Lu

2. How to Read a Patent Chapter 4

3. Cover page • Patent drawings • Patent specifications • Patent claims Anatomy of a Patent

4. See page 60 for full details Contains bibliographical data about the patent Last name of first inventor Patent # 1. Cover Page Patent title Patent issue date Inventors Owner Abstract Filing date Classifications Drawing (not shown) Field of search References

5. On cover page (1.) • Representative of the invention • In specification (3.) • Figure number and component labels are properly referenced 2. Patent Drawings

6. Background and summary of the invention • Description of the preferred embodiment (with references to drawings) Patent # 3. Patent Specification Column # Line #

7. Describes legal rights of the patent owner • At least 1 claim in a patent • At least 1 independent claim in a patent • Beneficial to have dependent claims • Interpreted in the context of parent claim • Narrower in scope but makes infringements fit your claims better 4. Patent Claims Independent claim Dependent claim Dependent claim

8. Structure of claims • Preamble • Sets up general technical environment • Transitional phrase • “comprises of”, “consisting of”, “consisting essentially of” • Main body • Lists main components of the invention in a legal form • To construe a claim = to understand the scope of the owner’s exclusive rights • Scope directly impacts strength of the patent 4. Patent Claims cont.

9. If you’re filing a patent • Focus on specs (for prior art search) • Is your invention an obvious improvement over prior arts? • If you’re writing a patent • Focus on comparing product features and claims • You can only infringe claims, not specs • If you’re catching an infringer • Need reverse engineering + legal professionals Reading Patents

10. Innovation Harvesting Chapter 5

11. Know the art • Get an intuition on what has been claimed • Patentability test • Used in patent examinations • Innovation harvesting • Strategize! • Patent landscaping • Look at broad trends • Making filing decisions Steps of the Inventing Stage

12. Does the patent have tangible use? • Not abstract things or natural products • Does the invention fall into statutory category? • 1. Machine; 2. Process; 3. Manufacture; 4. Composition of matters • Is the invention novel over prior art? • Need at least one new element in your invention • Is the invention a nonobvious improvement over prior art? Patentability Test

13. Make a patent strategy to plan ahead and systematically cover various opportunities • Patent brainstorming (useful in industry) • Find participants with diverse backgrounds • Prepare an agenda and a list of main themes • Have an action item for each idea in the list • Keep a positive attitude :] • Market analysis • Run a prior art search • Rank and elaborate ideas in the list Innovation Harvesting

14. Purpose • Understand your patent portfolio • Find strengths/weaknesses in technology map • Collect raw data • e.g., total # of relevant patents issued • Answer technology intelligence questions • e.g., What is my competitor’s R&D trend? • e.g., Are there any prolific key inventors? Patent Landscaping

15. How essential is the technology to your business and the industry? • Can your product survive and differentiate from your competitors? • What patent rights will you be getting from each patent-to-file? • Check the broadness of claims and how easy it is to work around your invention • Where will you be selling your product? • A patent only gives you protection in the country it is granted Making Filing Decisions

16. Preparations Before Filing Chapter 6

17. Priority date = the date of conception • Document every piece of evidence (with time stamps) during the course of your invention • File a provisional patent • Has minimal requirements • Allows you to set an early priority date • 12-month grace period: perfect application, prepare drawings, and complete claims • File early and before you publish or make public speeches About the Priority Date

18. In general, anything predating your invention may bar your application from being granted, but: • If any existing and known public use of your invention happened in foreign countries, it is not a statutory bar in the U.S. • If cited prior art occurs within the statutory bar date (i.e., 12-month grace period before your application’s filing date) and you can show your invention predated it, you may “swear back” and have the USPTO disqualify the prior art Prior Art and Statutory Bar

19. Challenges • Attorneys’ hours are expensive • Billing is sent to the company’s general office • You can’t direct your efforts to where you get the most help for the buck • Most organizations contract with law firms whose main roles are patent filing and litigation • Insufficient integrity of patent specification and claims during the filing stage • Law firms often shift cases from one attorney to another with almost no handover of work Working with an Attorney

20. Tactics to get the most out of the system • Provide the “meat”; attorneys just package your invention so your rights are maximized • Request meetings before the first draft is finished • Provide your work in electronic format • Coach your attorney on the field and how your invention works • During patent prosecution, consult an attorney so you understand the issues raised by the examiner Working with an Attorney cont.

21. Filing it yourself (see chapter 7) • Professional service • Patent attorneys can represent you in patent litigation court, but patent agents cannot • However, attorneys usually do not have patent litigation experience • Make sure attorney/agent has enough experience and interacts with you • Hybrid • Prepare the application yourself as much as you can; then ask a professional to finalize it Self vs. Professional Service

22. Essentials in Patenting Filing Chapter 7

23. Title • Abstract • Background of the Invention • Brief Summary of the Invention • Description of Drawings • Detailed Specifications of the Invention • Claims • Prototype Structural Parts of a Patent

24. Specifications cannot be changed once patent is filed • Every term used in the claim should be unambiguous and apparent from the specs • Disclose alternative embodiments • Extends the scope of your invention • Hides its best mode (i.e., secret), which you must disclose by law, among other modes Specification and Claims

25. Backward citation • Disclosed in “References Cited” on cover page • Tool: Information disclosure Statement (IDS) • Cite as many relevant works as possible to show thoroughness of research • Forward citation • When the reference patent has been cited by other patents that were filed afterwards • Forward citation count (i.e., # of times cited) = good measure of patent’s importance Citing Other People’s Works

26. = anything related to the technical merits of the invention • Not allowed after filing, but exceptions: • Typographical errors • Obvious corrections • Rephrasing for clarification • Inheritance of functions • Theory of advantages • Incorporating text by reference • Adding materials to the specs that were previously disclosed elsewhere What is Considered New Matter?

27. Use different types of claims • Better protection and leverage on how your patent can be used • Claim novel features in multiple ways • Consider who may be potential infringers and draft claims to cover those scenarios • Broaden your claims • In general, shorter claim = broader • Misconception: more claims = broader Broadening/Diversifying Claims