University of Utah Technology and Venture Commercialization Group In partnership with

1. Developing Valuable Intellectual Property University of Utah Technology and Venture Commercialization Group In partnership with A. Terrece Pearman J.D./Ph.D.Stoel Rives LLP May 13, 2014 • University of Utah TVC

2. Today’s Discussion: • The nature of a patent • The patenting process • Working with your University-appointed patent attorney • Best practices

3. The nature of a patent: Anatomy

4. Anatomy: Figures

5. Anatomy: Claims 1. An esophageal catheter system comprising: a catheter including an open end, for removably mounting one of a pressure transducer and a stylet assembly, a closed end, a balloon affixed to an exterior surface of the catheter, the balloon usable as a pressure sensor, and a balloon inflation lumen extending through the catheter in communication wththe interior of the balloon through at least one aperture extending through the catheter; a stylet assembly, which can be removed from and inserted into the open end of the catheter, the assembly comprising a stylet for providing appropriate rigidity to the catheter to aid insertion into the esophagus, and a port for removably mounting a pressure transducer; and a pressure transducer, which can be removed from and inserted into the open end of the catheter, and which can be removed from and inserted into the port of the styletassembly; wherein the stylet assembly further includes a coupler and a closure sealing an end of the coupler, and the stylethas an end affixed to a portion of the closure.

6. The nature of a patent:What Does a Patent Get You? • Right to exclude others from: • making, using, selling/offering to sell, importing • Time-limited • Geographically-limited • No right to practice the invention • may need a license on other technology to practice your patented invention!

7. The patenting process: TVC • Disclosure • Online portal through http://www.tvc.utah.edu/ • Evaluation by your TVC Manager • Application drafting • Supplemental disclosure meeting with attorney • Application review and revisions • Filing and signature documents • Subsequent filings/portfolio development

8. The patenting process: Your University-appointed patent attorney

9. Your University patent attorney • Things you need to know: • We work for the University to protect inventions by developing intellectual property such as patents • We protect your disclosures – you can share confidential information with us • We speak your language: we have a background in your discipline • We respect your timing and needs – let us know when you’re publishing/presenting, and we’ll work with you and the TVC to develop a patent strategy

10. Disclosure to your University attorney

11. The patenting process: What must I have to get a patent? • New • Useful • Discovery versus Invention • Non-obvious • Written description • Describe what it is • Enabling description • Describe how to make/use it

12. Disclosure to your University attorney • “Enable” your invention • Prepare a document that would allow someone with skills similar to your own to practice your invention • “Reduced to practice” • Can you show that you can work the invention • “Best mode” • To your knowledge at the time of filing • Variations on a theme • What have other people done? • Obligation to disclose to the U.S. Patent and Trademark Office

13. The patenting process: The Draft

14. The patenting process: The Draft • Draft Application—what to expect? • Legal document • Very unfamiliar format • Attempts to explore and expand scope of disclosure • Comments and revisions welcome! • Filing and signature documents • Subsequent filings/portfolio development

15. The patenting process: Other Things to Consider • Timing? • When do you plan to publish or present? • What data is available to show utility of the invention? • Potential partnerships/investment interest?

16. Patent prosecution timeline:Steps and timing http://blog.patents-tms.com

17. Types of Patent Applications • Utility • Provisional • PCT (International) • Foreign • Design • Plant

18. U.S. Applications • Utility • Formal Requirements • More Expensive—higher filing fees • Examined • Eligible to Issue into a Patent • Provisional • Fewer formalities; no claims required • Less expensive – lower filing fees • Establishes filing date for subject matter disclosed • EXPIRE IN ONE YEAR • Must Convert to a Utility Application or lose priority date

19. Protection Outside U.S. • PCT • Member countries • Examined by International Body (U.S., Europe, Korea) • Does not Issue; Nationalized in each member country • Foreign • Different than PCT • Filed in a specific foreign country • Subject to that country’s IP laws

20. Best Practices: • Keep good lab notebooks • Develop data/alternate embodiments • Disclose your invention to the TVC early • Keep them apprised of updates and improvements • Work to file your provisional application before disclosing • Keep track of your co-inventors • Sign documents early

21. Creating a Patent Family • Divisional • Claim matter disclosed in parent but not claimed • Different invention from parent • Continuation • Claim matter disclosed in parent but not claimed • Same invention as parent • Continuation in Part (CIP) • Can add subject matter not disclosed in parent • New matter gets new priority date