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Success at the Patent Office: Strategies to Consider Before Filing a Patent Application

Overview. Purpose of Obtaining a PatentRequirements of Patentability What to Expect During Patent Prosecution and Strategies for Successfully Obtaining a Patent. Purpose of Obtaining a Patent. Patent System Designed to Incentivize InnovationPatent Grants Rights to Inventor Exclude, But Not Use

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Success at the Patent Office: Strategies to Consider Before Filing a Patent Application

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    1. Success at the Patent Office: Strategies to Consider Before Filing a Patent Application Edwin V. Merkel Esq. Carissa R. Childs Ph.D. Nixon Peabody LLP 1100 Clinton Square Rochester, New York 14604 Phone: (585) 263-1128 • Fax: (585) 263-1600

    2. Overview Purpose of Obtaining a Patent Requirements of Patentability What to Expect During Patent Prosecution and Strategies for Successfully Obtaining a Patent

    3. Purpose of Obtaining a Patent Patent System Designed to Incentivize Innovation Patent Grants Rights to Inventor – Exclude, But Not Use Bayh-Dole Encourages Technology Commercialization of Government Funded Inventions Provide a Means to Commercialize Inventions, i.e. Bridge the Transition from Bench-to-Bedside Why Is This Relevant? Not all Good Science is Patentable The Value of a Patent Depends on its Commercial Utility

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