Patent Basics

1
Patent Basics

• UVM Invention to Venture
• Burlington, VT
• April 11, 2008
• Matthew Beaudet, Ph.D

2
Patents The View from the Bench

• Disconnect between what happens in the lab and
  its ability to build value
• Not thinking about IP issues
• Not on the lookout for something patentable
• Careful dont let can you? outweigh should
  you?
• Emerging companies
• Licensing revenue

3
What is a Patent?

• Like a deed to property, a patent defines the
  boundaries of a property right
• A right to exclude others from making, using,
  offering for sale, or selling the claimed
  invention

4
Patentability vs. Freedom-to-Practice

• Patentability (key conditions to receive patent
  rights)
• ? New and non-obviousness
• The Patent Right (in effect, a negative right)
• ? Does provide the right to exclude others from
  making, using, offering for sale or selling the
  claimed invention .
• ? Does NOT provide the right to practice your own
  invention
• E.g., Patent granted to new method for detecting
  cancer using a specific biomarker because new and
  non-obviousness over prior cancer detection
  technology. However, use of the biomarker
  infringes prior patent that claims the biomarker
  per se

5
Patenting Timeline
2-3 Years
1 Year
1-2 Years
Invention
Utility/PCT
First Office Action
Allowance
Maintenance
Application Preparation Provisional
Total Cost
It depends!
6
Creation / Discovery of an Invention

• Sudden Realization (Eureka!!)
• Accident
• Step by Step Experimentation
• A Variety of ways
• The manner in which the invention is made is
  irrelevant
• In some cases, conception and reduction to
  practice can occur simultaneously
• Utility is a necessary ingredient of conception

7
Importance of Inventorship in United States

• Only Inventors can be Applicants for a patentable
  invention
• Patent Rights are awarded to those individuals
  who are first to invent (Interference)
• First to invent ? subject to change?

8
The making of an Invention Involves Three Stages

• Conception
• Reduction to Practice and
• Interim Activity Directed Toward Accomplishing
  the Reduction to Practice (Diligence)
• Stages 2 and 3 may be done by anyone under the
  inventors direction
• Conception (Stage 1) is done solely by the
  inventor or inventors
• Thus, the determination of Inventorship always
  requires a determination of conception

9
Conditions and Requirements

• Novelty Must be new
• Nonobviousness To one of ordinary skill
• Utility It must have a practical application
• Description So that the public can use it
  (written description and enablement)