Protecting Your Intellectual Property Assets October 18, 2005

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Protecting Your Intellectual Property
AssetsOctober 18, 2005
Tu Nguyen Patent Prosecution Counseling Fish
Richardson P.C. nguyen_at_fr.com 617-521-7869
John Gagel Patent Prosecution Counseling Fish
Richardson P.C. gagel_at_fr.com 617-521-7829
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Fish Richardson offices
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John Gagel

• Bowdoin College A.B. Chemistry summa cum laude
  Massachusetts Institute of Technology Ph.D.
  Physical Chemistry
• Suffolk University Law School J.D.
• Practice emphasizes general counseling including
  due diligence and opinions regarding patent
  infringement and validity, and patent prosecution
  of medical devices, mechanical, chemical,
  biomedical, materials science, and physics
  inventions.

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Tu Nguyen

• University of California, Berkeley B.S.
  Chemistry Massachusetts Institute of Technology
  Ph.D. Inorganic/Solid State Chemistry
• Franklin Pierce Law Center J.D.
• Practice emphasizes patent prosecution and client
  counseling on patent issues, including opinion
  and due diligence work, patent portfolio
  development and management, and strategy and
  analysis.
• Technology areas include medical devices,
  chemical, mechanical, biomedical, materials
  science, and physics.

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Outline

• Introduction to patents
• Avoiding loss of rights
• Developing a patent portfolio

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What is a patent?

• An instrument proceeding from the government,
  conferring the right to exclude others from
  making, using, offering for sale, or selling the
  invention throughout the United States or
  importing the invention into the United States.
• What is the purpose of the patent system?
• To reward inventors and thereby encourage
  innovation.
• To make it financially feasible to invest money
  in research and development.
• To provide a technology database available to
  all.

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What is patentable?

• Whoever invents or discovers any new and useful
  process, machine, manufacture or composition of
  matter, or any new and useful improvement
  thereof, may obtain a patent therefor, subject to
  the conditions and requirements of this title.
  (35 U.S.C. 101)

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Requirements for Patentability

• What must a patent application include?
• Written description
• Description must be enabling
• Description must teach best mode
• Drawings
• Claims

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Requirements for Patentability

• What is required for a claimed invention to be
  patentable?
• Useful
• Novel
• Non-obvious

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• Avoid Loss of Rights

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Barring Events

• Patent statute, 35 U.S.C. 102(b)
• A person shall be entitled to a patent unless
• (b) the invention was patented or described in a
  printed publication in this or a foreign country
  or in public use or on sale in this country, more
  than one year prior to the date of the
  application for patent in the United States, or

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Printed Publication

• Scientific journal trade magazines Internet
  postings
• But consider these cases
• Cooper Cameron Corp. v. Kvaerner Oilfield Prods.,
  Inc., 291 F.3d 1317 (Fed. Cir. 2002) (A report
  that was released to the parties to a joint
  venture (3 members and 6 participants), that had
  a "confidential" notice on only one page out of
  130. A genuine factual dispute existed regarding
  whether the report was "accessible" to "the
  interested public," which might have been only
  the parties who had access to the documents.
• In re Klopfenstein, 380 F.3d 1345 (Fed. Cir.
  2004) A poster presentation was displayed to a
  wide variety of viewers, many of whom possessed
  ordinary skill in the art, for about three
  cumulative days, with no stated expectation that
  the information would not be copied or reproduced
  by those viewing it. Even though no copies of
  the display were distributed to the public and
  the display was not later indexed in any
  database, catalog or library, it was considered
  sufficiently publicly accessible to count as a
  "printed publication."

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On Sale Bar

• On sale bar applies when two conditions are
  satisfied before the critical date
• (1) product must be the subject of a commercial
  offer for sale.
• (2) invention must be ready for patenting.
  Pfaff v. Wells Electronics, 525 U.S. 55 (1998).
  
• Pfaff says the ready for patenting prong may be
  satisfied in at least two ways
• (1) by proof of reduction to practice before the
  critical date
• (2) by proof that prior to the critical date the
  inventor had prepared drawings or other
  descriptions of the invention that were
  sufficiently specific to enable a person skilled
  in the art to practice the invention.

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Public Use

• Includes any use of the claimed invention by a
  person other than the inventor who is under no
  limitation, restriction or obligation of secrecy
  to the inventor.
• Experimental use can negate public use bar, but
  the test for experimental use is evolving.

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Take Away

• Best to file application before any divulgation.
• In Europe, public divulgation can foreclose
  patent rights .
• In the U.S., must file patent application before
  one-year anniversary of publication, sale, offer
  for sale, or public use.

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Avoiding Loss of Rights

• The U.S. uses a first to invent system
• Importance of record keeping
• To prove conception and diligence
• To pre-date prior art
• Lab notebooks should be dated and witnessed.
  Brainstorming meetings should be documented.

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Ownership of Patents

• Inventors are considered co-owners. Have
  employment agreement and assignments properly
  executed.
• Have properly executed agreements in place before
  working with other parties.

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• Developing A Patent Portfolio

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Developing a Patent Portfolio

• The value of a well-developed patent strategy
• Covering the novel aspects of your proposed
  product
• Covering other solutions to problems you uncover
• Know your competitors
• How much will all this cost?

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The Value of a Well-Developed Portfolio

• Protecting the companys products
• Providing a basis to negotiate with competitors
• Giving confidence to investors

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Covering the Novel Aspects of Your Product
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Covering Other Solutions to Problems You Uncover

• Product An angioplasty balloon formed of
  polymer X that provides high burst
  strength and refoldability
• Design around A An angioplasty balloon formed
  with reinforcing elements to provide high
  burst strength and refoldability
• Design around B An angioplasty balloon formed of
  a high burst strength polymer and a
  modified catheter to enhance
  refoldability
• Note Actual reduction to practice is not
  necessary to file a patent
• application

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Know Your Competitors

• In the medical device arena, count on having to
  deal with the IP assets of your competitors
• How does your portfolio further your investments?

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How Much Does All of This Cost?

• A lot
• Develop a plan
• Prioritize

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Questions?
John Gagel Tu Nguyen gagel_at_fr.com
nguyen_at_fr.com 617-521-7829 617-521-7869