Nuts in addition to Bolts of Patent Law presented by: David Tennant dtennant@whitecase.com

Nuts in addition to Bolts of Patent Law presented by: David Tennant dtennant@whitecase.com www.phwiki.com

Nuts in addition to Bolts of Patent Law presented by: David Tennant dtennant@whitecase.com

Schwerin, Rich, Contributing Writer has reference to this Academic Journal, PHwiki organized this Journal Nuts in addition to Bolts of Patent Law presented by: David Tennant dtennant@whitecase.com October 9, 2008 What is a Patent Property Right that protects certain innovations in addition to improvements in technology Provides the Right to Exclude Others from making, using, selling or importing into the U.S. the patented technology Types of Patents Utility Design Plant How Long Does a Patent Last If filed in addition to granted be as long as e June 8, 1995 17 years from issue date If filed be as long as e, but granted after, June 8, 1995 17 years from issue date or 20 years from first filing date If filed in addition to granted after June 8, 1995 20 years from first relied upon filing date

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What Can Be Patented Patentable Subject Matter Compositions of matter Machine Compositions Articles of manufacture Processes Unpatentable Subject Matter Mere ideas, concepts or abstractions Scientific as long as mulae Mathematical as long as mulae or algorithms Natural products as they occur in nature Anatomy of a Patent Document: Front Page — Title Anatomy of a Patent Document: Front Page — Inventors

Anatomy of a Patent Document: Front Page — Assignee Anatomy of a Patent Document: Front Page — Filing Date Anatomy of a Patent Document: Front Page — Cited references

Anatomy of a Patent Document: Front Page — Abstract Anatomy of a Patent Document Written description Describes the invention in addition to why it is novel Teaches how to make in addition to use the invention Typically contains working examples BACKGROUND OF THE INVENTION SUMMARY OF THE INVENTION DESCRIPTION OF THE INVENTION DESCRIPTION OF THE PREFERRED EMBODIMENT technology describes past Anatomy of a Patent Document – Drawings

Anatomy of a Patent Document The “Claims” Describe the boundaries of protection What are the Requirements Novelty Utility Written description in addition to enablement Best mode Non-obviousness Utility – 35 U.S.C. § 101 What can be patented Virtually any invention “made by man” is qualified to be patented in the United States An invention must be a new in addition to useful process, machine, article of manufacture or composition of matter, or any new in addition to useful improvement of known processes, etc. Generally speaking, claims directed to essentially mathematical algorithms, printed matter, or scientific principles fail to satisfy the utility requirement

Utility – 35 U.S.C. § 101 (cont’d) An invention does not lack utility even if the embodiment disclosed in the specification is not perfect or per as long as ms crudely. A commercially successful product is not necessary. Written Description in addition to Enablement – 35 U.S.C. § 112 Enablement – An invention must be described in the specification in such full, clear in addition to concise terms as to enable a person “skilled in the art” to which the invention most closely pertains to practice the invention, without undue experimentation Written Description The claimed subject matter must be fully supported by the specification as originally filed Claims, as amended during the prosecution of the application, may not introduce “new matter” into the application Written Description in addition to Enablement – 35 U.S.C. § 112 (cont’d) The relevant time period as long as determining if the “enablement” requirement is satisfied is the date of filing the application — later occurring developments are of no significance regarding what one of skill in the art would underst in addition to as of the filing date Better to err on the side of including additional in as long as mation/embodiments in the original specification — such additional in as long as mation/ embodiments may be utilized to overcome prior art unknown to applicant as of the filing date

Best Mode – 35 U.S.C. § 112 Must disclose not only how to practice the invention, but also the “best mode” or preferred way of practicing the invention Quid Pro Quo – Patentee receives patent grant in exchange as long as disclosing the best way of practicing the invention Only concerned with the inventor’s state of mind – if he/she believed or knew there was a “best” mode of practicing the invention The preferred mode at the time of filing the application Best Mode – 35 U.S.C. § 112 (cont’d) Need not have a best mode in the application if there is no best mode at the time of filing. However, failure to disclose best mode can result in loss of patent rights Novelty – 35 U.S.C. § 102 U.S. not a ‘first-to-file” system What does this mean § 102(a) if the claimed invention was either known or used by others in the U.S. or patented or described in a printed publication anywhere in the world prior to the invention by the applicant, then no patent can issue § 102(b) if the invention is described in a printed publication or patent in the U.S. or as long as eign country more than one year prior to the filing date in the U.S., then absolute bar “on sale” or “public use” bar limited to actions taken in U.S.

Novelty – 35 U.S.C. § 102 (cont’d) § 102(d) precludes issuance of a patent if application was first filed in a non-U.S. country more than 12 months prior to the U.S. filing in addition to the non-U.S. based application issued prior to the U.S. filing date Non-Obviousness — 35 U.S.C. § 103 Purpose of § 103 is to prevent the grant of patents on inventions that represent an insignificant advance over that which is already known Test as long as obviousness determine scope in addition to content of prior art determine differences between prior art in addition to present invention would variations be obvious choices to those of “skill in the art” Non-Obviousness – 35 U.S.C. § 103 (cont’d) Prior art does not include in as long as mation communicated between members of a research team or employees of the same company, if at the time of the invention, both parties are employed by the company in addition to under a duty to assign the invention to the same company

Schwerin, Rich Oracle Magazine Contributing Writer www.phwiki.com

Some Pitfalls Along the Way Identifying incorrect inventors Prior public disclosure, sale or use Identifying incorrect inventors Inequitable conduct be as long as e the patent office Time delays Inventorship Must be someone who made a substantive contribution to at least one of the claims of the application Typically, as long as joint-inventorship, there must be at least some communication, direct or indirect, between inventors – two persons totally unaware of the other’s work, no joint inventorship Two stages of the inventive process: 1) conception in addition to 2) reduction to practice – joint inventors can be any combination of the two Mere supervision of someone who “conceives” or “reduces” the invention to practice does not make supervisor an inventor Contributions of joint inventors do not have to be equal Provisional Patent Application Establishes your right of invention in the U.S. in addition to the world How So A utility patent application in addition to as long as eign patent application must be filed within one year of the filing date The application may be an “in as long as mal” document, such as an invention disclosure The degree of patent protection depends upon the degree of disclosure Reasonable costs as fees in addition to services may be less than $500.00

Prior Art Searches Internet search Computer database search Professional search Manual search at the U.S. Patent Office Patentability Searches Why Per as long as m a Patent Search The reasons as long as per as long as ming a patent search are many. The most obvious is to determine whether or not you can get a patent or if your invention has already been patented. Other reasons include: getting a general idea of how an application in addition to patent is structured to help in the preparation or your own application learning more about a new field as long as market in as long as mation competitor tracking technology tracking Patentability Searches If I have an idea, how do I search the prior art

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Schwerin, Rich Contributing Writer

Schwerin, Rich is from United States and they belong to Oracle Magazine and they are from  Redwood City, United States got related to this Particular Journal. and Schwerin, Rich deal with the subjects like Databases; Information/Knowledge Management; Software Applications

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