The art & science of patent law

Inside the Minds: The Art & Science of Patent Law by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Back Cover Inside the Minds: The Art & Science of Patent Law Inside the Minds: The Art & Science of Patent Law is an authoritative, insider’s perspective on the laws which ISBN:1587623463 by Inside the Minds Staff govern patents, the characteristics and capabilities of the successful practitioner and the future of patent Aspatore Books © 2004 (245 pages) regulation, on a global scale. Featuring Department Heads, Group Chairs and Leading Partners, all representing some of the nation’sThis top text firms, thisauthoritative, book provides a broad, yet comprehensive overview of the practice of is an insider’s perspective on the laws patent law, discussing the govern currentpatents, shape and state of patent regulation,offrom the founding doctrines, to which thefuture characteristics and capabilities the pivotal cases of the today. From the steps involved in evaluating an application and developing filing strategies, successful practitioner and the future of patent regulation, to tactics around profiting from scale. a patent portfolio and preventing infringement, these authors articulate the on a global finer points around patents now, and what will hold true into the future. The different niches represented and the breadth of perspectives presented enable readers to get inside some of the great legal minds of today as expertsofoffer up their thoughts around the keys to success within this fascinating practice area—where law, Table Contents technology, and strategy intersect. Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Inside the Minds—The Art & Science of Patent Law ISBN:1587623463 by Inside the Minds Staff Aspatore Books © a 2004 (245 pages) If you are interested in forming business partnership with Aspatore or licensing the content in This text is anweb authoritative, insider’s perspective onpurchasing the laws this book (for publications, sites, educational materials), bulk copies for your which govern patents, the characteristics and capabilities of team/company with your company logo, or for sponsorship, promotions or advertising the successful practitioner and the future of patent regulation, opportunities, please e-mail [email protected] or call toll free 1-866-Aspatore. on a global scale. Published by Aspatore Books, Inc. Table of Contents

For corrections, company/title updates, comments or any other inquiries please email Inside the Minds—The Art & Science of Patent Law [email protected]. Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths

First Printing, 2004 10 9 8 7 6 5 4 3 2 1

Getting It Right the First Time—The Biomedical Patent Process Communication—The to Success in Patent Practice CopyrightÓ 2004 byKey Aspatore Books, Inc. AllLaw rights reserved. Printed in the United States of America. Toolkits, and the Power No part Football, of this publication may of bePatents reproduced or distributed in any form or by any means, or stored in

a database or retrieval system, except as permitted under Sections 107 or 108 of the United States The Full-Service Patent Law Practice Copyright Act,Bounds withoutofprior writtenApplication permissionProcess of the publisher. The Metes and the Patent Taking Proper Care of a Client’s Valuable Assets

ISBN 1-58762-346-3 Library of Congress Control Number: 2003115764

The Patent War Game—Playing to Win

Patent Biotech InsideLaw-From the MindsBicycles Editor: to Laura Kearns, Edited by Jo Alice Hughes, Proofread by Michaela Falls, Cover Patents—How the Rattray System & Works design by Scott Ian Mazie Reflections on the Practice of Patent Law

Material in this book is for educational Patents—Knowing the Value, Working thepurposes System only. This book is sold with the understanding that neither the authors nor the publisher is engaged in rendering medical, legal, accounting, investment, or any other professional service. For legal advice, please consult your personal lawyer. This book is printed on acid free paper. A special thanks to all the individuals who made this book possible. The views expressed by the individuals in this book (or the individuals on the cover) do not necessarily reflect the views shared by the companies they are employed by (or the companies mentioned in this book). The employment status and affiliations of authors with the companies referenced are subject to change. www.Aspatore.com Aspatore Books is the largest and most exclusive publisher of C-Level executives (CEO, CFO, CTO, CMO, Partner) from the world's most respected companies. Aspatore annually publishes C-Level executives from over half the Global 500, top 250 professional services firms, law firms (MPs/Chairs), and other leading companies of all sizes. By focusing on publishing only C-Level executives, Aspatore provides professionals of all levels with proven business intelligence from industry insiders, rather than relying on the knowledge of unknown authors and analysts. Aspatore Books is committed to publishing a highly innovative line of business books, redefining and expanding the meaning of such books as indispensable resources for professionals of all levels. In addition to individual best-selling business titles, Aspatore Books publishes the following unique lines of business books: Inside the Minds, Business Bibles, Bigwig Briefs, C-Level Business Review (Quarterly), Book Binders, ExecRecs, and The C-Level Test, innovative resources for all professionals. Aspatore is a privately held company headquartered in Boston, Massachusetts, with employees around the world. Inside the Minds The critically acclaimed Inside the Minds series provides readers of all levels with proven business intelligence from C-Level executives (CEO, CFO, CTO, CMO, Partner) from the world's most respected companies. Each chapter is comparable to a white paper or essay and is a future-oriented look at where an industry/profession/topic is heading and the most important issues for future success. Each author has been carefully chosen through an exhaustive selection process by the Inside the Minds editorial board to write a chapter for this book. Inside the Minds was conceived in order to give readers actual insights into the leading minds of business executives worldwide. Because so few books

or other publications are actually written by executives in industry, Inside the Minds presents an unprecedented look at various industries and professions never before available. Inside the Minds: The Art & Science of Patent Law by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding ISBN:1587623463 by Inside the Minds Staff Aspatore William L. Anthony, Jr. Books © 2004 (245 pages) text is anLLP authoritative, insider’s perspective on the laws Orrick, HerringtonThis & Sutcliffe which govern patents, the characteristics and capabilities of Partner

the successful practitioner and the future of patent regulation, on a global scale.

Patent Law: Just the Facts

Table of Contents

The patent laws reward innovations that rise to a level that are legally protectable. When someone makes an invention that is significantly new, that person receives the right to exclude others from using Patent Law—Complex, Frustrating, and Rewarding the invention. Frequently that is not a right that is exercised because the patent owner is more Of Better Mousetraps and Beaten Paths interested in collecting payments from others for their use of the invention. Technically, however, a Getting Right the Process patent Itaffords the First right Time—The to excludeBiomedical – that’s its Patent basic premise. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

There isFootball, a standard protectable invention in the patent law, Title 35, U.S. Code Sections 102 and Toolkits, and for theaPower of Patents 103. Section 102 states the concept or invention must be new – that is, different from anything that The Full-Service Patent Law Practice occurred before, which prior art. ThatProcess standard is relatively easy to meet. The Metes and Bounds of we the term Patent Application Taking Proper Care of a Client’s Valuable Assets

Section 103 imposes a somewhat more difficult standard: Even if an invention is new, i.e., has not been done before, it may not be patentable unless the differences between what was old and the Patent Law-From Bicycles to Biotech invention would be not obvious to a person of ordinary skill. In simple words, the invention must be not Patents—How System Worksdifferent from what went on before so that the differences are outside the only new, butthe also sufficiently Reflections on the Practice Patent Law mental grasp of a personofworking in the field. The Patent War Game—Playing to Win

Patents—Knowing the Value, Working the System

It is this latter requirement, which we call the non-obviousness requirement, which we litigate most vigorously today. It is the safeguard to ensure that a patent does not simply stop people from doing what would have been done, in any event, regardless of the contributions of the inventors. It must be understood that it is not enough to come up with a new idea; you can’t patent a mere idea. A patent is for a workable invention. It must be something that can be realized without unreasonable effort. In the early years, my work involved dealing with the U.S. Patent Office to obtain patents for inventors I represented. One great benefit was working with inventors; the interaction was a great pleasure and the principal attraction I found in being a patent lawyer.

the Minds: The Art & Science of Patent Law DevelopingInside a Filing Strategy by Inside the Minds Staff

ISBN:1587623463

Developing a filing strategyBooks is a fairly process, but the roadmap of that process is clear. It Aspatore © 2004complex (245 pages) involves a three-pronged effort: marketing, engineering, and legal/IP. This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of

You must have marketing involved because you don’t know the worth of an invention, no matter how the successful practitioner and the future of patent regulation, a global broad the patent on appears to scale. be, until you know it is something the public will want to buy. You can have broad patents on things the public has no interest in, and the patent does not have much value for that reason. Conversely, a narrow patent can be extraordinarily valuable if it represents the only Table of Contents commercially-acceptable form of a new technology. You have to have marketing involved in any such Inside the Minds—The Art & Science of Patent Law evaluation or strategy for future patents. Patent Law—Complex, Frustrating, and Rewarding

Of Better Mousetraps and Beaten Paths Second, you must involve engineering. The invention has to be something an engineer could design Getting It Right the First Time—The and build at a cost-effective price,Biomedical so people Patent will beProcess able and willing to buy it; they must perceive a Communication—The Key to exceeds Success in Law Practice and selling it. value of the invention that thePatent cost of producing Toolkits, Football, and the Power of Patents

Third, you needPatent a patent intellectual property specialist to tell you what is available for patenting, The Full-Service Lawor Practice where there opportunities to take a lead inProcess developing a patent portfolio, and where there may be The Metes andare Bounds of the Patent Application empty spots in the patent landscape that can be filled through a patent program.

Taking Proper Care of a Client’s Valuable Assets

The War Game—Playing to Win – marketing, engineering, and legal/IP. All Patent three disciplines must participate Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Helping Clients Profit by Inside the Minds Staff

ISBN:1587623463

Helping clients profit from Books their patent Aspatore © 2004 portfolio (245 pages)again involves the three disciplines. There are two fundamental ways in which patents can be exploited. This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of

One is protectingthe your client’s market space, keeping competitors at bay. The client will typically successful practitioner andthat theis, future of patent regulation, a global scale. have a goal as toon what market they wish to serve. Existing and future threats to that market must be determined. A plan to deal with those threats is most efficient if formed early in the development of that market. Once a competitor enters and becomes established in that market space, it becomes more Table of Contents difficult to evict that competitor using your patents. Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, Rewarding Another aspect of profiting from aand patent portfolio is establishing a revenue stream from the portfolio Of Better Mousetraps and Beaten Paths by licensing it. Some companies, particularly the early comers in a market space, feel they are Getting It Right the First Time—The Patent Process sufficiently dominant that they canBiomedical compete with any company without using the exclusionary power of Communication—The Keysuch to Success in Patent Practice a patent. Even though a company has Law a patent portfolio dominating that market space, they may Toolkits, Football, the Power of from Patents be satisfied with and a royalty arising the sales of other companies in their market space. There is The Full-Service Patent Law the Practice some fairness in allowing first comer to receive a royalty, since it compensates the first comer for

theMetes effortsand it made in developing technology. In other words, it requires the second and third The Bounds of the Patentthat Application Process comers to pay a fair so toValuable speak, toAssets enter an area developed at your client’s expense. Taking Proper Care of atoll, Client’s The Patent War Game—Playing to Win

A royalty also provides a profit margin cushion. If you charge a 5 percent royalty to the second, third, and fourth entrants to a market space, their prices will reflect that, increasing the profit margin head Patents—How the System Works room for your client. Your client may benefit from that head room in either of two ways. It can increase Reflections on the Practice of Patent Law its market share by keeping its price relatively lower, knowing the licensees are at an economic Patents—Knowing the Value, Working thea System disadvantage, since they have to pay royalty; or it can let its price drift up, collect the royalty, and thereby also enjoy a higher profit margin on its own products. This way, it can get paid twice for the patent portfolio that covers that market space. Patent Law-From Bicycles to Biotech

Inside the Minds: The Art & Science of Patent Law Stages of the Process by Inside the Minds Staff

ISBN:1587623463

The patent process needsBooks to start internally, within the company, where there should be an effective Aspatore © 2004 (245 pages) strategy that ensures that all potentially patentable inventions areonuncovered, This text is an authoritative, insider’s perspective the laws that is, an inventionmining strategy. There are all types of scientists and engineers – those who which govern patents, the characteristics and capabilities of are very patent conscious theless successful practitioner and the There future of and those who are concerned about patents. arepatent thoseregulation, whose personal understanding of on “invention” a global scale. what constitutes an is different from the legal standards of the patent laws. For example, they version="1.0" may place a higher standard on the test of what is patentable, causing a truly patentable invention to goofunreported Table Contents because they don’t think it is patentable. Others may perceive a lower standard of patentability of inventions. The latter misperception, however, is self-correcting, since a disclosure of Inside the Minds—The Art & Science of Patent Law the supposed “invention” will be reported to allow those more knowledgeable to determine whether the Patent Law—Complex, Frustrating, and Rewarding “invention” disclosedand measures up under the patent laws. Of Better Mousetraps Beaten Paths Getting It Right the First Time—The Biomedical Patent Process

Similar to the evaluations we talked about, this review also is a three- pronged process. Marketing, engineering, and patent professionals evaluate the mined invention disclosures, culling those that will Toolkits, Football, andcompany the Powerand of Patents be important to the those for which it will be cost effective to pursue the rather expensive The Full-Service Patent Law Practice process of getting the patent. Once those are culled, they go to a patent attorney, who prepares a The Metes and Bounds of the Patent Application Process patent application in collaboration with the inventor. Communication—The Key to Success in Patent Law Practice

Taking Proper Care of a Client’s Valuable Assets

When the War inventor and the patent attorney are satisfied with the work product, a patent application is The Patent Game—Playing to Win filed with the U.S. Patenttoand Trademark Office. At that point, the patent application will be assigned to Patent Law-From Bicycles Biotech an examiner the based on the nature of the invention claimed in the application. Typically an attempt is Patents—How System Works

made to get patent applications to the examiner or examiners who are best qualified in the technology.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, the System reviews it for formalities, and conducts a prior art That examiner takes up theWorking patent application,

search to look for the prior art relevant to the asserted invention. After the examiner conducts a prior art search, he prepares what is called an “Office Action.” The “Office Action” is a written document in which the examiner calls to the applicant’s attention various formal and substantive defects in the patent. The patent application includes numbered claims that measure the exclusive subject matter that are being sought and therefore constitute a definition of the inventive subject matter. The claims constitute a definition of the invention that will be protected by the patent. The “Office Action” also specifies whether the claims go to new subject matter, Section 102, and whether the claims go to nonobvious subject matter, Section 103. This document will explain the examiner’s reasons for accepting the patent application or, more frequently, for rejecting it. The “Office Action” goes to the inventor’s attorney, who typically is very skilled in dealing with the Patent Office examiners on those documents. The attorney writes a response that attempts to meet and cure, or tell the examiner he is wrong on, each of the points raised by the examiner. This often involves amending the numbered claims, and frequently the amendments narrow the definition of the invention. That becomes a significant event in later enforcement of the patent because when you narrow the claims, you abandon subject matter that lies between the original broader and later narrowed claims. Once that process is finished – there are usually at least two back- and-forths between the examiner and the inventor’s attorney – the examiner either sends a notice of allowance stating that a patent will issue, or he finally rejects the application. If he rejects it, the applicant has a number of choices.

Inside the Alternatives Minds: The Art & Science of Patent Law Feeling Rejected: by Inside the Minds Staff

ISBN:1587623463

If the examiner finally rejects the©application, the inventor and his attorney have some options. One is Aspatore Books 2004 (245 pages) to appeal. There This is antext appeal process within the Patent Office toon what called the Board of Appeals. If is an authoritative, insider’s perspective theislaws that appeal is successful, the application issue as a patent. If it is unsuccessful, there is a still which govern patents, thewill characteristics and capabilities of the successful practitioner and the future of patent regulation, higher level of appeal outside the Patent Office to the Federal Circuit. This court largely specializes in a global patent cases, andonthe judgesscale. on the court are experts on patent issues. They determine whether the Patent Office is right or wrong. There is also a further appeal, which occurs very infrequently, to the U.S.of Supreme Court. Table Contents Inside the Minds—The Art & Science of Patent Law

The other route is to resubmit the application as a continuation application, which means you just turn the application around and pay a new filing fee and start the process all over again. In this process, Of Better Mousetraps and Beaten Paths you may want to again amend the claims, and there are variations on the continuation theme, such as Getting It Right the First Time—The Biomedical Patent Process a continuation in part, which actually adds new materials to the patent. You then start the process over, Communication—The Key to Success in Patent Law Practice which will again end in either rejection or allowance, and you will have the same choices again if it is a Toolkits, Football, and the Power of Patents rejection. Patent Law—Complex, Frustrating, and Rewarding

The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: Searching for Prior Art The Art & Science of Patent Law by Inside the Minds Staff

ISBN:1587623463

Frequently clientsAspatore do search for © prior one hand, the search facilities we now have are more Books 2004art. (245On pages) extensive and more technically advanced and comprehensive than in the past. On the other hand, the This text is an authoritative, insider’s perspective on the laws amount of material thatgovern needs patents, to be looked at is increasing which the characteristics andexponentially. capabilities of the successful practitioner and the future of patent regulation, global Searching, whichon is a not donescale. in every case, is not an inexpensive process; but if the invention is important enough, clients often search because it will help better direct the patent claims as filed and avoidofthe need to narrow the claims that create the adverse consequences mentioned above. Table Contents Inside the Minds—The Art & Science of Patent Law

Unfortunately, not only is there an expense involved in searching, but there are also duties that arise,

Patent Law—Complex, Frustrating, and Rewarding including the duty of candor to disclose to the Patent Office all material prior art. Patent attorneys, with Of Better Mousetraps and Beaten Paths few exceptions in my opinion, diligently attempt to meet that obligation. There are many pitfalls along Getting It Right the First Time—The Process the way, and sometimes the duty Biomedical of candor isPatent not met through no fault of the patent attorney, but Communication—The to Success in by Patent Law Practice because of inaction Key or actions taken clients. Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Wanted: Clairvoyance by Inside the Minds Staff

ISBN:1587623463

The single most difficult drafting thepages) drafting of patent claims and the amendment of patent Aspatore Books ©task 2004is(245 claims. A patent attorney who drafts patent define on thethe invention This text is an authoritative,claims, insider’swhich perspective laws and therefore define the subject matter that the govern patent can exclude, is currently assumed to be clairvoyant. which patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global The patent attorney’s actualscale. knowledge of the technology and information is typically that which he can get from the inventor at the time the application is being prepared for filing. That application will live as a patent for 20 years from the filing date. In high technology, 20 years is a very long time, and it is Table of Contents extremely difficult for the patent attorney to anticipate what will happen over the next 20 years to Inside the Minds—The Art & Science of Patent Law ensure that claims written today will cover the original invention and future unknown variations of it, yet Patent Law—Complex, Frustrating, and Rewarding not write claims that would cover the prior art both known and unknown. There is no more difficult Of Better Mousetraps and Beaten Paths drafting job than that. Getting It Right the First Time—The Biomedical Patent Process

Communication—The Keyisto Success in Patent Lawtechnological Practice An additional problem that inventions involve concepts. The English language does Toolkits, Football, the Power of Patents not always allowand a perfect expression of such a concept. The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the The Art & Process Science of Patent Law Time and Money inMinds: the Patent by Inside the Minds Staff

ISBN:1587623463

It takes as little asAspatore one-and-a-half years topages) complete the patent process, but usually two to three years. Books © 2004 (245 In exceptional cases, it may run several years longer.perspective The patenton laws provided patents with a This text is an authoritative, insider’s theformerly laws 17-year lifespan, which regardless ofpatents, the number of years required to issue theofpatent after its filing. Because govern the characteristics and capabilities successful practitioner and the to future of up patent of that, applicantsthe were not necessarily motivated speed the regulation, application process, and many were on aprocess global scale. known to abuse that and keep applications pending for decades. This is widely known as the “submarine patent”encoding="ISO-8859-1"?> practice. That practice is fading because of the 20-year limit of patents measured
A typical attorney’s fees and application fees for a modestly complex invention may be around $10,000. Before the patent is issued, that may double. For a very simple invention, a client may get a Of Better Mousetraps and Beaten Paths patent for half those numbers, but he should typically expect between $10,000 and $30,000 as the Getting It Right the First Time—The Biomedical Patent Process total cost of obtaining a patent. It is not a cheap process. That cost limits patents to the more significant Communication—The Key to Success in Patent Law Practice inventions; it also unfortunately inhibits the filing of patents by people who make useful inventions but Toolkits, Football, and the Power oftoPatents do not have financial resources pay that fee. Patent Law—Complex, Frustrating, and Rewarding

The Full-Service Patent Law Practice

Paradoxically, it is hardest get patents on simple The Metes and Bounds of theto Patent Application Processideas because they usually have a clutter of surrounding ofaprior art.Valuable The more complicated the technology, the easier it is to get a patent. If Taking Proper items Care of Client’s Assets youPatent have aWar very complicated to idea, The Game—Playing Wintypically you can find some part of it that is both new and nonobvious; however, even to when you have a complex concept, getting an optimum patent is always a Patent Law-From Bicycles Biotech challenge. the System Works Patents—How Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside thePatents Minds: The Art & Science of Patent Law Infringements on by Inside the Minds Staff

ISBN:1587623463

Early awareness Aspatore of an infringement is (245 important. Books © 2004 pages) Systematic searches can be done of other companies’ patents, product literature, and keep abreast of what This text is an authoritative,articles insider’stoperspective on the laws your competitors are doing. While those types of organized, methodical searches be usedofto find infringements, most which govern patents, the characteristics and can capabilities the successful and the future of patentisregulation, frequently, we find that the first practitioner and best indication that someone infringing a patent comes from on a globalor scale. members of the marketing sales group of a company, particularly when faced with direct competition from the infringer. Table of Contents

Whether to prosecute a company for violation of infringement becomes a fairly complex decision. The considerations are not limited to just the particular company that will be sued. For example, patent Patent Law—Complex, Frustrating, and Rewarding indemnification clauses are ubiquitous today. Consequently, a lawsuit against Company A may cause Of Better Mousetraps and Beaten Paths an unplanned entry of Company B into the litigation if Company B has indemnified Company A for any Getting It Right the First Time—The Biomedical Patent Process claims of patent infringement. Company B may be the last company in the world with which your client Communication—The Key to Success in Patent Law Practice wants to pick a fight. Inside the Minds—The Art & Science of Patent Law

Toolkits, Football, and the Power of Patents

The Law Practice If aFull-Service company isPatent protecting a market space, it may choose to sue a violator of its patent even though the

suitMetes may not economically justified in the context The andbe Bounds of the Patent Application Processof the volume of sales of that one company, but because theyCare believe company is a harbinger of more competition and more entries into that Taking Proper of a that Client’s Valuable Assets market space. Other times you to sue a particular company simply because the company you The Patent War Game—Playing to decide Win are suing has sold an enormous Patent Law-From Bicycles to Biotechamount of product or would be expected to sell an enormous amount of product, and cost Works of litigation becomes small compared to the potential recovery. Patents—How the the System Reflections on the Practice of Patent Law

The best litigations are not for money, but to control a market space. The value of that litigation is

Patents—Knowing theon Value, Working from the System measured not only the recovery the infringer, but also on the benefits your client will obtain

from enforcement of its patent in that market space. It will be able to sell more product or may even get a higher profit margin because price erosion does not occur if you keep the infringing competitor out of the marketplace. You should look at not only the benefits to your client as far as maintaining price and market share are concerned, but also to the recovery from the infringer and the longer-term effects.

the Minds: The Art & Science of Patent Law TechnologyInside Driving Patents by Inside the Minds Staff

ISBN:1587623463

Patents protect innovation. That ©is2004 the (245 underlying Aspatore Books pages) theory of patent law, but it is not the underlying practical incentiveThis of patent law. In truth, an is a brilliant, person who will come text is an authoritative, inventor insider’s who perspective on theinnovative laws up with an inventive idea is hard to motivate. That personand will capabilities invent simply which govern patents, the characteristics of because it is her nature. the futureinvestment of patent regulation, The real incentivethe of successful the patentpractitioner system is toand encourage in research and development. on a global scale.

If a company or an individual knows that if they invest money to develop a new product and if they succeed in making a patentable contribution, they will get exclusive rights to that new development, Table of Contents they are more likely to invest in the first instance. We want to encourage investment in innovation, for Inside the Minds—The Art & Science of Patent Law that is the pathway to technological progress. Most inventions today occur because somebody decided Patent Law—Complex, Frustrating, and Rewarding to put time, money, and effort into a new technology or new product, and that effort did result in the Of Better Mousetraps and Beaten Paths making of an invention. Getting It Right the First Time—The Biomedical Patent Process

Communication—The to Successadvance in PatentisLaw The driving force of Key technological thePractice reasonable expectation of companies that an Toolkits, Football, and the Power ofwill Patents investment in new technologies secure an enhanced return on their investment as compared to The Full-Service Law Practice more traditionalPatent investments. A fair and effective patent system is an integral part of that driving force

because is the vehicle by which may secure the exclusive rights to the fruits of their The Metes it and Bounds of the Patent companies Application Process investment as to a return on the investment. If you did not have the fair and effective patent Taking Properso Care of allow a Client’s Valuable Assets system to War protect those who invest The Patent Game—Playing to Winand create inventions, opportunistic competitors would jump on that invention and start producing it without having incurred the development costs. Since they did not pay Patent Law-From Bicycles to Biotech the price of admission, development costs, they can easily undercut the innovator. Thus, the real Patents—How the Systemthe Works

purpose of our patent system is to encourage investment in new technologies. That is why we have a patent system.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law International Laws by Inside the Minds Staff

ISBN:1587623463

There is currentlyAspatore an effortBooks in Europe unify the European patent system. If successful, we will have a © 2004to (245 pages) standard of patentability, such as novelty and non-obviousness This text is an authoritative, insider’s perspectivethroughout on the lawsthe world that is fairly similar. Even though wegovern may end up with similar standard patentability which patents, theacharacteristics andof capabilities of throughout the world, how the successful practitioner the future of patent regulation, the standard is applied will naturally vary byand country. on a global scale.

Also because of public policy, some things we routinely patent in the United States, such as biotech inventions, pharmaceutical inventions, or health-related inventions, cannot be patented in other Table of Contents countries. In addition to variations as to what subject matter can be patented, there is also a variation in Inside the Minds—The Art & Science of Patent Law the tribunals in which patent issues are resolved. In the United States, much of the real battling Patent Law—Complex, Frustrating, and Rewarding between companies on patents occurs in our traditional judiciary, the federal courts, which handle all Of Better Mousetraps and Beaten Paths kinds of cases. In Europe, patent disputes are often resolved in specialized courts and administrative Getting It Right the First Time—The Biomedical Patent Process bodies. Moreover, we may soon have the European Patent Office in a very specialized patent court in Communication—The Key to Success in Patent Law Practice Luxembourg. Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds:Practice The Art & Science of Patent Law Boutiques Inside vs. General Firms by Inside the Minds Staff

ISBN:1587623463

One of my daily tasks is toBooks cogitate on (245 where we are going as a profession and to make sure our Aspatore © 2004 pages) intellectual property group stays up with and preferably ahead ofon thethe trend. This text is an authoritative, insider’s perspective lawsWhat we are seeing is an evolution in this industry from most patent being and handled by IP boutique firms to most litigation which govern patents, the litigation characteristics capabilities of successful practitioner andtrend the future of patent regulation, being handled bythe general practice firms. The of patent litigation going into the big general on a global scale. Twenty years ago there was virtually none in the general practice practice firms is readily apparent. firms, and now theencoding="ISO-8859-1"?> majority of it, and especially the highest stakes litigation, is in the general practice
The other trend is to smaller IP boutiques, rather than larger. For many years, IP boutiques got larger and larger. Now that the litigation practice is slowly moving toward the general practice firms, the need Getting It Right the First Time—The Biomedical Patent Process for such very large IP boutiques is not as acute as it used to be, and indeed largeness in an IP Communication—The Key to Success in Patent Law Practice boutique carries the undesirable side effect of larger numbers of conflicts that limit the acquisition of Toolkits, Football,We and thenow Power of Patents new business. are seeing IP boutiques that are very specialized in patent prosecution and The Full-Service Patent Law Practice somewhat more modestly sized, although some of the IP boutique players I mentioned before are so The Metes and Bounds of the Patent Application Process strong they will continue large in the foreseeable future. Of Better Mousetraps and Beaten Paths

Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Aspects Minds: The Art Science a of Patent Patent Law Most Challenging of&Being Lawyer by Inside the Minds Staff

ISBN:1587623463

Patent law deals Aspatore with two very complex entities. Books © 2004 (245 pages) In patent law, you are not dealing with technology that is ten years old orThis fivetext years old or even one year old.perspective You are dealing is an authoritative, insider’s on the with lawstoday’s technology, and there are no textbooks it. Keeping with today’s technology is a veryofcomplicated aspect of our which on govern patents,up the characteristics and capabilities the successful practitioner and the futureof ofour patent regulation, practice – and a challenging and very rewarding aspect practice. Most patent attorneys love that on a global scale. challenge. Another challenging aspect is the body of law. Patent law is one of the most complex bodies of law Table of Contents

that exist today. There are so many facets and so many nuances to patent law that just keeping up with the daily changes or weekly changes is a significant task in itself. We have all sorts of ways to Patent Law—Complex, Frustrating, and Rewarding learn about the latest patent decisions and mechanisms within the firm, where anything significant that Of Better Mousetraps and Beaten Paths happens is immediately broadcast to all members of the group. Keeping up with this complex body of Getting It Right the First Time—The Biomedical Patent Process law is not easy. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

Toolkits, Football, and the Patents If you are in litigation, youPower also of have to learn another complex skill set, which is a skill set of advocacy, The Patent Law Practice theFull-Service presentation of complex facts and law to a judge and jury, the examination or cross-examination of

witnesses at trial, etc.ofIf the youPatent are in Application prosecution, you are back to the requirement of being clairvoyant in The Metes and Bounds Process drafting claims and with the Patent Office so that you cover technology 20 years later. All of Taking Proper Care ofdealing a Client’s Valuable Assets thisPatent is veryWar complex. Indeed, that is the challenge of the practice. Anybody who does not think it is a The Game—Playing to Win daunting task is Bicycles misinformed. Anyone who is doing it well has relished the opportunity to try to conquer Patent Law-From to Biotech that complexity. Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: The Art & Science of Patent Law Measuring Inside Personal Success by Inside the Minds Staff

ISBN:1587623463

As an internal measure, to ©know my team did the best possible professional work on the AspatoreI like Books 2004 that (245 pages) case. To the outside world, the measurement is whether we won.on the laws This text is an authoritative, insider’s perspective which govern patents, the characteristics and capabilities of

Managing the group, I look to the membersand of the feedback that I am doing the right things the successful practitioner the group future for of patent regulation, a global scale. by them. We are on a partnership. The nature of a partnership is that the partners own the organization. The leaders of the firm report to those owners. It is important to know I am doing what the owners want. is how I measure my personal success as a manager – whether I am doing a job that they Table ofThat Contents perceive is the right job. Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: The Art & Science of Patent Law Changes inInside the Industry by Inside the Minds Staff

ISBN:1587623463

In October of 1982, the Federal waspages) formed. Before that, patent cases were appealed to the Aspatore Books Circuit © 2004 (245 regional circuits throughout the country. Each of these circuits determined This text is an authoritative, insider’s perspective on the lawsthe patent law for that circuit. The circuits differed in some of the substantive aspects of the patent which govern patents, characteristics and capabilities of law. Congress decided it the successful practitioner and the future of patent regulation, was not good to have this variation of patent law throughout the country and established the single onhear a global scale. appeals. Generally that has unified the patent laws. court, which would all patent While Table ofunification Contents was predictable, what was not predictable was that the new Federal Circuit Appellate

Court would make patents more valuable. Patents were made more valuable because the Federal Circuit found more innovative ways to find patents valid and more innovative ways to measure Patent Law—Complex, Frustrating, and Rewarding damages that resulted in very significant damage awards. That made patent cases far more important Of Better Mousetraps and Beaten Paths in the overall scheme of things, and patent litigation became “big-time litigation.” Indeed, that increase Getting It Right the First Time—The Biomedical Patent Process in stature of patent litigation was part of the motivation for the large general practice firms to enter the Communication—The Key to Success in Patent Law Practice field. The seed that was planted by the Federal Circuit in 1982 has continued to grow, and we find that Toolkits, Football, and the Power of Patents patent cases have become some of the most significant litigation that companies face in their The Full-Service Patent Law Practice corporate lifetimes. The trend simply has continued. Inside the Minds—The Art & Science of Patent Law

The Metes and Bounds of the Patent Application Process

The patent enormous Today we have too few examiners, and they’re Taking Properprocess Care of needs a Client’s Valuable improvement. Assets overworked and pressured totoget results which are often measured by the number of patents issued – The Patent War Game—Playing Win the wrong measure. Thetoonly appropriate measure is quality, not quantity. Consequently, we issue far Patent Law-From Bicycles Biotech too many patents from the Patent Office that are objectively not valid. They do not represent inventions Patents—How the System Works that rise to the legally significant level.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working System I would like to see the process in thethe Patent Office improve. There have been many proposals, but we

actually need a wholesale revision of how we do things, rather than minor changes, if we are going to issue a higher percentage of quality patents. The litigation process after the patent is out of the Patent Office has become far too complex and expensive. We need ways to streamline that process. Perhaps, for a select portion of patent disputes in this country, improvement will include going to an expert panel, more or less in an arbitration fashion, who are skilled in patent law and technology and can resolve these cases without the enormous expense we see today. Whether that will be an elective process by the parties or a mandatory process will be an interesting issue. Industry segments have been working on alternative processes for years, with only very limited success. The principal problem is that the alternative approaches almost always require both parties to the dispute to agree, and that happens infrequently. Over the next five to ten years, I don’t see that there will be much of a difference. We will just see a continuation of the status quo – patent cases being very expensive to litigate and damages being very significant. If you look out over ten years, however, I would like to see some of the problems solved resulting in higher-quality patents issued by the Patent Office. I would like to see alternative litigation strategies that industry segments have been working on, actually bear fruit and become reality, emerging from the experimental stage they are still in today. I would like to see frequent use of these alternative strategies. That may be something we will see over the next ten years.

Inside the Minds: The Art & Science of Patent Law Risky Business by Inside the Minds Staff

ISBN:1587623463

In litigation and patent law,Books we are in a(245 riskpages) management business. You face a number of risks in Aspatore © 2004 deciding whetherThis to invest in a new technology. Those risks are well known text is an authoritative, insider’s perspective on the laws to businesspeople and entrepreneurs. which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, onthe a global scale.side, too. You take a risk if you don’t effectively mine for inventions. There are risks on patenting You take a risk if you don’t hire the right patent attorney who has the right skill set. You take a risk if you don’t file the right patents. Table of Contents Inside the Minds—The Art & Science of Patent Law

The greatest risk-taking comes eventually when you are in litigation on your patents. When you are a

Patent Law—Complex, Frustrating, Rewarding defendant, for example, you are and risking an injunction. If the patent is held valid and infringed, trial Of Better Mousetraps and Beaten Paths courts will often issue an injunction at the close of trial. Thus, your client is denied the freedom to Getting Right the Time—The Biomedical Patent Process operateIt during theFirst appeal process. Communication—The Key to Success in Patent Law Practice

In litigation, defendants risks as to whether they will face an injunction, a significant damage Toolkits, Football, and the take Power of Patents award, or a costly settlement. Plaintiffs, on the other hand, take a risk because the patent that is The Full-Service Patent Law Practice central toand theirBounds marketing strategy may be struck down. That, in turn, may open the market to all kinds The Metes of the Patent Application Process

of competition and reduce the price and volume of the patent owner’s product sales. This is a risktaking business from start to finish, and our job as patent attorneys is to manage that risk wisely for our The Patent War Game—Playing to Win clients. Taking Proper Care of a Client’s Valuable Assets Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Fitting All the Pieces Together by Inside the Minds Staff

ISBN:1587623463

The most frequently givenBooks advice© is that you need quality representation. The business now is Aspatore 2004 (245 pages) enormously complicated from a technological standpoint and a legal standpoint. This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of

You must make good decisionspractitioner in retainingand thethe kind of lawyer you will use to deal with the patents. the successful future of patent regulation, on a global scale. There is a place for low-priced patent attorneys. Big companies have reasons for using low-priced patent attorneys and use them very successfully. But the company has to decide exactly how important the invention is to the company, and if it is very important, they cannot skimp. They have to Table of Contents go for the best there is to represent them and use price as one factor only. Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding The golden rules of patents include: Of Better Mousetraps and Beaten Paths

1. Don’t assume a new development is not patentable. Go to a professional.

Getting It Right the First Time—The Biomedical Patent Process

Communication—The to competitor Success in Patent Practicewith their patent portfolio. Assume competitors 2. Don’t assumeKey your will beLaw generous Toolkits,will Football, and the Power of Patents be aggressive. The Full-Service Patent Law Practice

3. Don’t technology so rapidly Process evolving that patents are irrelevant. Patents live for a long The Metes andassume Bounds of the PatentisApplication time, and skilledValuable patent practitioner, claims can be drafted that will cover technology as it Taking Proper Carewith of aaClient’s Assets evolves for 20 years. Fast-moving technology does not mean patents are irrelevant.

The Patent War Game—Playing to Win

Patent Bicycles to Biotech 4. Law-From Always hire the best practitioner you can afford. Patents—How the System Works

Every newly patent case Law is a piece of a whole puzzle. Patent law is like having a partially Reflections on reported the Practice of Patent completed puzzle laid out before you. pieces are in place, and you can see a fairly good image Patents—Knowing the Value, Working theMany System in regions of the puzzle, but a lot of pieces are not in place yet. As new cases are reported, those pieces are put into place one at a time, day by day. While the patent laws are necessarily fluid, the picture presented today is a great deal clearer than the picture presented in October 1982 upon formation of the Federal Circuit. The increased certainty of this clearer picture is good, since as uncertainties fade, investments in new technologies are encouraged, bringing improvements to all of us. William L. Anthony, a partner in Orrick’s Silicon Valley office, is the chair of the Intellectual Property Group. He focuses his practice exclusively on technology and high-stakes patent litigation. Mr. Anthony has tried a substantial number of cases, to both jury and bench, involving semiconductors, computers, and biotechnology. He also has appeared numerous times before the Court of Appeals for the Federal Circuit. Before joining Orrick, Mr. Anthony was a partner at Brobeck, Phleger & Harrison LLP, where he headed the intellectual property practice and served as a lead patent litigator. Before that, he was with Townsend, Townsend & Crew, where he was a partner from 1983 to 1990. Mr. Anthony frequently lectures on a variety of legal topics for such organizations as the Practicing Law Institute, the Peninsula Patent Law Association, the San Francisco Intellectual Property Law Association, the American Intellectual Property Association, and the Intellectual Property Section of the California State Bar. Mr. Anthony has been admitted to practice before the Patent Office and is a member of the State Bars of Connecticut (1966), Michigan (1967), and California (1982).

the Minds: The Art & Science of Patent Law Of BetterInside Mousetraps and Beaten Paths ISBN:1587623463 by Inside the Minds Staff Aspatore Books © 2004 (245 pages) Samuel W. Apicelli This text is an authoritative, insider’s perspective on the laws Duane Morris, LLP which govern patents, the characteristics and capabilities of Partner

the successful practitioner and the future of patent regulation, on a global scale.

“The future belongs to those who believe in the beauty of their own dreams.” Table of Contents – Eleanor Roosevelt Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths

Patent Law Basics

Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice

A patent is a right provided for by the U.S. Constitution that allows inventors to prevent others from making, using, or selling their inventions without permission. The U.S. Constitution at Article 1, section The Full-Service Patent Law Practice 8, clause 8, grants Congress the power: Toolkits, Football, and the Power of Patents

The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets

“To War promote the progress of science and useful arts, by securing for limited times to authors and The Patent Game—Playing to Win inventors Bicycles the exclusive right to their respective writings and discoveries” Patent Law-From to Biotech Patents—How the System Works

Essentially, Congress has been authorized to grant inventors the exclusive rights to their ideas for a limited time to encourage the progress of science and the useful arts. That is the essence of patent Patents—Knowing the Value, Working the System law. Our founding fathers decided that it was not only important to encourage people to invent, but it was also important to encourage inventors not to keep their ideas secret, but instead to let the citizens of the United States know about their ideas. The intent of these “intellectual property” provisions is inconsistent with secrecy, and is more like a contract where exclusive rights are exchanged for public disclosure of an idea, and its eventually becoming public property. Reflections on the Practice of Patent Law

The patent clause of the U.S. Constitution was one of the provisions that Jefferson and Franklin felt very strongly about. Many of the other founding fathers believed a patent system was important to help science progress in the newly formed republic. Of course, back then they actually did not refer to technology as “science,” but rather as the “useful arts.” “Science” referred instead to literature. An idea is “protected” by keeping it secret or by obtaining such legal protection as may be available under the law. Being the originator or inventor does not of itself carry the right to exclusive ownership of an idea. While the idea remains secret, it can be guarded and disclosed only to persons who previously have promised not to use or disclose the idea without your approval. A specific written contract (a socalled “Confidentiality Agreement”) is preferred for this purpose over an oral agreement or understanding, the terms of which may be difficult to prove. An agreement that promises confidentiality binds only the parties to the agreement. It cannot bind third parties who may independently develop a similar idea or find out about the idea innocently. If an inventor intends to publicize his or her idea, for example, by marketing a product embodying the idea, secrecy will be lost. Under such circumstances a confidentiality agreement is useless. Unless the inventor or originator has obtained exclusive rights under the law, he or she has no right to stop competitors from selling a similar product. Many companies have a strict policy to decline all offers of confidential disclosure. If an inventor proposes a disclosure to such a company, he or she may be provided with a “Disclosure Form” that does not promise confidentiality. The typical form specifically disclaims any duty of confidentiality. If the inventor discloses the idea under such terms, he or she has no right to complain later about others using or disclosing the idea. Moreover, the fact the idea has been disclosed may make it impossible to obtain a patent in the United States or in other countries. Different types of ideas fit into different niches of the law. Not every idea is protectable. For example, mathematical algorithms and laws of nature are excluded under the patent laws, which are intended to protect articles of manufacture, methods of manufacture, ornamental designs of useful articles, and some forms of plants. There are three types of patents: a design patent, a utility patent, and a plant patent. Design patents run for 14 years and provide exclusive rights in ornamental designs of useful

articles. Utility and plant patents run for 20 years. Plant patents are a unique type of patent, governed by a very small portion of the patent law directed to the protection of asexually propagated plants. Plant patents areInside rarely seen by most patent attorneys. the Minds: The Art & Science of Patent Law by Inside the Minds Staff There are also three main requirements to obtain a utility patent. To be patentable, an invention as it is Books © 2004 (245 pages) claimed must be Aspatore useful and unknown (“novel”) in the prior art, and the differences between the an authoritative, perspective on the laws invention and theThis priortext art is must be such that insider’s the subject matter claimed as a whole would not have which govern patents, the characteristics and capabilities of been obvious to athe person of ordinary skill in the art at the time the invention was made – that is, the successful practitioner and the future of patent regulation, invention must beon“unobvious.” a global scale. ISBN:1587623463

Usefulness is a requirement that weeds out inventions like perpetual motion machines and other sorts Table of Contents of quackery. It gives the Patent Office the ability to deny a patent if an examiner sees no technological Inside thethe Minds—The & Science Patent Law a patent on this basis, the inventor then has to provide use for invention.Art If the Patent of Office denies Patent Law—Complex, andactually Rewarding evidence that, in fact,Frustrating, the invention works and is useful. Of Better Mousetraps and Beaten Paths

The invention alsoTime—The be new. Specifically, an inventor Getting It Right must the First Biomedical Patent Processwill not receive a patent if the invention was

described in a printed publication or patented anywhere else in the world before he or she invented it. The patent statute also provides that the invention cannot have been described in a printed publication, Toolkits, Football, and the Power of Patents patented, or be in use, or “on-sale,” in the United States for more than a year before the filing date of The Full-Service Patent Law Practice an application. So there are actually two requirements to establish novelty. The second is an artificial The Metes and Bounds of the Patent Application Process requirement, part of the reason behind which is that Congress has recognized that getting patents is Taking Proper Care of a Client’s Valuable Assets an expensive undertaking. Congress therefore reasoned that a year before an inventor applies for a The Patent Game—Playing to Win to test-market the invention by offering it for sale to see if it has patent, heWar or she should be allowed Patent Law-From Bicycles to Biotech any commercial value. However, after a year of commercially disclosing the invention, it would be Patents—How the Systempublic Worksif the inventor were to then file for patent protection. unfair to the American Communication—The Key to Success in Patent Law Practice

Reflections on the Practice of Patent Law

The last requirement for patentability is System nonobviousness. This is a difficult one to explain, and I usually Patents—Knowing the Value, Working the use a short story to illustrate the concept. You come to my office and say, “Sam, I have a little kid’s wagon. I have painted it purple, pink, and yellow plaid. I have searched the world and cannot find a written description for such an invention. I believe there has never been a purple, pink, and yellow plaid wagon in the course of history. Please give me my patent.” I respond, “Yes, you're probably right. There probably have never been any purple, pink, and yellow plaid wagons out there. However, even though you have met the novelty requirement, little kid’s wagons are well known. People who make such wagons are referred to in the patent law as ‘skilled in the art.’ Those skilled people know that wagons can be painted, and they normally paint them red. Persons skilled in the art are also aware of the palette of colors that are available, and that purple, pink, and yellow are well known colors. Also, the plaid pattern is many thousands of years old and very well known. The combination of a little wagon with purple, pink, and yellow plaid is an obvious variation. A person with skill in the art of making wagons would find this is an obvious change to make, so you are not entitled to a patent.” However, you then say to me, “I understand all that, but when you take my purple, pink, and yellow plaid wagon one thousand yards out into the middle of the field, it becomes invisible. It completely vanishes so that the human eye cannot see it.” Now the invention has switched from the obvious to the unobvious. Typically the unobvious invention demonstrates an unexpected result. Often, a patentable invention comes about as a result of searching for a solution to an ongoing, long-felt problem or need that people in the art have tried to solve, but were unable to do previously. Nonobviousness can be startling, or ever so subtle. A U.S. patent gives the holder rights only within the borders of the United States. Most countries in the world require “absolute” novelty; that is, the invention cannot have been publicly disclosed or offered for sale prior to the filing date of a patent application. The United States has entered into two international treaties with regard to patents: the Paris Convention Treaty and the Patent Cooperation Treaty. Countries that adhere to these treaties acknowledge a filing in other countries and allow for additional time to file in their home country. For example, if you file for a patent in the United States, you have one year from the U.S. filing date to file in each country that adheres to the Paris Convention Treaty, or lose all your rights in each country. If you file under the Patent Cooperation Treaty, you can get that time period extended, along with an international examination of your application. Even with the benefits of these treaties, at the end of the day, the inventor still has to go through each individual

country’s examination process to get a patent right granted in that country. Inside the Minds: The Art & Science of Patent Law by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: ArtSociety & Science of Patent Law The Patent Inside System and The Our by Inside the Minds Staff

ISBN:1587623463

I think the U.S. patent system is © one of(245 thepages) reasons our country has prospered and has been a Aspatore Books 2004 technological leader in the world. A common misperception is that This text is an authoritative, insider’s perspective on patents the lawskeep others from doing something they want togovern do andpatents, have anthe inherent right to do. think that isofthe wrong perspective. What which characteristics andI capabilities successful practitioner and the future of is patent regulation, a patent provides,the and has shown to do throughout history, to challenge others to innovate, rather on a global than accept the obstacle andscale. do nothing. This innovative spirit fuels our economy. For example, about ten years ago, if you looked in the Patent Gazette , where newly issuing patents are Table of Contents

published, you would have seen that several hundred patents had issued for technology developed to keep people from getting stuck by hypodermic needles and scalpels. The question becomes why such Patent Law—Complex, Frustrating, and Rewarding a concentration of patents in this area? At that time, AIDS had just become a public health issue, since Of Better Mousetraps and Beaten Paths an accidental needle prick could sentence an EMT worker or surgeon to death for simply doing their Getting It Right the First Time—The Biomedical Patent Process job. A problem existed and needed to be solved. Also, inventors realized that success would yield an Communication—The Key to Success in Patent Law Practice opportunity to make a profit. This resulted in literally hundreds of different ideas being put forward, Toolkits, and the Power of Patents many ofFootball, which were granted patents. Instead of retarding development, the patent system actually The Full-Service Patent Law Practice encouraged innovation by forcing each inventor to improve upon the known technology to obtain a The Metes andpatent Bounds of the isPatent Application Process patent. The system truly one of the main engines of our technological society. Inside the Minds—The Art & Science of Patent Law

Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: TheObtaining Art & Science a of Patent Patent Law CounselingInside the Client on by Inside the Minds Staff

ISBN:1587623463

When first meeting with a client their intent to get a patent, I normally explain to them the Aspatore Books regarding © 2004 (245 pages) patent process and the Patent Office requirements have to meet. This text is an authoritative, insider’sthey perspective on the For lawsexample, I explain that a patent is obtainedwhich by filing a patent application with the U.S. and Trademark Office, and govern patents, the characteristics andPatent capabilities of the successful practitioner the future patent regulation, prosecuting the application before a patentand examiner untilofthe patent is granted, whereupon the term of on a global exclusive rights begins. I alsoscale. ask them what they intend to do with their invention. A patent is an asset I am going to help them create. The client will end up spending a great deal of money on that asset, and of they should not spend that money unless they are going to make a profitable return on that Table Contents investment. Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding

As a consequence of this philosophy, I often give the client my “wet blanket speech.” I explain to them that no one will come to their house the day after their patent issues and dump a bucket of money on Getting It Right the First Time—The Biomedical Patent Process their front door step. That simply does not happen! Hard work, coupled with a passionate belief in the Communication—The Key to Success in Patent Law Practice utility of their invention, is the premier requirement for successfully creating a business around a Toolkits, Football, and thegenerating Power of Patents patented idea, thereby a profitable return on the capital they have risked. Of Better Mousetraps and Beaten Paths

The Full-Service Patent Law Practice

My Metes next step to encourage the client to do some Web-based patent searching. Clients should do that The and is Bounds of the Patent Application Process for a couple reasons. One, Valuable it gets them familiar with what patents are and what they are spending Taking Proper of Care of a Client’s Assets their money on. Second, theytoknow The Patent War Game—Playing Win their invention better than anyone else and can therefore do a fairly thorough Often I suggest clients have me hire a professional searcher in Patent Law-Fromfirst-cut Bicyclessearch. to Biotech Washington to no search avenues were overlooked. Remember, if the invention has Patents—How theensure Systemthat Works

already been described in a printed publication or a patent, there will be significant questions raised as to the viability of obtaining a patent at all.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the System

During the Web-based search, the client gathers a large amount of helpful information. The client can see which companies have patents on products that are very similar to their invention. If the client then gets a patent, those companies should be contacted regarding a license deal. Alternatively, the client might find someone else who already has been issued a patent for the same or a similar invention and has already spent several thousand dollars with their patent attorney. The client might want to contact that person to investigate the possibility of a license deal. A patent license is a form of contract in which one party agrees to allow another party to use their invention in exchange for a fee. If the client wishes to make, use, or sell an invention that is the subject of a patent, they must get the patent-holder's permission, or be liable for infringement. If they knew of the patent and still infringed, any monetary liability can be trebled by a court upon a finding of willfulness. In this situation, getting a license will be less costly and more expeditious than applying for a patent itself, or “just doing it anyway.”

the Minds: The Art & Science of Patent Law Pursuing aInside Patent by Inside the Minds Staff

ISBN:1587623463

If the client wishes to pursue a patent, the pages) first step is to draft a written description of the invention and Aspatore Books © 2004 (245 prepare formal drawings of the invention. In the first person to laws invent has a “priority of right,” in This text is an authoritative, addition, insider’s perspective on the the United States,which so it govern is very important forcharacteristics the client to document, in a signed writing, when the patents, the and capabilities of the successful practitioner andathe future of patent regulation, invention was conceived. After that, I prepare draft patent application for their review. Applications for a global patent must fully on disclose thescale. material sought to be protected. This material will be dedicated to the public when the patent eventually expires, and a patent normally cannot be extended or renewed. The scope exclusive rights is defined by claims that specifically define the elements of the invention and Table of of Contents how the fit Art or work together. The patent application as a whole must disclose the invention in Inside theelements Minds—The & Science of Patent Law sufficient detail to enable a person ordinary skill in the art to make and use the subject matter Patent Law—Complex, Frustrating, andofRewarding claimed. Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process

The typical utility patent application includes a substantial write-up describing the field of the invention, the pertinent prior teachings in that field (the “prior art”), a detailed description of preferred Toolkits, Football, Power of Patents embodiments ofand the the invention, and the claims. Drawings showing the claimed elements of the The Full-Service Patent Law Practice invention are required in most cases. Formal documents, including an Inventor’s Declaration, are The Meteswhen and Bounds of application the Patent Application Process needed filing the with the Patent Office, as is an official filing fee. Communication—The Key to Success in Patent Law Practice

Taking Proper Care of a Client’s Valuable Assets

ThePatent filing fees for individuals and small businesses are lower than for large businesses. The applicant The War Game—Playing to Win can qualify for the lowerto fee rates by simply swearing to the fact. Patent Law-From Bicycles Biotech Patents—How the System Works

At the end of the application, there is one or more claims. The claims are very similar to the “metesand-bounds” portion of a deed for real estate. In a deed, there is always a “metes-and-bounds” clause Patents—Knowing the Value, Working that defines the property claimed bythe theSystem deed – that is, “the parcel of land running from the old oak tree to the iron post.” In a similar fashion, the claims section of a patent application defines the invention. Each claim defines the property to which the inventor wants to have exclusive rights granted by the government. Broader, less-detailed claims cover a larger range of variations than narrower claims. Thus, broader claims make it more difficult for a competitor to sidestep the patent by structuring a competing article in a manner different than that claimed. On the other hand, narrower claims are more readily passed by the examiner as unobvious. It is important when drafting the original claims and when later amending the claims to distinguish over prior art, to concentrate on the commercially valuable aspects of the invention, and to avoid adding any limitations that are unnecessary to support an argument that the invention is novel and unobvious. Reflections on the Practice of Patent Law

When the application is completed and approved by the inventor, it is filed, along with a government fee, at the U.S. Patent Office. Once the application is filed, the office will send an official filing receipt in about six to eight weeks to confirm the arrival and entry of the application into the system. Each application is assigned to a patent examiner working in the technical field of the invention. The examiners range from recent graduates of engineering schools to grizzled veterans who have spent many years examining applications in a particular field. The examiners have a backlog of applications to examine, and an applicant can expect a first official action 14 to 18 months after their filing date. The examiner will review the claims and do a patent search to determine whether the invention is useful, novel, and nonobvious, and then report their conclusions in an official action mailed to the patent attorney who filed the application. If the invention can jump all the hurdles (usefulness, novelty, and obviousness), then the inventor will receive a patent. If the patent examiner decides the application does not meet one or more of those requirements, the application will be rejected. The official action will state any grounds for rejection and provide copies of documents the examiner found in a search. Upon receipt, I will read through the official action and explain to the client what the examiner's conclusions were and how we might go about persuading the examiner to reconsider and withdraw the rejection. The inventor/applicant has a right to reconsideration of the application. That is a formal request made in writing to the patent examiner to reconsider the decision. The inventor is entitled to amend the claims and provide written arguments in an effort to distinguish the invention from any prior art relied upon by the examiner. The applicant, through his or her attorney, files this response to the official action to point out to the examiner why the invention is novel and unobvious, and/or to amend the claims to define the invention more narrowly. If the patent examiner is convinced, by a

preponderance of the evidence, that his objections are overcome, then the inventor will be issued a patent for the claimed invention. Inside the Minds: The Art & Science of Patent Law by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside in thethe Minds: The Art Process & Science of Patent Law Costs Involved Patent by Inside the Minds Staff

ISBN:1587623463

A significant amount of theBooks cost of obtaining a patent is associated with lawyer fees. Patent attorneys’ Aspatore © 2004 (245 pages) fees are based upon market forces. People do write their own patent applications, but as I often tell This text is an authoritative, insider’s perspective on the laws prospective clients, “You can also do your brain surgery, but you probably won’t be happy with the which govern patents, the own characteristics and capabilities of the successful practitioner and the future of patent results.” As an attorney, I cannot review patent applications draftedregulation, by a layperson because that would onthe a global be unethical under rulesscale. governing patent practitioners. Some are easier to prepare than others. A salad spinner patent application is much easier and Table of patents Contents

less time consuming to draft than a digital switching network patent application. The costs are proportional to the complexity of the subject matter. It is also important to look at the attorney’s Patent Law—Complex, Frustrating, and Rewarding individual technical skills. I do mostly electrical and mechanical patents, since I have a background in Of Better Mousetraps and Beaten Paths physics and mechanical/electrical engineering. I would not work with inventions related to chemistry or Getting It Right the First Time—The Biomedical Patent Process biotechnology, since I am not technically competent in those fields. Rather, I would call in one of my Communication—The Key to Success in Patent Law Practice partners, who specializes in these areas, to look at such an invention. Inside the Minds—The Art & Science of Patent Law

Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice

The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

InsideLawyer the Minds: The Art & Science of Patent Law Being a Patent by Inside the Minds Staff

ISBN:1587623463

For me, being a patent lawyer is©very Aspatore Books 2004fulfilling, (245 pages)since it provides me with the opportunity to be both a scientist and a lawyer at the same time. Before becoming an attorney, was an engineer and an This text is an authoritative, insider’s perspective on the Ilaws engineering manager aboutpatents, 12 years an electronicsand company. Going whichfor govern theatcharacteristics capabilities of into patent law was a successful practitioner andengineering the future of patent regulation, smooth transitionthe because I could stay in the field while engaging in more scholarly work. on a global scale.

I define success as not just whether I obtain a patent for a client. I define success as having a client who of comes back to me for more advice and additional patent work. This means that when the client Table Contents worked with me on the first application, they felt they received good, honest, and forthright advice that Inside the Minds—The Art & Science of Patent Law helped them, even if they did not get the patent. As a patent attorney, it would be very easy for me to Patent Law—Complex, Frustrating, and Rewarding tell every client that they have “one hell of an idea” and then take their money. That is what the client Of Better Mousetraps and Beaten Paths wants to hear. However, I choose to give honest advice, and whether I make a buck off that advice is a Getting It Right the First Time—The Biomedical Patent Process secondary issue. What is most important to me is that the client gets a fair deal. Communication—The Key to Success in Patent Law Practice

Toolkits, of Patents People Football, often askand methe if I Power think they have a good idea. My standard response is, “If I knew what a good The Patent Practice ideaFull-Service was, do you thinkLaw I would be doing this job 70 hours a week?” No one knows whether something

is worthy of a Bounds patent until anPatent examiner looks at the application. Even if it does qualify for a patent, The Metes and of the Application Process turningProper that invention money takesAssets hard work and some luck. I have seen great ideas fall flat and Taking Care of ainto Client’s Valuable stupid ones make a pile of money. The Patent War Game—Playing to WinThe person who sold pet rocks made several million dollars. He did not have a patent on thetorocks, but just picked rocks up, put them in a box, and sold them. While the Patent Law-From Bicycles Biotech idea is important, the ability to go out and sell makes all the difference. Patents—How the System Works Reflections on the Practice of Patent Law

A patent is valuable only if the product it covers makes money. It will make money only when the

Patents—Knowing the Value, Working the System owner has convinced a portion of America they need to part from some of their hard-earned cash for

this thing. Does anyone actually need a pair of sneakers costing several hundred dollars because a famous sports celebrity signed them? I doubt it. People want them because they have been sold an idea or image that those shoes will some how change their lives for the better. A patent helps only to protect the position in the market place that has been gained by selling. Patent litigation carries its own costs. Ultimately, litigation decisions are all based on economics. The American Intellectual Property Law Association publishes a survey every year of the average costs for patent litigation. For example, the cost of filing a patent infringement lawsuit, through the discovery phase, in Philadelphia, where what is at stake is between $1 million and $25 million, is between $500,000 and $700,000. To do a complete patent infringement trial would probably cost over $1 million. Appeals can easily double that million. When considering patent litigation, the client has to look at the situation economically, and consider how much is at risk before deciding to spend $1 million to protect it.

Inside the Minds: The Art & Science of Patent Law Misconceptions by Inside the Minds Staff

ISBN:1587623463

People tend to think that patents technology and prevent innovation. That is the biggest Aspatore Books ©hinder 2004 (245 pages) misconception. I think patents do just the opposite, and in fact, encourage the American spirit of This text is an authoritative, insider’s perspective on the laws entrepreneurshipwhich and competition. I think you look objectively at the history of technology in this govern patents, theifcharacteristics and capabilities of thesee successful practitioner and system the future ofstimulated patent regulation, country, you would this is true. The patent has financial resources to back new onthose a global scale. creations because who have invested their money in a new, patented idea know that their riskbased capital will be protected for a limited time by that patent. This protection encourages investors to takeof financial risks. Table Contents Inside the Minds—The Art & Science of Patent Law

People also do not know what a patent is. They often confuse copyrights, trademarks, and patents. Patents and copyrights are grants from the American people provided by the Constitution. Copyrights Of Better Mousetraps and Beaten Paths are intended to protect the form of expression of an idea having some artistic or literary identity. The Getting It Right the First Time—The Biomedical Patent Process copyright does not carry exclusive rights to the idea conveyed in a work – only the form in which the Communication—The Key to Success in Patent Law Practice idea is expressed – so you cannot protect an idea by registering a copyright in a description of the idea. Toolkits, Football, and the is Power of Patents Furthermore copyright” by definition the right to copy. If a copyright owner cannot prove an infringer The Full-Service Patent Law Practice actually copied his or her work, as opposed to independently generating a similar work without The Metes the andowner Bounds of the prevail Patent Application copying, cannot in a lawsuitProcess for infringement. Patent Law—Complex, Frustrating, and Rewarding

Taking Proper Care of a Client’s Valuable Assets

Trademark and unfair competition The Patent War Game—Playing to Winlaws are another and a distinct form of intellectual property law. The trademark laws Bicycles are intended to permit a business to identify itself and its goods and services uniquely Patent Law-From to Biotech by a distinctive logo, or other identifier. It does not matter how the distinctive identifier originated. Patents—How thename, System Works Protection arises with use of the mark to identify goods or services offered for sale, and is maintained by continuing to use the mark to identify the products of the owner’s business.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the System

the Minds: The Art & Science of Patent Law The FutureInside of Patent Law by Inside the Minds Staff

ISBN:1587623463

Currently I see a Aspatore strong push to harmonize patent laws around the world. Other than in the United Books © 2004 (245 pages) States and Canada, if you disclose your invention publicly to anyone who can understand it, you lose This text is an authoritative, insider’s perspective on the laws all of your rights to obtain a patent. Also, first person who files has “priority of right” in other which govern patents, thethe characteristics and capabilities of the successful the future of patent countries. In the United States, practitioner the right to and a patent belongs to the regulation, first person to invent, so there is no a global race to the patentonoffice. I doscale. not agree with the current push to harmonize U.S. patent laws with those fromversion="1.0" other countries. I think this push is at the expense of the individual inventor, the small guy. Frankly, it is the small guy that creates most of the jobs and moves this country forward economically. Table of Contents Remember, it was a Art young kid whoofdropped out of Harvard to play with suitcase computers who Inside the Minds—The & Science Patent Law created the operatingFrustrating, system software that led to MSDOS and Windows and changed our lives forever Patent Law—Complex, and Rewarding – Better not IBM! Of Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process

Samuel W. Apicelli’s practice involves all aspects of patent, trademark, and copyright procurement and enforcement. In addition, he has more than 12 years of experience as an electrical/mechanical Toolkits, Football, and the Power of and Patents engineer, engineering manager, an international businessman. Communication—The Key to Success in Patent Law Practice The Full-Service Patent Law Practice

Before entering law school 1990, Mr. Apicelli was employed by AMP, Inc., the world’s largest The Metes and Bounds of the in Patent Application Process manufacturer of electrical andValuable electronic interconnection devices. Between 1978 and 1990, he held Taking Proper Care of a Client’s Assets several engineering and management positions at AMP, including product engineer, engineering The Patent War Game—Playing to Win analyst, technology transfer manager, director of engineering for Southern Europe and Latin America, Patent Law-From Bicycles to Biotech and director of for Asia Pacific operations. As director of engineering, he was based in Patents—How theengineering System Works

London, England, where he administered and had profit and loss responsibility for numerous product and manufacturing development programs. He also acted as an advisor to the international Patents—Knowing the Value, Working the System management teams for the preparation of their yearly business plans. Reflections on the Practice of Patent Law

Mr. Apicelli’s engineering and patent preparation and prosecution experience includes electrical and electronic engineering related to interconnection technology; the mechanical design of electronic systems; high-speed metal-stamping tools and systems; polymer- molding tools and systems; highspeed parts-assembly machines and systems; semiconductor device fabrication methods and machines; semiconductor device packaging and interconnection; and medical device design and fabrication, including laparoscopic, endoscopic, and arthroscopic devices and methods, orthopedic devices, cardiac repair devices, surgical devices, and heat transfer devices for electronic systems. Having written and prosecuted well over 250 patents in a variety of technical disciplines related to mechanical and electrical engineering, Mr. Apicelli has been awarded two patents for his own inventions. Mr. Apicelli received his JD degree from Franklin Pierce Law Center, where he was an editor of the law review journal IDEA, The Journal of Law and Technology. Since graduation in 1993, he has been an occasional lecturer for the patent practice I & II courses that are taught to second-year intellectual property students at Franklin Pierce Law Center. He also lectures on intellectual property topics for the Kutztown University Small Business Development Center. He received his BA degree in physics from Bates College. He is admitted to practice law in Pennsylvania, Massachusetts, and New Jersey, and before the U.S. Patent and Trademark Office. Dedication: I would like to acknowledge my wife Andrea Barnett- Apicelli and my son Jackson Apicelli, without whom I would be lost. None of these materials is offered as, nor should be construed as, legal advice. These materials are not intended to create an attorney-client relationship with Samuel W. Apicelli, Esquire, Duane Morris LLP, or any Duane Morris LLP intellectual property attorney. Such a relationship would require direct, personal contact with an attorney and would also require an agreement that confirms that a relationship is established and the terms of that relationship. The information contained in these materials should not be acted or relied upon without specifically seeking professional legal advice. The views expressed in this chapter do not necessarily represent the views of Duane Morris LLP or the other intellectual property lawyers in the firm.

the Minds: The Art & Science of Patent Law Getting ItInside Right the First Time—The Biomedical ISBN:1587623463 by Inside the Minds Staff Aspatore Books © 2004 (245 pages) Patent Process This text is an authoritative, insider’s perspective on the laws

Beth E. Arnold which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, Foley Hoag LLP on a global scale. Partner Table of Contents

Patent Concepts and Misconceptions

Inside the Minds—The Art & Science of Patent Law

Patent Law—Complex, Patents are generallyFrustrating, applied forand andRewarding granted on a country-by-country basis. Patent laws are intended Of Better Mousetraps and Beaten Paths to provide an incentive for inventors to disclose their inventions. Patents are issued to new, useful and Getting It Rightinventions the First Time—The Biomedical Patent Process non-obvious that are appropriately claimed and described in the patent, so that one of skill Communication—The Key toand Success in Patent Law Practice During the term of the patent, the patent in the art is able to make use the claimed invention. Toolkits, Football, and the against Power ofthose Patents claims can be asserted who are making, using, selling, importing, or offering to sell the The Full-Service Practice invention in thePatent UnitedLaw States. In exchange for a complete disclosure of the invention, the inventor or

subsequent of of thethe patent is Application provided aProcess limited monopoly. The Metes andowner Bounds Patent Taking Proper Care of a Client’s Valuable Assets

Patents are critical for translating ideas or scientific findings into technologies and products. The limited monopoly provided by a patent can justify the investment required to develop and commercialize a Patent Law-From Bicycles to Biotech novel product. Patent attorneys are critical for obtaining patents. They make sure that the claims are Patents—How the System Works directed to aspects of the invention that provide a block to competitors and that the desired claims are Reflections on the Practice of Patent Law appropriately supported by the disclosure in the patent specification. The Patent War Game—Playing to Win

Patents—Knowing the Value, Working the System

The biggest misconception about patents is that a patent gives the owner an exclusive right to make and use the patented invention. That’s not right. A patent gives the patent owner exclusive rights only to prevent others from doing what is claimed in the patent, by suing them for patent infringement. An innovator must not only offensively develop a patent arsenal, but defensively avoid infringing patent claims owned by others, as well.

the Minds: The Art & Science of Patent Law DevelopingInside a Strategy by Inside the Minds Staff

ISBN:1587623463

Not every business requires patents. are most useful for highly competitive, technologyAspatore Books © 2004Patents (245 pages) intensive industries where the ultimate products will be sold for aon lotthe of money and will be around for a This text is an authoritative, insider’s perspective laws long time. If the ultimate product can’t be for much or if the technology which govern patents, thesold characteristics and capabilities of is constantly changing, so the become successful practitioner andit the future of patent that the patent may obsolete before even issues, it mightregulation, not be worth pursuing patent on a global scale. protection. For drugs, medical devices, and diagnostics, my area, patents are very important. Hundreds of millions Table of Contents

of dollars must be invested in research, development, and clinical trials before a drug is approved. Patents provide the prospect of recouping that investment. In addition, generic drug companies are Patent Law—Complex, Frustrating, and Rewarding sure to challenge the patents developed around innovative drugs, so that they can get their products Of Better Mousetraps and Beaten Paths on the market before the patent expiration. A very aggressive strategy that protects not only the drug Getting It Right the First Time—The Biomedical Patent Process itself, but also its analogues, alone or in combination products or in various formulations, as well as Communication—The Key to Success in Patent Law Practice every possible therapeutic use, is usually advisable. Inside the Minds—The Art & Science of Patent Law

Toolkits, Football, and the Power of Patents

The Law Practice ForFull-Service many drug Patent development companies, patents and technology are the only real assets. A

company’s patents – of or the often its prospective The Metes and Bounds Patent Application patents Process – can support the company’s financing. If the investors areCare confident that the patent Assets claims are likely to issue, and a competitive position will be Taking Proper of a Client’s Valuable created, the financing. The Patentthey Warprovide Game—Playing to Win Even before a product is developed, patents or the prospect of obtaining patents, is important for obtaining the financing needed to develop certain products. Patent Law-From Bicycles to Biotech Patents—How the System Works

Patents are also important in technology transfer. Rights to claims of patent applications or patents are transferred from innovators, many in universities or research hospitals, to established companies that Patents—Knowing the and Value, Workingsell the the System can further develop ultimately products. Reflections on the Practice of Patent Law

the Minds: The Art & Science of Patent Law Selecting aInside Patent Attorney by Inside the Minds Staff

ISBN:1587623463

Although a thorough understanding by(245 a patent Aspatore Books © 2004 pages) attorney of the “invention” envisioned by the inventor is critical, a good patent attorney goes beyond what theperspective inventors see to capture future commercial This text is an authoritative, insider’s on the laws applications. which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. A good patent attorney is aggressive. Even if the patent application is not perfect when it’s filed, the fact that it was filed provides a filing date, which may put the inventor in the game. But it’s critical that the invention is “thought through” and that all of the various embodiments are described at the outset. Table of Contents A patent application may be “cleaned up” to a certain extent in a subsequent filing. However, rights Inside the Minds—The Art & Science of Patent Law may be lost forever if an embodiment of the invention is not described in a patent application before it Patent Law—Complex, Frustrating, and Rewarding is published or publicly disclosed. Of Better Mousetraps and Beaten Paths

Getting It Right the First Time—The Biomedical Patent You want a patent attorney who works with both bigProcess companies and small companies. Patent attorneys Communication—The Key to Success in Patent Practice who work only with “start-up” companies areLaw usually sufficiently aggressive, but may not be particularly Toolkits, Football, and the Power who of Patents experienced. Patent attorneys work only with big companies, where there are a number of skilled The Full-Service Law Practice in-house patentPatent attorneys, may be good, but not particularly opportunistic. By using a patent attorney

thatMetes functions well in both you can be more secure that you have a good tactician who is also The and Bounds of thespheres, Patent Application Process aggressive looking to protect the broad Taking Properand Care of a Client’s Valuable Assetspioneering inventions. The Patent War Game—Playing to Win

An assortment of deadlines and administrative requirements goes along with the patenting process, so a good patent attorney is organized and remains focused on doing things in a way that efficiently Patents—How the System Works results in the issuance of claims. Patent attorneys can easily become bogged down in the process and Reflections on the Practice of Patent Law the paperwork. Since the importance of particular inventions can change over time, and the focus of a Patents—Knowing the Value, Working the System company may change, there is a constant focusing and refocusing of efforts. Patent Law-From Bicycles to Biotech

A good patent attorney is creative and thinks about not only the company’s technology, but also the company’s business. It’s also important for a patent attorney to be a part of the broader industry the company operates in and have a clear understanding of technologies and products related to those of the company and an awareness of how they’ve been developed. The goal of a patent attorney is both obtaining issued patents and, ultimately, obtaining patents that cover valuable products or technologies. If your patents ultimately withstand the scrutiny of a patent litigation and therefore, by definition, cover a valuable product, your attorney did a good job.

the Minds: The Art & Science of Patent Law Managing aInside Patent Attorney by Inside the Minds Staff

ISBN:1587623463

It’s important for patent attorneys be(245 communicating with scientists and business people. Many Aspatore Books © to 2004 pages) valuable patents This are marketdriven, directed from the business – the text is an authoritative, insider’s perspective side on the lawsneed and the opportunity from the market perspective. should sure the attorney is speaking with both the scientists or which governYou patents, themake characteristics and capabilities of the successful practitioner and and marketing the future of patent engineers and the business development types – orregulation, that the patent attorney is at least on a global aware of the direction of the scale. business. Some Table of companies Contents are overly concerned about “attorney costs,” which may impede “inventors” from

spending enough time talking with their patent attorneys. Cost should not be an obstacle to this type of communication. It’s not at all unusual that an inventor completely overlooks a patentable and valuable Patent Law—Complex, Frustrating, and Rewarding claim that is identified only when the inventor speaks with a patent attorney. Inside the Minds—The Art & Science of Patent Law Of Better Mousetraps and Beaten Paths

Getting It Right the First Time—Thethat Biomedical Patent Process A company needs to appreciate the development of appropriate patent protection takes time and Communication—The Key to Success in Patent Law Practice effort, which costs money. The patenting process is shortchanged at the company’s peril. Toolkits, Football, and the Power of Patents

TheFull-Service best way for a company to control patent costs is to effectively manage the patenting process, The Patent Law Practice including filingBounds patentof applications only in commercially important countries and exercising good The Metes and the Patent Application Process

business judgment to abandon patent applications that are of dubious value – for example, because they are directed to technology or products that are no longer of interest to the company, only provide The Patent War Game—Playing to Win incremental protection to an invention that has already been effectively patented, and/or has Patent Law-From Bicycles to Biotech patentability issues that were understood only after the patent filing. Taking Proper Care of a Client’s Valuable Assets

Patents—How the System Works

Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Patent Drafting Strategies by Inside the Minds Staff

ISBN:1587623463

When drafting a patent, the goal©is2004 to be clear, not confusing. The patent is intended to teach “one Aspatore Books (245very pages) of skill in the art” This how text to practice the invention. Clarityperspective is good, but clear shouldn’t mean being is an authoritative, insider’s onbeing the laws limiting. Multiple embodiments should be to appropriately support which govern patents, thedisclosed characteristics and capabilities of the broadest scope of the successful practitioner and the future of patent regulation, claims. on a global scale.

There are some efficiencies in patent drafting. Certain similar descriptions can be used in the same typesofofContents patents. A patent to a pharmaceutical inevitably contains certain boilerplate disclosures as to Table the various ways the pharmaceutical can be formulated and administered to a subject. Someone who Inside the Minds—The Art & Science of Patent Law concentrates work in a certain area typically has the boilerplate language, so they don’t need to Patent Law—Complex, Frustrating, and Rewarding reinvent the description with each filing and can customize the patent application with respect to the Of Better Mousetraps and Beaten Paths unique aspects of the invention. Getting It Right the First Time—The Biomedical Patent Process

Communication—The Key to Success in Patent Lawyou Practice You can draw from template documents when have analogous inventions. In filing gene patents, Toolkits, Football, andisthe Power of Patents for example, there a disclosure of the gene and substantially similar nucleic acids; proteins encoded The Full-Service Patent Law Practice by the gene and substantially similar proteins; antibodies that recognize the proteins; and methods for

using the and genes, proteins, antibodies. Once you develop the template, you can use it again, The Metes Bounds of theand Patent Application Process customizing for different cases, as necessary. There is, however, a danger of relying too heavily on a Taking Proper it Care of a Client’s Valuable Assets template. In practice, I’ve found very few inventions that fit exactly into a template. The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech

Thoughtful strategy should be involved with claiming inventions. The claims need to be novel over the prior art, but also catch competitors. For example, stem cells can be valuable therapeutics. But Reflections on the Practice of Patent Law claiming them in a way that distinguishes them from naturally occurring cells or other stem cells Patents—Knowing Value, System identified in somethe other wayWorking can be the difficult. Equally difficult is claiming the cells in terms of critical parameters, so that a competitor can’t avoid your claims. Patents—How the System Works

The big question is whether your patent claims cover what someone else is doing. That’s a function of claim scope. Sometimes, however, you have claims that are broad enough to cover competitors, but also cover prior art or are so broad that the specification does not adequately describe or enable the scope of the claim. Although these claims may cover what a competitor is doing, a court may not uphold their validity. Unfortunately, though, not everyone is able to spend the millions of dollars required to have a court find the patent claims invalid. One of the most challenging aspects of patent law is that you have to think ten years into the future. You actually have to think through how the invention will be used then and make sure you cover that use. If you do it well, you may file only one patent application and then have a patent issue with claims that cover everything. If not, you may be trying to patch together applications to provide protection on various aspects along the way, likely losing valuable rights in the process.

Inside the Minds: The Art & Science of Patent Law Determining Inventorship by Inside the Minds Staff

ISBN:1587623463

The determination of “whoBooks is an ©inventor” a legal question that can be complicated and can be Aspatore 2004 (245 is pages) determined only by an attorney. Since patents can beperspective invalidatedon forthe listing This text is an authoritative, insider’s lawsinaccurate inventors, if the inventorship determination waspatents, found tothe becharacteristics made “with a and deceptive intent,” which govern capabilities of companies need to be practitioner and the future of patent regulation, careful about whothe is successful listed as an inventor on company patents. on a global scale.

Inventorship is the starting point for determining who owns a patent. The general rule is that an inventor owns the patent rights in his or her invention. Joint inventors have joint ownership in the patent, Table of Contents and each inventor can transfer all rights in a patent. An inventor may not own the rights if they’ve been Inside the Minds—The Art & Science of Patent Law expressly – through signing an assignment agreement – or impliedly – through signing an employment Patent Law—Complex, Frustrating, and Rewarding agreement – assigned to another. Of Better Mousetraps and Beaten Paths

Getting It Right the First legal Time—The Biomedical Patent To secure appropriate title, companies shouldProcess obtain executed assignments from listed inventors Communication—The as soon as possible.Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents

Beth E. Arnold Patent is a partner at Foley Hoag LLP and a U.S. registered patent attorney with more than 15 The Full-Service Law Practice years of experience. She works closely with clients The Metes and Bounds of the Patent Application Processto obtain worldwide patent protection on

biomedical products and technologies, including pharmaceuticals, biopharmaceuticals, drug discovery and delivery technologies, medical devices, and diagnostics.

Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win

Patent Law-From to Biotech In addition, Ms. Bicycles Arnold drafts patent infringement and validity opinions, performs patent due diligence Patents—How thestudies, Systemand Works and clearance negotiates and drafts patent license and other commercialization Reflections on the Practice of Patent Law agreements. Patents—Knowing the Value, Working the System

Ms. Arnold is a member of the editorial advisory board of BioIT World and an active speaker and author.

Inside the Minds: The Art & Science of Patent Law Communication—The Key to Success in Patent Law ISBN:1587623463 by Inside the Minds Staff Practice Aspatore Books © 2004 (245 pages) This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of James E. Bradley the successful practitioner and the future of patent regulation, Bracewell & Patterson on a global scale. Partner Table of Contents

Obviously Unobvious

Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, and Rewarding and the owner of the patent. The inventor discloses the A patent is a contractFrustrating, between the government Of Better Mousetraps and Beaten Paths invention in the patent in such a manner that one skilled in the art could make the invention. In return, Getting It Right the First Time—The Biomedical Patent Process the government grants to the inventor or owner of the patent the exclusive right to keep others from Communication—The Key to in Patent Practice making, using, or selling it Success for a period of 20 Law years from the filing date. After the patent expires, the Toolkits, Football, the Power public can make,and use, and sell of thePatents invention. The Full-Service Patent Law Practice

TheMetes basicand process involves first optionally conducting The Bounds of the Patent Application Process a patent search to determine whether the

invention may be patented. This step isn’t required, but it is a good idea because a search can save time by informing the inventor that obtaining a patent of good scope is not likely. Also, even if the The Patent War Game—Playing to Win search indicates that the invention is patentable, it is often helpful because it enables the patent Patent Law-From Bicycles to Biotech attorney to distinguish in the patent application the prior art found. Taking Proper Care of a Client’s Valuable Assets

Patents—How the System Works

Reflections on the Practice of PatentaLaw The next step involves preparing patent application, which is a document that typically contains Patents—Knowing the Value,aWorking the System and a set of claims that point out what distinguishes the drawings of the invention, written description,

invention from the prior art. A patent application is typically ten to 20 pages long. After it is prepared, the inventors review it and make corrections, if necessary, and we file it in the Patent Office. The patent is considered pending from the date of filing, even though it may never issue. A Patent Office examiner will conduct a search and notify us in an office action whether any of the claims are patentable over the prior art found and which claims are not patentable. In the mechanical arts, this occurs typically 12 to 18 months after filing. Most patent applications are initially rejected, at least in part. In the office action, the Patent Office examiner will give his explanation of why he is rejecting all or part of the claims. We are given a three-month opportunity to amend the claims and present arguments asking for reconsideration. Often we are able to obtain allowance of at least some of the claims by filing an amendment. If the examiner continues to reject claims we feel that we are entitled to receive, there are other steps, including filing additional amendments, continuations, conferences with the examiner, and appeals. I primarily assist people in getting patents by preparing patent applications and prosecuting them in the Patent Office. I also analyze patents to determine whether they are being infringed either by my client or by someone else. To be patentable, an invention has to be new, useful, and unobvious. Almost every invention I deal with is new and useful. The most difficult part of obtaining a patent is convincing the examiner that the differences between the invention and the prior art are unobvious to one of average skill in the art. What is obvious to one person is not necessarily obvious to another. Typically, the examiner will find one or more patents that are relevant to the claims of the patent application. For example, if a claim of the patent application lists an element A and an element B, the examiner often will find element A in one patent and element B in another patent. The examiner will typically contend that it would be obvious to combine elements A and B. In response, we may argue that it would not occur to one of average skill in the art to combine those features. Perhaps the combination would require extensive redesign. Perhaps the combination would operate in a manner that is contrary to a stated objection of one of the patents. One of the patents may be in too remote a field from the other to be combined. Sometimes we resort to secondary factors of unobviousness, for example: the invention has been a commercial success; there was a long struggle to arrive at the invention; there has been a long-felt need for a solution; others have started copying the invention; and the invention has been licensed to

others. If applicable, we submit these factors to the examiner in an effort to convince the examiner that the invention is unobvious. Inside the Minds: The Art & Science of Patent Law by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Working with Clients by Inside the Minds Staff

ISBN:1587623463

Basically I have three different of(245 clients Aspatore Bookstypes © 2004 pages)– large corporate clients; smaller business clients; and individual clients.This I have represented these types throughout text is an authoritative,three insider’s perspective onmy thecareer. laws A large corporate client, according to my definition, haspatents, one or more in-house patent these clients file more which govern the characteristics and attorneys. capabilitiesUsually, of the successful the future of patent do regulation, than 20 patent applications perpractitioner year. Theseand in-house IP attorneys not have time to prepare all, or at a global scale. least some, of theonpatent applications from their divisions, so they send them to outside counsel to prepare. Table of Contents

In some cases, these in-house attorneys closely supervise all aspects of the patent applications I prepare, but typically they are interested only in the final results. I report office actions to them and Patent Law—Complex, Frustrating, and Rewarding make recommendations. The in-house attorney makes the decisions on whether to accept the Of Better Mousetraps and Beaten Paths approved claims, argue for broader claims, or appeal. In these cases, the in-house IP attorney is my Getting It Right the First Time—The Biomedical Patent Process primary contact with the client. He is normally very knowledgeable about patent law, patent Communication—The Key to Success in Patent Law Practice prosecution, and the technology we are trying to patent. Inside the Minds—The Art & Science of Patent Law

Toolkits, Football, and the Power of Patents

The Patent Law Practice TheFull-Service smaller manufacturing business would probably market the product, whether patented or not.

These clients do not have patent attorneys, The Metes and Bounds of thein-house Patent Application Process but may file several patent applications per year. Often Proper these clients have an engineering Taking Care ofwill a Client’s Valuable Assetsdepartment. If so, the engineer in charge is often my contact. the company president may be my contact. Usually, they are somewhat familiar The PatentOtherwise, War Game—Playing to Win with patent law and patent The businessperson or engineer makes the ultimate decisions Patent Law-From Bicycles to prosecution. Biotech on patent prosecution, relies heavily on my recommendations. Patents—How the Systembut Works Reflections on the Practice of Patent Law

The third type is the individual inventor who has never been to a patent attorney. Most hope to license

Patents—Knowing Value, System their invention, asthe they lackWorking the time,the capital, and knowledge to manufacture and market the invention.

Usually, these people are not familiar with patent law or the procedures required to obtain a patent. The cost of the patent process is often a major barrier for an individual to obtain a patent. Also, individuals sometimes are not very knowledgeable in the technology of their invention. For example, an individual may have a new device that he believes will save automotive fuel economy. Often, there isn't an easy way to prove it will work. Also, the chances of any individual making enough money from his invention to pay the patent costs are poor. In my experience, manufacturers, particularly large companies, rarely license inventions from individuals. I caution individuals about their chances of success. With the large corporate client, the patent process usually begins with an invention disclosure. Most corporate clients require their employees to prepare a short summary of each invention, attach representative drawings, and file the document with an in-house IP attorney or patent department. Often, the large corporate client has a patent committee that meets periodically and considers recently filed invention disclosures. Patent committees are usually made up of engineers and marketing people. The patent committee makes a decision on whether to file an application based on business reasons and sometimes based also on patent search results. The in-house patent attorney sends me the invention disclosure, and then I try to meet with the inventor to learn all I can about the invention. These inventions are usually fairly sophisticated and quite technical. However, frequently, the invention will be in the same field as others I have prosecuted for the same client. The inventors usually lend a great deal of assistance because they are experts in the field of the invention. The process with smaller business clients differs in that the inventor would not have prepared an invention disclosure in most cases. Often, a prototype of the invention will have been manufactured by the client nearing the time to market the invention. In some cases, the client will not have any drawings of the invention. Usually, the client wants to file the application very quickly because he plans to publicly disclose the invention right away. Individual inventor clients may have been considering their invention for years before calling me. Usually the invention is easy to understand, but the inventor often will not have made a prototype. Normally, the individual inventor has not made any drawings. In these cases, the inventor conveys the idea to me verbally. An initial consideration in all three types is whether to conduct a patent search. With large corporate

clients, whether to search or not is often an internal policy of the patent department. A search is an extra expense, and it is only an indication of patentability. We may not be able to find the best prior art in the search. All Inside pendingthe applications are kept secret until 18 months Minds: The Art & Science of Patent Law after the priority date. Many are not public until they issue. Foreign patents are not easy to search. Even among the issued patents and ISBN:1587623463 by Inside the Minds Staff published patent Aspatore applications, finding the most pertinent one is not easy because of the different Books © 2004 (245 pages) terminology used and different Patent Office classifications. The extra time to conduct a search also is This text is an authoritative, insider’s perspective on the laws a factor, particularly with the business that needs toand file capabilities an application which govern patents, client the characteristics of quickly before making a public disclosure.the successful practitioner and the future of patent regulation, on a global scale.

Often, an individual inventor client will have conducted an Internet patent search through the Patent Office Web site. This type of search is based on key words, not drawings, and thus has some Table of Contents limitations in regard to mechanical inventions. Also, the database does not allow full text searching of Inside the Minds—The Art & Science of Patent Law patents that issued earlier than the 1960s. Patent Law—Complex, Frustrating, and Rewarding

Of Better Mousetraps and The better procedure is Beaten to havePaths the search performed by a professional searcher who searches in the

PatentItOffice the Washington, area. Patent I brieflyProcess explain the invention in a letter to the searcher and Getting Rightin the First Time—The D.C., Biomedical attach sketches or drawings. The Patent Office Communication—The Key to Success in Patent Lawmaintains Practice paper copies of all U.S. patents and many foreign patents by subject matter. The Patent Office maintains these files only at its facility in Toolkits, Football,organized and the Power of Patents theFull-Service WashingtonPatent area. Law ThePractice searcher does a keyword search and manually looks through patent copies The in the public the Patent Office. The Metes andsearch Boundsrooms of the of Patent Application Process Taking Proper Care of a Client’s Valuable Assets

Normally, the search takes about three or four weeks to complete. The searcher usually does not

The Patent War Game—Playing to Win he or she simply lists the patents of interest, which may be five or comment on what he found; rather, Patent Law-From Bicycles to Biotech ten. I look through these patents and decide whether the invention is different enough to have a Patents—How the System Works reasonable chance of being patented. Reflections on the Practice of Patent Law

There are two ways file patent applications, Patents—Knowing the to Value, Working the System and I use both ways with my clients. One way is to file a provisional application, and the other way is to file a regular utility application. The regular application is the traditional type of patent application we have being preparing for many years. The provisional application procedure, which became available about 1995, allows one to file a patent application at a reduced filing fee. Also, although the provisional application should have a good disclosure, it needs to have only about half the contents of a regular application. Roughly, a provisional application takes about half the time to prepare and is about half the cost of a regular application. A provisional application will provide patent-pending status for only a year. At the end of the year, the client has to file a regular application based on that provision or convert it. Otherwise, the client will lose the filing date of the provisional application. If the preferred embodiment of the invention has not changed, the attorney fee to convert the provisional application into a regular application is about half the cost to prepare a regular application. Consequently, the cost to the client to file the application as a provisional is often only a little more than filing it originally as a regular utility application. As mentioned above, clients are often in a hurry to get a patent application on file. They may be planning to display the invention at a trade show, or want to disclose the invention to a customer, but want a patent application on file first. Perhaps they want to test the market by getting customer feedback. Those are situations where we will often file a provisional application. Toward the end of the year, the clients notify me whether they want to proceed with the regular patent application. In my practice, individuals almost always decide to proceed with a provisional patent application. The provisional application spreads the total cost into two payments due a year apart. Also, the one-year time period gives the individual a chance to try to market the invention without having to spend the full amount of a patent application. If the marketing does not show promise by the end of the year, the client can always forego converting the provisional application into a regular application. There are some drawbacks to filing provisional applications. The one- year delay lengthens the time it takes to get a patent application issued. An early issuance is sometimes important to stop competitors from copying. An early issuance is also important to investors in a small company organized to promote the invention. Furthermore, if during development, the invention changes within the one-year period, these changes are not covered by the original provisional application.

Inside theApplications Minds: The Art & Science of Patent Law Preparing Patent by Inside the Minds Staff

ISBN:1587623463

In preparing the application, I make preliminary Aspatore Books © 2004 (245 pages) drawings in a sketch form. Often engineer-inventors provide drawings,This which I cut and paste into ainsider’s patent perspective form. I sendonthe preliminary drawings to a patent text is an authoritative, the laws draftsman, who draws inpatents, a formalthe patent style. which them govern characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global I then write the claims to thescale. invention. The claims are the hardest part of a patent application to prepare and the least understood. The claims are a set of numbered paragraphs in the last part of the patent application. The claims define the invention and distinguish over the prior art. The language has Table of Contents to be precise and objective, and not merely a recitation of advantages of the invention. Furthermore, Inside the Minds—The Art & Science of Patent Law the claims have to be written in a prescribed style, with each claim being one sentence only. For Patent Law—Complex, Frustrating, and Rewarding example, let's say you were the first to invent a chair and that previously people sat on logs and flat Of Better Mousetraps and Beaten Paths stones. One claim of the patent application might read: “An apparatus for supporting a human in a Getting It Right the First Time—The Biomedical Patent Process seated position, the apparatus comprising a seat, legs connected to and supporting the seat, and a Communication—The Key to Success in Patent Law Practice back extending from the seat.” This claim should be approved because it does not define the prior art Toolkits, Football, and theNeither Power of Patents of logs and flat stones. have legs or a back. The Full-Service Patent Law Practice

A competitor, however, eliminate the back and would not infringe this claim. Another competitor The Metes and Bounds of could the Patent Application Process might Proper use a pedestal legs. AAssets pedestal has only one leg. Consequently, a better and broader Taking Care of a instead Client’s of Valuable claim would not have mentioned a back and would have stated “at least one leg.” The claim is not The Patent War Game—Playing to Win broadLaw-From enough toBicycles stop these products. Patent to Biotech Patents—How the System Works

On the other hand, if the claim is too broad, it would read on the prior art, and the examiner would not approve it. For example, if the examiner found to your surprise an earlier patent that showed a stool Patents—Knowing thewith Value, Working the System without a back and three legs, then the broader claim would not be allowed. The claim would have to set forth an improvement over a three-legged stool, the improvement being either a fourth leg or a back. Reflections on the Practice of Patent Law

Consequently, the claims have to not only anticipate the examiner’s rejection, but also anticipate variations that the competitors might try. To further complicate the claim drafting process, we are allowed to write as many claims as we like, although the filing fee increases after a certain number. We typically submit broad, intermediate, and narrow claims with each patent application. After preparing the claims, I write the specification. The specification includes a discussion of the background or prior art, a summary of the invention, a detailed description, and an abstract. After preparing the draft of the application, I send it to the inventor to review and comment. Even in the case of large corporations, we must name the actual inventor or inventors, and the inventor or inventors must sign a declaration verifying that they are the inventor or inventors. If the inventor is an employee of the owner of the patent application, he or she usually signs an assignment of the invention to the corporation at that time. We file the application along with the assignment in the Patent Office. After we file the application, it may be eight months to 18 months before we receive an office action from the Patent Office. The office action could be a partial rejection, a full rejection, or an allowance of the patent application. In any event, I send the office action to the client and explain what it means. We have three months to respond and to ask for reconsideration.

Insideof thePatent Minds: The Art & Science of Patent Law Keeping Track and Technology Information by Inside the Minds Staff

ISBN:1587623463

Patent attorneys develop comprehending inventions. We can usually prepare a Aspatore abilities Books © for 2004quickly (245 pages) patent applicationThis without having to resort to general perspective technical reference books or attend technical text is an authoritative, insider’s on the laws seminars in the field of govern the invention. rely on the knowledge ofofthe inventor about the field. which patents,I primarily the characteristics and capabilities the successful practitioner and the future of patent regulation, Of course, it is helpful if I have prepared patent applications previously in that field. A large portion of on a technology. global scale. I worked as an engineer in oil field services before entering law my work is in oil field school. Also, I've performed patent work for oil field service companies for many years. Although there are conferences Table of Contents for engineers dealing with all types of oil field work, I don't attend any because of the time involved. Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding

We store all of the information about the various patent applications I handle in files. We retain the necessary information about each patent application so that I can open the file and quickly refresh my Getting It Right the First Time—The Biomedical Patent Process memory at any time. A patent attorney must be able to pick up a file 18 months after preparing the Communication—The Key to Success in Patent Law Practice application and be able to quickly understand the invention. Of Better Mousetraps and Beaten Paths

Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice

The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: Art & Science of Patent Law Challenge: Inside The Need forThe Speed by Inside the Minds Staff

ISBN:1587623463

One of the challenges of being attorney Aspatore Booksa©patent 2004 (245 pages) in private practice is being able to get work done quickly enough. The fees we can charge for preparing and prosecuting patent applications are well This text is an authoritative, insider’s perspective on the laws known, particularly by in-house IP attorneys. There is a range, of course,ofdepending on the complexity, which govern patents, the characteristics and capabilities the successful practitioner and the future of patent regulation, but basically the work is flat-rate work. To achieve a desirable hourly rate, I have to complete the work a global in less time than Ion would likescale. to spend. I have to get a tremendous amount of work out each month to make it worthwhile.encoding="ISO-8859-1"?> Of course, I can’t sacrifice quality, so I have to be focused and productive. In many
Some of the work I do is in the trademark area, and some is in patent infringement. I typically work on eight or ten different matters a day. Preparing a patent application takes several days.

Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Infringement Trends by Inside the Minds Staff

ISBN:1587623463

The claims determine infringement and whether Aspatore Books © 2004 (245 pages) the patent is valid or invalid. The background, summary, and written description have their but they are nearly as important as the This text is an authoritative, purposes, insider’s perspective on not the laws claims. A patent will typically anywhere from a few to 100 claims, but which governhave patents, the characteristics and capabilities of usually the total number is theclaims successful practitioner and the futureclaims of patent fewer than 20. The are divided into independent andregulation, dependent claims. The dependent on aclaims. global scale. claims refer to other The independent claims do not refer to any others. To determine whether an issued patent is being infringed, a person looks at the independent claims, Table of Contents

and if there is just one independent claim in the patent that covers what the infringer is doing, then it is a literal infringement. If, on the other hand, there is only one word in each independent claim that Patent Law—Complex, Frustrating, and Rewarding misses what the accused infringer is doing, then there is no literal infringement. Inside the Minds—The Art & Science of Patent Law Of Better Mousetraps and Beaten Paths

Getting It Rightofthe First Time—The Biomedical Processimportant. Courts have developed over the The amount emphasis put on the claims isPatent increasingly Communication—The Success Patent Law Basically, Practice even if a claim does not quite read on the years what is calledKey the to doctrine of in equivalents. Toolkits, the Power of Patents accusedFootball, product,and infringement can be found on the basis that the element in controversy works for the The Full-Service Practice same purpose,Patent in the Law same manner, or with the same result. The Metes and Bounds of the Patent Application Process

The trend for the last several years, however, has been to restrict the doctrine of equivalents. It is particularly difficult to be able to rely on the doctrine of equivalents if the element in question was The Patent War Game—Playing to Win added by amendment during prosecution. For that reason, it has become more and more important to Patent Law-From Bicycles to Biotech get claims right in the beginning. Taking Proper Care of a Client’s Valuable Assets

Patents—How the System Works

Reflections the Practice of Patent Law Courts areongranting summary judgments more often than they used to, usually based on infringement Patents—Knowing thevalidity Value, issues. WorkingThere the System issues, rather than have been times in the past that courts in particular regions of

the country invalidated the majority of patents litigated. Now it appears that invalidity is less likely than a court finding that the patent is not infringed because the claims fail to cover the accused product. I spend more time writing the claims than on any other part of the patent. Most attorneys would say the same. It’s important for the inventor to help me on possible variations, substitutions, and changes that can be made to the invention. I then can envision how to write claims to cover those changes. It also helps me if the inventor has a good knowledge of the prior art. Conveying prior art information to me helps avoid making the claims too broad to be allowable. It helps me if the inventor will read and understand the independent claims to assure me that the independent claims do not contain unnecessary limitations. The patent application should be clear enough for a non-lawyer to read and understand. I have been advised to write the application as if a non-technical judge or jury member will need to read and understand it. If litigated, that is often the case. Also, making an application clear and easy to read makes the job of the examiner easier. Anytime you can make the examiner’s job easier, he or she is more likely to approve the patent. For many years I have had young associates working with me. I instruct them to try to make the applications as easy to read and brief as possible. The specification must be thorough, but need not be excessively repetitive. Style can be important also. For example, in mechanical cases, drawings are numbered, often with 50 to 100 numbers. I’ve noticed that in some patents, the numbers are scattered randomly throughout the text. As a result, if you see a numbered component in the drawings and want to read about it, you have to scan the entire document for an explanation. It is much easier to read if the numbers are in chronological order. Adding a separate operational description after all of the components have been described also helps to make a patent more understandable. Many patents mix the operation in with the discussion of the components. Reading this type of patent is much more tedious than reading one that has a separate, succinct operational description.

Insideand the Minds: The Art & Science of Patent Law Patent Lawyer Examiner Relationship by Inside the Minds Staff

ISBN:1587623463

Most of the communication with ©the examiner is by written correspondence. I’ve found it helpful to Aspatore Books 2004 (245 pages) meet the examiners in person, but because of travel costs, I visit on thethe examiners only to discuss This text is an authoritative, insider’s perspective laws applications with which which govern I am having difficulty obtaining allowance or in cases that are very important. patents, the characteristics and capabilities of the successful practitioner and the future of patent We call these meetings “interviews.” The Patent Office rules allow regulation, an interview after receiving a first on amy global scale. office action. Unless client knows the invention is truly valuable, however, it often will not want to go to the expense of an interview after only a first rejection. If the applicant has already made a response to the office action, the second office action is typically called a final rejection. There is no Table offirst Contents requirement for an examiner to grant an interview after a final rejection. Nevertheless, most examiners Inside the Minds—The Art & Science of Patent Law will still grant an interview after a and finalRewarding rejection, but with the understanding that the applicant will file a Patent Law—Complex, Frustrating, continuation based on results of the interview. Examiners are on time budgets, and filing a Of Better Mousetraps andthe Beaten Paths continuation gives the examiner additional time to handle Getting It Right the First Time—The Biomedical Patent Processthe application. Communication—The Key to Success in Patent Law Practice

Typically I go to the Patent Office once or twice a year, taking a number of cases with me to meet with

Toolkits, Football, theapplications. Power of Patents the examiners ofand these If the examiner is fairly new, a supervisor may be present. During The Full-Service Patent Law Practice the interview, we discuss the application, the closest references, and various proposals to amend the The MetesI try andtoBounds of the Patent Application Process claims. reach an agreement on what would be necessary to get the case allowed. Taking Proper Care of a Client’s Valuable Assets

ThePatent interview is very to helpful. The War process Game—Playing Win The examiners are courteous and appear to want to help. Of course, the examiner's is to make sure the allowance is truly deserved. In an interview, I often learn Patent Law-From Bicyclesjob to Biotech what bothersthe theSystem examiner about the claims of the application. If you communicate only in writing, you Patents—How Works may not know what the examiner truly thinks about the application. Sometimes the examiner has a misunderstanding about the invention or the prior art patents. Misunderstandings can be more readily Patents—Knowing the Value, Working the System cleared up in a personal meeting. Of course, a drawback to an interview is the additional cost to prepare and travel to the Patent Office. Reflections on the Practice of Patent Law

Another alternative is to interview the examiner by phone. Examiners are usually willing to discuss the case by phone. But I've found telephone interviews to be less effective than face-to-face interviews.

Inside theNew Minds:Patents The Art & Science of Patent Law Driving Force for by Inside the Minds Staff

ISBN:1587623463

A large portion ofAspatore the patent applications Books © 2004 (245from pages)my large corporate clients and smaller business clients are improvementThis patents that are driven by customer need. These inventions are made to perform a text is an authoritative, ainsider’s perspective on the laws function that a customer wantspatents, and thatthe is not being doneand by existing equipment. which govern characteristics capabilities of the successful practitioner and the future of patent regulation, on a global Many of the inventions from scale. corporations I deal with concern increasing the life of the product or making the product more cost effective. These concepts usually originate within the company, rather thanof asContents a means to meet a customer need. Table Inside the Minds—The Art & Science of Patent Law

Individuals tend to come up with consumer items, thinking no one has ever had such a device. Usually,

Patent Law—Complex, and Rewarding the inventor does notFrustrating, regard his invention as just an improvement to an existing product. These Of Better Mousetraps and Beaten Paths inventions often are not very technical. As a result, we frequently find out that others had patented Getting Right the First Biomedical Patentdid Process similarItdevices, but for Time—The some reason, the devices not appear on the market. Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Infringement by Inside the Minds Staff

ISBN:1587623463

A patent does notAspatore infringe Books on other patents; it is the product that infringes. Also, obtaining a patent will © 2004 (245 pages) not shield the patent holder from being sued for patent infringement by laws someone who holds an earlierThis text is an authoritative, insider’s perspective on the filed patent. A patent grants anpatents, exclusive to the patent to keep which govern theright characteristics andholder capabilities of others from making, using, the successful practitioner and the future of patent or selling the invention. It does not grant a right to the patent holderregulation, to make, use, and sell the on a global scale. invention. Fairly I am involved in determining whether a client’s product or process infringes another’s Table ofoften, Contents

patent or vice-versa. My first step is to go through the independent claims to find out whether any of the independent claims read on the product. If it is fairly close, I look at the file history of the patent to Patent Law—Complex, Frustrating, and Rewarding determine whether the patent holder could resort to the doctrine of equivalents. If the element in Of Better Mousetraps and Beaten Paths question in the claims was added by amendment to distinguish over prior art, then the doctrine of Getting It Right the First Time—The Biomedical Patent Process equivalents is probably not applicable. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

Toolkits, Football, andto the Power of Patents If the client is trying avoid infringing another’s patent, I may be able to suggest changes that will The Full-Service Patent Law PracticeSome changes are minor because the independent claims of some make the product non-infringing.

patents very detailed. The Application change might not appear logical from a technical standpoint, but it The Metesmay and be Bounds of the Patent Process may be enough legal standpoint to avoid infringement. Once I complete an infringement Taking Proper Carefrom of a aClient’s Valuable Assets analysis a client who is trying to avoid infringement, I usually prepare a written opinion for the client The Patentfor War Game—Playing to Win in case they areBicycles later accused of infringing that patent. The written opinion is important to show the Patent Law-From to Biotech client acted in good faith,Works even if my opinion turns out to be wrong. Patents—How the System Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Success and Best Practices by Inside the Minds Staff

ISBN:1587623463

A successful patent attorney in private practice Aspatore Books © 2004 (245 pages) – office practice, not a trial practice – will have a number of long-term clients. The type of clients the attorney hason is the This text is an authoritative, insider’s perspective the most laws distinguishing factor of success in my opinion. Long-term clients companies and that capabilities have had regular patent work and used which govern patents, theare characteristics of the successful practitioner and thepatent future applications of patent regulation, my services for years. Preparing and prosecuting is a repeat business for long-term onpatent a global scale. does quality work on a timely basis and at a reasonable rate, he or clients. Unless the attorney she will not be ableencoding="ISO-8859-1"?> to retain clients.
A successful patent attorney also receives regular referrals from attorneys who are not patent attorneys. If the referring attorney learns his client was unhappy with the patent attorney, he will not Patent Law—Complex, Frustrating, and Rewarding refer more work. Inside the Minds—The Art & Science of Patent Law Of Better Mousetraps and Beaten Paths

Getting Right the others First Time—The Biomedical PatentThe Process ClientsItalso refer to their patent attorneys. client, of course, must be satisfied, or there Communication—The Key While to Success Patent Law Practice would not be a referral. it is ainslow process, in my opinion, the best way to succeed is to Toolkits, Football, and the Power Patents continually do high-quality workofon a timely basis and at a reasonable rate. The Full-Service Patent Law Practice

To Metes stay onand topBounds of my clients’ industries, I mainly spend some time when I am meeting with clients to The of the Patent Application Process

inquire about their businesses. I ask clients about the trends in their industry, what the competitors are doing in the way of new products, and how sales are going. I try to reserve some time in each meeting The Patent War Game—Playing to Win for some business discussion, whether I’m meeting with an in-house attorney, a company officer, or an Patent Law-From Bicycles to Biotech inventor employee. Of course, I read the newspaper and general news magazines, as well. I don't Patents—How the System Works however, read trade journals of my clients’ industries because of the lack of time. Taking Proper Care of a Client’s Valuable Assets

Reflections on the Practice of Patent Law

Patents—Knowing Working the To System Not enough timethe is aValue, chronic problem. be successful, a patent attorney has to be effective, writing

or reading eight to ten hours a day and some on weekends. Trying to understand how a device described in a patent works takes a great deal of concentration. Trying to prepare claims that distinguish over prior art but aren’t too broad takes time and concentration, particularly when interrupted regularly by telephone calls, email, and co-workers. I believe that staying physically fit is important to be able to focus on mental work eight hours per day. If I feel tired, I’m not as effective. Keeping fit gives me the stamina to keep going. Returning telephone calls promptly and communicating regularly with the client on the status of the work are important. I also believe that being approachable and accessible to clients are golden rules for being a successful patent lawyer. For example, I take all telephone calls directly, without passing them first through a receptionist or secretary. I try to be readily available for meetings that fit the client’s schedule, not mine. After all, we patent attorneys are rendering a service. I try to be service-oriented.

the Minds: Changes inInside Patent Law The Art & Science of Patent Law by Inside the Minds Staff

ISBN:1587623463

There have beenAspatore a number of changes in pages) patent law that have affected my practice. One is the ability Books © 2004 (245 to file provisional This applications, which went into effect a few yearson ago. text is an authoritative, insider’s perspective theAlso lawsthe life of patents has changed. A few years it was 17 years from the issueand date; now it is of 20 years from the filing date. whichago, govern patents, the characteristics capabilities successful practitioner the future of patents. patent regulation, The difference is the important because it cutsand off “submarine” Previously an inventor could a global scale. continue to refile on applications and keep them pending year after year. When the patent would finally issue, maybe as long as 15 or 20 years after it was filed, it might have 17 more years left. That allowed the patent applicant to watch what was happening in the industry and try to structure the claims to Table of Contents capture the industry process can’t be done anymore. Inside thewhat Minds—The Art & develops. Science of That Patent Law Patent Law—Complex, Frustrating, and Rewarding

Another change is the publication of patent applications. Recently the United States went to a publication system, which means that after 18 months, the patent application will be published even if it Getting It Right the First Time—The Biomedical Patent Process has not been granted. The patent application is not published only if the applicant stated upon filing Communication—The Key to Success in Patent Law Practice that he or she did not intend to file for foreign patents. That change was in response to harmonizing Toolkits, and the the U.S.Football, patent laws withPower thoseofofPatents the rest of the world. Of Better Mousetraps and Beaten Paths

The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the The Art Science of Patent Law Personal Vision forMinds: Future of&Patent Law by Inside the Minds Staff

ISBN:1587623463

I believe that the Aspatore United States continue to harmonize its patent laws with those of Europe. For Bookswill © 2004 (245 pages) example, there isThis a patent application examination procedure called a “demand” that is common in text is an authoritative, insider’s perspective on the laws most foreign countries. After filing the patent application in thecapabilities foreign country, the foreign patent office which govern patents, the characteristics and of the successful practitioner the future patent regulation, will conduct a search and provide a report.and However, the of examiner won’t conduct an examination until on a global a request, accompanied by ascale. fee, is sent. The demand could be made several years after filing. The of demand procedure reduces the number of patents actually examined, allowing the particular Table Contents

country to operate with fewer examiners. These countries have found that demands are not made for many patent applications. The application gets published as a published application, so that it will Patent Law—Complex, Frustrating, and Rewarding protect the applicant from someone else obtaining a patent for the same invention at a later date. The Of Better Mousetraps and Beaten Paths applicant, of course, does not get exclusive rights because the patent never issues. Going to a demand Getting It Right the First Time—The Biomedical Patent Process system might cut down on the backlog in the U.S. Patent Office. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

Toolkits, Football, and of the Patents The United States is the alsoPower one of few countries that grant a patent to the first to invent and not to the The Patent Lawthe Practice firstFull-Service to file. Theoretically, U.S. system eliminates a race to file first. However, in most cases, to be

considered asBounds a first to the Application earlier inventor must have reduced the invention to practice and The Metes and of invent, the Patent Process testedProper it before theoflater inventor’s reduction Taking Care a Client’s Valuable Assets to practice and before the filing date of the later inventor. Also, if theWar earlier inventor waits too long, he or she may be barred by statute from filing. The earlier The Patent Game—Playing to Win inventor must file beforetoone year passes from the date of issuance of the patent and also within one Patent Law-From Bicycles Biotech year of commercialization of the invention. The procedure to determine the first inventor, called Patents—How the System Works

“interference,” happens rarely and is cumbersome, complex, and expensive. The rest of the world doesn’t have such a procedure, and I expect it will eventually disappear.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the System

I believe the process of preparing and prosecuting patent applications will continue about the same as now, with a few differences. For example, to conduct a thorough search, I still have to engage a professional searcher to search the physical files at the Patent Office in the Washington, D.C., area. The Patent Office maintains the only depository of patents organized and stored in paper copies by subject matter. For many mechanical inventions, key words are not sufficient. A searcher needs to see the drawings, and particularly briefly scan drawings of a large number of patents, all dealing with the same subject matter. If a question arises as to a particular component of a drawing, the searcher needs to be able to quickly access the text. The database needs to be full-text searchable for all patents issuing at least since the mid-19th century. For various reasons, searching in this manner by computer is not yet satisfactory. I think that eventually, this searching by computer will be fast, thorough, and user-friendly. I suspect that the Patent Office will stop maintaining its paper copy search rooms. I think we will start using email for all correspondence with the Patent Office. Currently, we cannot send an amendment or a patent application by email simply by attaching it in a conventional word processing format. At the moment, it is quite difficult and time consuming to communicate electronically with the Patent Office. To my knowledge, few in private practice use electronic communication with the Patent Office. In time, however, electronic communication with the Patent Office will become common and possibly even required. I am generally satisfied with the way the Patent Office operates. If I could pass a law that would affect the way I prepare and prosecute patent applications, it would be of a minor nature. For example, examiners are entitled, but not required, to issue a final rejection on the second office action. The applicant is not entitled to make an amendment after a final rejection. To get an amendment entered, the applicant must file a continuation application and pay another filing fee. An examiner receives additional credit toward his performance goals if a continuation is filed. Sometimes an examiner will cite a new reference with the final rejection, saying that the preceding amendment necessitated the new reference. The applicant is not entitled to a response to even discuss – let alone amend – the claims in view of the new reference. If I had the power, I would change the final rejection procedure. The current procedure adds expense to the cost of obtaining a patent. I would prohibit a final rejection if the examiner cites a new reference. I would also eliminate a policy of discouraging interviews after a final rejection. Those of us who practice outside the Washington, D.C., area cannot afford the travel expense and time of routinely meeting with examiners. We are normally able to achieve allowance of an application by filing one

amendment. Personally meeting with examiners before such an amendment would unnecessarily take up the examiners’ time and add expense to the client. I often don’t know whether I have a difficult case until an examinerInside issues the a final rejection. It is&premature to Patent be required Minds: The Art Science of Law to interview before the final rejection, in my opinion. I would change this procedure to allow an applicant to interview an examiner ISBN:1587623463 by Inside the Minds Staff after a final rejection. Aspatore Books © 2004 (245 pages) text is an authoritative, insider’s perspective on theintellectual laws James E. BradleyThis practices patent, trademark, copyright, and general property law, with an which govern patents, the characteristics and capabilities of emphasis in the area of mechanical devices. the successful practitioner and the future of patent regulation, on a global scale.

Mr. Bradley has been practicing IP law in private practice for more than 25 years. Before attending law school, he spent five years as an engineer in oil field services for Schlumberger Ltd. Mr. Bradley was Table of Contents a co-founder in 1979 of Felsman, Bradley, Vaden, Gunter & Dillon, LLP, a firm that specialized in IP Inside thepracticed Minds—The Art Fort & Science Patent law. He in the Worthofoffice ofLaw the Felsman firm until 1996, when he opened an office for Patent Law—Complex, Frustrating, and Rewarding the Felsman firm in Houston. In January 2001, the Felsman firm was acquired by Bracewell & Of Better Mousetraps and Beaten Paths Patterson, LLP. Getting It Right the First Time—The Biomedical Patent Process

With extensive experience in all phases of IP law for clients from individuals to Fortune 500 companies, including litigation matters, as well as prosecution of patent applications before the U.S. Toolkits, Football, and the Power of Patents Patent and Trademark Office and foreign patent offices, Mr. Bradley has personally prepared and The Full-Service Patent Law Practice successfully prosecuted hundreds of patent applications, a large group of which involve oil well drilling The Metes and Bounds of the Patent Application Process and production equipment. He is involved frequently in infringement and validity analysis of patents, Taking Proper Care of a Client’s Valuable Assets both for patent holders and for those seeking to avoid infringement. He also has considerable The Patent War Game—Playing to Win trademark oppositions and cancellations, and infringement experience in trademark registration, Patent Law-From Bicycles to Biotech matters. Communication—The Key to Success in Patent Law Practice

Patents—How the System Works

Mr. Bradley his JD the University of Oklahoma College of Law and his BSME at Oklahoma Reflections onearned the Practice of at Patent Law State University. the Value, Working the System Patents—Knowing

the Minds: The Art & Science of Patent Law Toolkits,Inside Football, and the Power of Patents ISBN:1587623463 by Inside the Minds Staff Aspatore Books © 2004 (245 pages) Scott Bruning Stahl Jackson Walker, This LLPtext is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of Partner

the successful practitioner and the future of patent regulation, on a global scale.

Patent = Contract

Table of Contents

The patent laws stem directly from the Constitution, which endows Congress with the power to legislate so that inventors may secure rights to their inventions. The patent laws implement basically a Patent Law—Complex, Frustrating, and Rewarding quid pro quo between the inventor and the public. The U.S. government grants to the inventor for a Of Better Mousetraps and Beaten Paths period of years the right to exclude others from making, using, selling, or offering to sell the invention in Getting It Right thefrom Firstimporting Time—The Biomedical Process this country and the inventionPatent into this country. In return for these legal rights, the Communication—The Key to Success in Patent Law Practice inventor teaches the public how to make and use the invention. After the patent expires, the public will Toolkits, of PatentsDuring the life of the patent, the public will be motivated to be able Football, to makeand andthe usePower the invention. The Full-Service Law Practice innovate useful,Patent workable alternatives to the patented invention to avoid infringing the patent. These The Metes and Bounds the Patent Application Processby encouraging inventors to disclose their laws are designed to of further technological progress Taking Properrather Care of a Client’s Valuable Assets and by encouraging the public to innovate beyond the inventions, than keeping them secret, patented The Patent technology. War Game—Playing to Win Inside the Minds—The Art & Science of Patent Law

Patent Law-From Bicycles to Biotech

A written specification, typically together with supporting drawings, is the principal mechanism for implementing the quid pro quo between the inventor and the public. The specification and supporting Reflections on the Practice of Patent Law drawings are submitted as part of a formal application for a patent. The specification includes a Patents—Knowing the Value, Working the System technical description of the invention, as well as a legal description of the invention. The technical description, together with any supporting drawings, serves the function of teaching the public how to make and use the invention. The legal description of the invention, also referred to as the claims of the patent, defines the exclusive rights granted to the inventor, the “metes and bounds” of the inventor’s “intellectual property.” Both the technical description and the legal description must therefore adequately educate the public. The technical description and drawings must adequately teach the public how to make and use the invention, and the legal description (or claims) must put the public on notice as to the legal boundaries of the patentable invention in which the inventor has exclusive rights. Patents—How the System Works

At this point, let me emphasize that the owner of a patent does not necessarily have any legal right to make, use, sell, offer to sell, or import the patented invention, but rather has the right to exclude others from these activities. It is not so important for the reader to understand how this can happen, but rather to note well that there is no guarantee that the patent owner can legally make, use, sell, offer to sell, or import the invention defined by the claims of the patent. Due to the obvious public interest in the teaching and notice functions, the specification and drawings are subjected to examination by a patent examiner. The examiner will grant a patent only if certain conditions are met. These conditions can generally be described as follows: (1) The legal description or claims must provide adequate notice of the invention from which the public is to be excluded. (2) The subject matter of the legal description must comply with statutory patentability requirements, namely novelty, usefulness, and non-obviousness. (3) The technical description and drawings must adequately teach how to make and use the invention defined in the legal description. The patent examiner basically represents the public interest with respect to these conditions, and the patent examination process is designed to ensure and facilitate compliance with them. Patent laws throughout the world can, of course, vary from country to country. However, by and large, the patent examination process in countries throughout the world is directed to resolution of the issues described above with respect to U.S. examination. Probably the most significant difference between the patent laws of foreign countries and those of the United States is the manner in which priority of invention is determined. In the United States, if one inventor can prove he or she invented invention X before another inventor did, then the first-in-time inventor can be legally recognized as the inventor of invention X, even if the later-in-time inventor filed a patent application for invention X before the first-intime inventor did. In contrast, the laws of most foreign countries sponsor a “race to the Patent Office,” in which the later-in-time inventor can be legally recognized as the inventor of invention X, so long as the later-in-time inventor files a patent application for invention X before the first-in- time inventor does.

A patent is a legal grant from the government of a sovereign nation, so it is important to bear in mind that patents granted pursuant to the laws of sovereign nations will be effective only within the respective geographic the Art respective nations. Therefore, Insideboundaries the Minds:ofThe & Science of Patent Law the exclusionary rights associated with aby U.S. patent have no direct legal effect on the activities of persons in other countries, ISBN:1587623463 Inside the Minds Staff and vice versa. So, if a client wishes to assert patent rights in Mexico, for example, then the client Aspatore Books © 2004 (245 pages) needs to obtain a patent from the government of Mexico. This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale.

Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside The Art &Patent Science of Patent Law The Tool Box ofthe anMinds: Excellent Lawyer by Inside the Minds Staff

ISBN:1587623463

When I train novice patentBooks attorneys, make a concerted effort to impress upon them the importance Aspatore © 2004I (245 pages) of developing andThis mastering key skills. These skills become tools their “patent tool box,” much like text is an authoritative, insider’s perspective oninthe laws the tools in a carpenter’s tool box. Just the as acharacteristics complete setand of tools enables which govern patents, capabilities of a carpenter to build any successful practitioner and thethe future of patent regulation, desired structure the if the carpenter is provided with requisite building materials, so does a complete a global scale. attorney to build any desired patent application if provided with the set of patent toolsonenable a patent requisite information about the invention. Table of Contents

The first tool a patent lawyer needs to develop is the faculty of obtaining an appropriate perspective of the invention. This “perspective tool” primarily involves the recognition and realization that every Patent Law—Complex, Frustrating, and Rewarding invention must necessarily be, at some level, a combination of already-known components, materials, Of Better Mousetraps and Beaten Paths steps, and so on. This should be in many ways a self-evident proposition, because no human can Getting It Right the First Time—The Biomedical Patent Process create a new thing (that is, an invention) out of nothing. The perspective tool permits the patent Communication—The Key to Success in Patent Law Practice attorney to comprehend the invention at the level where it is nothing more than a combination of Toolkits, Football,things. and the of Patents already-known OfPower course, the patent lawyer’s first exposure to the invention most often comes The Full-Service Patent Law Practice in the form of a description provided by the inventor, from the inventor’s perspective. So the The Metes andtool Bounds of the Patent the Application Processto “chip away” at the inventor’s perspective of the perspective typically requires patent lawyer Taking Proper Care of adeconstructing Client’s Valuablethe Assets invention, essentially invention until it can be comprehended as a combination of The Patent War Game—Playing already-known things. When to theWin patent lawyer has attained this perspective of the invention, and not Patent Law-From Bicycles to Biotechand drawings can usually be produced in a relatively straightforward before, the technical description manner. Thisthe is certainly not to say that the process of producing the technical description and Patents—How System Works drawings will everPractice be easy. In fact,Law one of my favorite pieces of advice for patent lawyers who are Reflections on the of Patent struggling – and which is probably even more pertinent for patent lawyers who are cruising – is, “If you Patents—Knowing the Value, Working the System don’t find this work difficult, you’re probably not doing it right.” Inside the Minds—The Art & Science of Patent Law

The power of the perspective tool is that no matter how ferociously complex the subject matter of the invention may be, if the patent attorney applies the perspective tool assiduously, the task of preparing the technical description and drawings actually becomes a matter of describing a finite number of “things” (components, materials, steps, etc.) that are already known and understood in the technical area to which the invention pertains. In this manner, the process of preparing the technical description and drawings is rendered both logical and manageable. The analogy to the carpenter is that, just as a carpenter can build any structure, no matter how elaborate, by patiently applying her tools, so can a patent lawyer build a technical description of any invention, no matter how complex, by patiently applying her perspective tool. In addition to the perspective tool, the patent lawyer must also develop the faculty of specifically and accurately articulating how the invention differs from prior work in the pertinent area of technology. This “distinction tool” is a key factor in preparing the legal description (claims), because a patent will not be granted unless the legal description sufficiently distinguishes (or differentiates) the invention from the prior work in the area. The distinction tool enables the patent lawyer to draft the legal description so that prior work is adequately distinguished. However, the value of the legal description, and thus the ultimate strength of the patent, usually depends on how well the patent lawyer wields the distinction tool to articulate differences between the invention and prior work. The more differences that can be articulated – and, of course, reduced to the written words of the legal description – the more powerful the patent will be. As admittedly important as the perspective tool is, proficiency with the distinction tool is what sets truly excellent patent lawyers apart from the rest of the pack. One final note about the technical description and drawings: The patent laws require a description of how to make and use the invention. A well-written technical description will focus very sharply on the invention. Although description of prior work in the area may sometimes be useful in describing how to make and use the invention, nevertheless, the technical description should normally be devoted to the invention. It may seem that this is self-evident and would therefore be almost an inherent feature of the technical description of any patent specification, but I continue to be surprised (and often mildly amused) at how many of my colleagues in this business regularly produce technical descriptions wherein as much as or more than half of the material presented relates to things that are not the invention and are not necessary to understand how to make and use the invention. This phenomenon is likely a result of inadequate application of the distinction tool because, if the patent attorney properly applies the distinction tool to articulate the differences between the invention and the prior work, the

exercise itself of articulating the differences should normally keep the attorney’s attention focused on what the invention is, rather than what it is not. Inside the Minds: The Art & Science of Patent Law by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art &to Science of Patent Patent Lawyers –––– Getting Know Us Law by Inside the Minds Staff

ISBN:1587623463

Patent law is a recognized specialty area Aspatore Books © 2004 (245within pages) the practice of law. Patent lawyers must have special technical education along with their traditional legal education and also pass two separate bar This text is an authoritative, insider’s perspective on must the laws exams, the Federal Patent Barpatents, Exam and least one state exam. Patent lawyers are specialists, which govern the at characteristics andbar capabilities of the successful practitioner the future of patent and there is a non-trivial distinction betweenand patent lawyers and theregulation, rest of the world of lawyers. An on education a global scale. extensive technical is required just to obtain admission to the Federal Patent Bar Exam. In fact,version="1.0" the amount ofencoding="ISO-8859-1"?> technical education required is nearly equivalent, at least in quantity, to the
The patent lawyer’s technical education and background are clearly important for the practice of patent law. Notwithstanding that, it should be always remembered that the primary function of the Getting It Right the First Time—The Biomedical Patent Process patent lawyer is to present the technical subject matter of the invention in a format that is legally Communication—The Key to Success in Patent Law Practice acceptable to the Patent Office and legally advantageous for the client. In other words, despite the Toolkits, Football, and the Power of Patentsmix, the patent lawyer functions primarily as a legal technical component of the educational The Full-Service Patent Law Practice professional, not a technical professional. Of Better Mousetraps and Beaten Paths

The Metes and Bounds of the Patent Application Process

Of course, the technical background the patent attorney should always be considered to the extent Taking Proper Care of a Client’s ValuableofAssets that, for example, a patent attorney The Patent War Game—Playing to Win with an aeronautical engineering background might not be the best selection for an Bicycles inventiontoinBiotech the chemical engineering field. However, beyond this type of obviously Patent Law-From prudent selection, it is best to bear in mind that the patent attorney is being retained primarily as a Patents—How the System Works

lawyer, not an engineer. The attorney’s technical background will certainly facilitate communication with the inventor regarding the technical subject matter of the invention. The key here is that the Patents—Knowing the Value, Working the System inventor will educate the patent attorney as to the technical subject matter of the invention, and the patent attorney’s technical education and background will facilitate this educational process. Note, however, that it is normally unrealistic to expect the patent attorney to be an expert in any particular technological field, and, for reasons set forth below, it may sometimes be imprudent or even impossible to retain an attorney who is an “expert” in the technical field of the invention. Reflections on the Practice of Patent Law

Referring again to the perspective tool described above, if a competent patent attorney has command of this tool, then he or she can be far from an expert in the specific technical area, and yet still prepare a legally sound document. It is worth noting here also that the distinction tool described above will typically dovetail nicely with a proper application of the perspective tool because once the invention has been deconstructed (by application of the perspective tool) into conventional components, this facilitates the (distinction tool) process of articulating the differences between the invention and things that are already known. Clients often seek to hire a patent attorney with education and experience that closely matches the specific technical area of the invention. Although this seems to be (and is) a generally logical objective, clients should beware that sometimes, patent attorneys who are extremely familiar with a specific technological area might actually be “too smart” for their own good. That is, their expertise could lead them to apply the perspective tool only superficially because they have comprehended how the invention works almost too quickly and easily. In the process of producing the technical description, if the inventor collaborates only with another “expert” (the patent attorney), there is a risk that they will produce a technical description that is readily comprehensible only to other experts. A patent examiner could possibly conclude that such a technical description, no matter how brilliant and elegant, fails to provide non- expert, ordinary workers in that particular technical area with an adequate teaching of how to make and use the invention. As noted above, such a conclusion could result in denial of a patent. This type of disaster can be avoided if the patent attorney is disciplined and diligent in applying the perspective tool – that is, if the patent attorney is as strong a lawyer as he or she is a technician. On the other hand, in the case of a patent attorney with strong legal skills who is trained in the technical field (mechanical engineering, for example) but not expert in the specific technical area (tank transmissions, for example), the patent attorney will gain leverage from his general technical background to learn the specific technical subject matter from the inventor. This process typically facilitates a complete application of the perspective tool because the attorney will not feel comfortable with his understanding of the specific technical subject matter until he is satisfied that he has deconstructed it into conventionally known parts.

So there is certainly nothing wrong with hiring a patent attorney who is a technical expert in the invention area, but legal expertise should never be subordinated to technical expertise in the decision of hiring a patent Inside attorney. the Minds: The Art & Science of Patent Law Inside the Minds Staff Another problemby clients often meet when attempting to find an exact match between the specific Books © 2004 (245 pages) technical area of Aspatore the invention and the patent attorney’s technical background and experience is that if is an authoritative, perspective onarea the laws a patent attorneyThis whotext is very experienced in insider’s the specific technical of the invention can be which govern patents, the characteristics and capabilities of identified, more often than not the reason the attorney is experienced in that specific technical area is the successful practitioner and the future of patent regulation, that he or she already represents on a global scale. other clients in that specific technical area. An attorney retained under these circumstances would likely have an undesirable conflict of interest between the representations of the two different clients in the same specific technical area. ISBN:1587623463

Table of Contents

Inside the Minds—The & Science Patent Law for Company A that manufactures microprocessors to For example, it wouldArt probably notofbe workable Patent Frustrating, and Rewardingin microprocessor patents, if that experience is patent retain Law—Complex, a patent attorney with much experience Of Better and Beaten Paths work thatMousetraps has been done for Company B that manufactures microprocessors that compete with those

of Company More than not, if a clientPatent searches for the perfect patent attorney on paper, who Getting It RightA.the Firstoften Time—The Biomedical Process has just the right technical experience, the client will find that that particular patent attorney will have a Communication—The Key to Success in Patent Law Practice conflict Football, anyway. and the Power of Patents Toolkits, The Full-Service Patent Law Practice

In summary, it is most desirable to hire a patent attorney based primarily on her legal proficiency and ability to apply the perspective tool and the distinction tool. The specific technical area of the invention Taking Proper Care of a Client’s Valuable Assets need not exactly match the patent attorney’s educational or professional experience. So long as the The Patenthas Wara Game—Playing to Win attorney strong academic background and adequate experience in the general technical area of Patent Law-From Bicycles to Biotech which the inventive subject matter is a subset, then the inventor should be able to educate the patent Patents—How the System attorney adequately withWorks respect to the technical specifics of the invention. From this point, the patent Reflections theskills Practice Patenttool Lawbox become the paramount concern, so reputation and attorney’s on legal andofpatent Patents—Knowing the Value, Working the System demonstrated abilities on the legal side of the equation should normally drive the selection of patent counsel. In short, always try first and foremost to hire the best lawyer available. The Metes and Bounds of the Patent Application Process

Inside thePortfolio Minds: The Art & Science of Patent Law Building a Patent by Inside the Minds Staff

ISBN:1587623463

When discussingAspatore with a client whether to file a patent application, I typically ask the client to identify Books © 2004 (245 pages) such factors as where the client’s market is, what kinds of products the laws competitors have, what types This text is an authoritative, insider’s perspective on the of products the client sell in the and where client’s technology is headed. The whichintends governto patents, the future, characteristics and the capabilities of successful and governs the future of behavior patent regulation, important thing tothe remember is practitioner that the patent the of others – competitors, for a global of scale. example – not theonbehavior the patent holder. So the patent holder is more concerned about knowing what others will (or will want to) be doing, and getting there first with patent coverage. Of course, the future behavior of significant competitors will often be very similar to the client’s predictions Table of Contents aboutthe its own future behavior. Inside Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding

We encourage the client to think about the issues above, identify their technologies and innovations, and for each one, decide whether or not the client intends to use it. If the client has unique Getting It Right the First Time—The Biomedical Patent Process technologies, they may want to file patent applications covering them, so that they can keep Communication—The Key to Success in Patent Law Practice competitors from copying them. Alternatively, if the client has innovated somewhere, but has decided Toolkits, Football, and the Patents for business reasons notPower to useofthat particular innovation, the question then becomes whether the The Full-Service Patent Law Practice client thinks competitors (or anyone else, for that matter) might like to use this product or technology. If The Bounds the Patent Application Process it isMetes likely and enough thatofsome other party may be inclined to use that product or technology, the client Taking a Client’s Valuable covering Assets it, even though the client does not have any intention of might Proper want toCare file aofpatent application The Patent Game—Playing to Win using it in War its own business plan. Of Better Mousetraps and Beaten Paths

Patent Law-From Bicycles to Biotech

With respect the to getting first with patent coverage, as a former college football player, I often use Patents—How Systemthere Works this analogy: When competing in football, your offense must know, or your defense must quickly determine, where the point of attack is for a given play, and then do your best to get there first. Patents—Knowing the Value, Working the System Regardless of the type of play, whoever gets there first – offense or defense – has the best chance of success on that particular play. Just as blockers or tacklers need to get to the point of attack before the football arrives there, so should patent coverage be in place before the covered products arrive in the market. Reflections on the Practice of Patent Law

Inside the Minds: The Art & Science of Patent Law Dealing with Change by Inside the Minds Staff

ISBN:1587623463

I typically keep abreast of Books changes in the Aspatore © 2004 (245patent pages) law by receiving regular reports of legislative activity, court and administrative agency decisions, Patent Office ruleonmaking. This text is an authoritative,and insider’s perspective the lawsThis permits me to keep my patent tools sharpened, strong,patents, and relevant. which govern the characteristics and capabilities of the successful practitioner and the future of patent regulation, global scale. in technology is concerned, although I belong to scientific and As far as keepingon upa with changes engineering societies and receive their magazines and technical journals that help keep me informed of technological developments, I find, as I suspect do most busy patent attorneys, that it is virtually Table of Contents impossible to keep abreast of technological innovations within the broad technological areas in which I Inside the Minds—The Art & Science of Patent Law practice. However, as mentioned above, it is most important for the patent attorney to be a quick study Patent Law—Complex, Frustrating, and Rewarding and be able to learn the specifics of the invention with which he or she has been presented, rather than Of Better Mousetraps and Beaten Paths to be able to give a lecture on current events in technology. Getting It Right the First Time—The Biomedical Patent Process

Communication—The Key to Success Patent Law Practice The specific technical subject of theininvention corresponds to the carpenter’s building materials: They Toolkits, andbuilding the Power Patents come toFootball, him at the site;ofhe uses his tools to build the structure, and then moves on with his The Full-Service Lawsite, Practice tools to the nextPatent building where the next set of building materials comes to him, and the process

canMetes then be tools remain constant The andrepeated. Bounds ofBut thethe Patent Application Process for the carpenter; whereas, the building materials may change according to the Valuable customer’s desires. The carpenter may need to learn about new building Taking Proper Care of a Client’s Assets materials case-by-case basis, The Patent on WaraGame—Playing to Win but he must constantly maintain his tools in good working order, for use with any building materials. Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Achieving Success by Inside the Minds Staff

ISBN:1587623463

I think my footballAspatore experience has been(245 very helpful to me. It taught me that I can usually accomplish Books © 2004 pages) more than I originally imagine, and that development of sound fundamental This text is an authoritative, insider’s perspective on the laws skills is the key to winning. Football is a challenging and difficult to play, and the of patent law is certainly a which govern patents,game the characteristics andpractice capabilities of the successful practitioner andpractice, the future of patent regulation, challenging and difficult profession. In patent complex technical cases can often seem oneach a global scale. overwhelming, but project can nevertheless be attacked in the same manner, using fundamental tools. Just as goodencoding="ISO-8859-1"?> fundamentals, like blocking and tackling, produce wins in football, successful
It is not uncommon for the quality of a patent attorney’s work to be scrutinized only many years after it has been performed, such as when the patent is asserted against an infringer in a litigation or licensing Of Better Mousetraps and Beaten Paths context. This is obviously a very slow feedback mechanism. It is therefore critical in the practice of Getting It Right the First Time—The Biomedical Patent Process patent law for novice patent attorneys to get good early training. In this way, novices can feel confident Communication—The Key to Success in Patent Law Practice that they have done all they can to progress well, rather than finding out several years later that they Toolkits, Football,poorly. and the Power of Patents are performing Patent Law—Complex, Frustrating, and Rewarding

The Full-Service Patent Law Practice

One measure of the success of a patent attorney is whether the client is able to make money from a The Metes and Bounds of the Patent Application Process patentProper the attorney For example, Taking Care ofprocured. a Client’s Valuable Assetsif the client is able to license the patent to another party, thereby making money from the patent without resorting to litigation, then the party who signed the The Patent War Game—Playing to Win license and agreed to pay a royalty has in effect decided that the odds of successfully defending Patent Law-From Bicycles to Biotech against a patent infringement Patents—How the System Workslawsuit are low enough to justify paying license royalties instead. This

decision will typically be made after consultation with one or more patent attorneys who carefully review the patent and its examination history to determine whether there are any significant Patents—Knowing the Value, Working the System weaknesses in the technical description or the legal description that might be exploited in defending against the infringement claim. Reflections on the Practice of Patent Law

The decision to pay royalties reflects at least to some extent on the quality of the technical and legal descriptions in the patent. This is a very important point, because a poorly written technical description and/or a poorly written legal description can form the basis for a successful defense against a claim of patent infringement, no matter how brilliant, revolutionary, or widely desired the patented technology is.

Inside the Minds: The Art & Science of Patent Law The Value of Patents by Inside the Minds Staff

ISBN:1587623463

To leverage the true valueBooks of the©patent system, Aspatore 2004 (245 pages) clients need to work their patent portfolios. By that I mean several things. The client should identify the areas in whichonthey and be sure they have This text is an authoritative, insider’s perspective the innovate laws patent applications covering those areas innovation. Once the patentsofare granted for those areas, which govern patents, theofcharacteristics and capabilities successful practitioner and the and future ofcompetition patent regulation, the client should the keep abreast of the marketplace the to be ready to assert the on a global patents as necessary. If the scale. client does not remain engaged in this manner, the portfolio is of little value. Table of Contents

The power of patents should always be kept foremost in the client’s consciousness. A patent portfolio can be a very powerful asset, sometimes almost deceptively powerful. After all, a patent is literally a Patent Law—Complex, Frustrating, and Rewarding piece of paper that embodies legal rights that can be worth millions or even billions of dollars. Also, Of Better Mousetraps and Beaten Paths patents are quite different from familiar contract situations, wherein one party to a well written contract Getting It Right the First Time—The Biomedical Patent Process can sometimes be fortunate enough to profit millions of dollars based on the legal obligations Communication—The Key to Success in Patent Law Practice embodied by the contract. But at least the contract is typically between two parties who negotiated at Toolkits, Football, the Power of Patents arm’s length andand entered into the contract with their eyes open. A salient attribute about the patent The Full-Service Patent Law Practice situation is that a client can assert its patent against, and collect money from, a party who not only has The Metes and Bounds the Patent Application never contracted withofthe client, but could wellProcess have never even been aware of the client’s existence Taking Care of a Client’s Valuable Assets beforeProper the patent was asserted. Patents are indeed extraordinarily powerful. Inside the Minds—The Art & Science of Patent Law

The Patent War Game—Playing to Win

In addition to quantifiable Patent Law-From Bicycles toeconomic Biotech advantages, patents can also have a largely hidden (and generally incalculable)the value, inasmuch Patents—How System Works as a good patent can dissuade potential new competitors, even parties

unknown to the patent holder, from ever entering into marketplace competition with the patent holder. This bar to market entry should be considered when assessing the value of patents. Just as a Patents—Knowing the Value, Working the System watchdog who never thwarts a burglary attempt may nevertheless (and preferably) discourage many burglars from making a burglary attempt in the first place, so a patent that is never infringed can nevertheless prevent many would-be competitors from appearing. Reflections on the Practice of Patent Law

Inside Minds: The Art & Science of Patent Law When to Pull thetheTrigger by Inside the Minds Staff

ISBN:1587623463

The decision of whether assert patent in a patent infringement lawsuit is largely a function of the AspatoretoBooks ©a 2004 (245 pages) client’s business conditions. The client should normally perform a evaluation to This text is an authoritative, insider’s perspective oncost the effectiveness laws determine whether it would make goodthe business sense toand suecapabilities for patentofinfringement. which govern patents, characteristics the successful practitioner and the future of patent regulation, a global scale. that infringes the client’s patent, and if the competitor is not If a competitor is on making a product amenable to a patent license arrangement, the client must, at minimum, assess whether or not the potential losses from the infringing competition outweigh the costs of an unsuccessful attempt to Table of Contents enforce the patent in court. Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, If the cost-benefit analysis favorsand the Rewarding litigation option, the patent attorney will evaluate the litigationOf Better Mousetraps and Beaten Paths worthiness of the patent. This evaluation will include a critical assessment of the technical and legal Getting It Right the First Time—The Biomedical Patent Process descriptions. Communication—The Key to Success in Patent Law Practice

The attorney may also evidence of prior work that may not have been available during the Toolkits, Football, and thesearch Power for of Patents patent examination process. If any such new information is discovered, the client will need to consider The Full-Service Patent Law Practice going back toBounds the Patent Office and presenting this information to the examiner for a determination of The Metes and of the Patent Application Process

whether the legal description should be revised in view of the new information to comply with the statutory standards of patentability. This procedure, commonly referred to as a re-examination The Patent War Game—Playing to Win procedure, can be very useful to defuse any potentially damaging impact the new information might Patent Law-From Bicycles to Biotech otherwise have during litigation. After the re-examination procedure, and with the new information issue Patents—How the System Works defused, the client can proceed with the patent infringement lawsuit. Taking Proper Care of a Client’s Valuable Assets

Reflections on the Practice of Patent Law

Patents—Knowing Value, Working the procedures, System In addition to the the foregoing preliminary any decision to pursue a patent infringement

lawsuit should be made only after due consideration of the possibility that the client, by virtue of filing a lawsuit as a patent infringement plaintiff, might very quickly become a patent infringement defendant. In particular, the alleged infringer may counter-sue the client for infringement of the alleged infringer’s patents. This may be a particularly likely scenario if the alleged infringer actually competes directly with the client in the marketplace, because a direct competitor would, of course, be far more likely to own patents that relate to the client’s activities. This highlights another important point regarding the value of a client’s patent portfolio: the ability, in either a litigation or a licensing context, to counter-assert patents against a party who is asserting patents against the client. This provides in effect a defense against the first party’s assertion of its patent.

Inside Minds: The & Science of Patent Law Thoughts for thetheFuture ofArt Patent Law by Inside the Minds Staff

ISBN:1587623463

If I could influence the future of patent lawpages) in this country, I would like to see the courts defer more to Aspatore Books © 2004 (245 the patent examination process in the U.S. and Trademark Patent infringement litigation This text is an authoritative,Patent insider’s perspective onOffice. the laws is some of the most complex confusing litigation imaginable, and there which governand patents, the characteristics and capabilities of seems to be, in recent the successful practitioner future of patent long regulation, years, an increasing incidence of “battles ofand thethe experts,” wherein lines of expert witnesses are on a global scale. called to testify about all sorts of supposed issues with respect to the patent. This often makes a relatively confusingencoding="ISO-8859-1"?> patent infringement case even more confusing.
If increasing deference were accorded to the patent examining procedures that have been put in place pursuant to legislation of the Congress, then the constitutional intent that Congress legislate to secure Patent Law—Complex, Frustrating, and Rewarding inventors’ rights would be more faithfully executed. After all, the Constitution does not say that the Of Better Mousetraps and Beaten Paths courts should adjudicate to secure the rights of inventors. The courts should determine whether a Getting It Right the First Time—The Biomedical Patent Process patent is infringed, and issue appropriate relief in cases where infringement is proved. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

Toolkits, Football, andincreasingly the Power of Patents If the courts would defer to the patent examination process – and the legal record created The Full-Service Patent Practice of the technical description and the legal description of the patent, therein – regarding theLaw meanings

patent attorneys would gravitate toward The Metes and Bounds of increasingly the Patent Application Process the Patent Office practice, rather than toward litigation practice they do now. TheyAssets would then develop the tools described above to help them Taking Proper Care as of a Client’s Valuable obtain for War theirGame—Playing clients well-drafted The Patent to Winpatents that can speak for themselves and do not require a “battle of theLaw-From experts” for their elucidation. Patent Bicycles to Biotech Patents—How the System Works

Regarding the increased gravitation of patent attorneys toward litigation practice, some further comment is in order. As we have seen, the practice of patent law, particularly writing patents and Patents—Knowing thethrough Value, Working the System shepherding them the examination process, can be quite intellectually rigorous and demanding. Due largely to the demanding nature of the practice, it is not uncommon for younger practitioners to begin to bail out after about five years of Patent Office practice, typically moving more and more into litigation and licensing practices. Reflections on the Practice of Patent Law

Although patent litigation practice and patent licensing practice can undoubtedly be very hectic and time-consuming, few people who know this business would seriously argue that either of these practices is as uniformly rigorous as Patent Office practice in terms of pure intellectual challenge. Moreover, the litigation and licensing practices tend to be higher-profile, sexier than the Patent Office practice. Finally, at least from the standpoint of patent attorneys engaged in the private practice of law, litigation practice is far more amenable to racking up large quantities of billable hours than Patent Office practice. Of course, billable hours relate directly to the attorney’s compensation. For reasons like these, patent litigation practice has many characteristics that can be quite attractive to younger patent attorneys. With many questions to be argued in court, and with the already natural attraction that litigation holds for younger patent attorneys, more and more of the younger patent attorneys migrate to litigation practice. This causes the level of experience and expertise among patent attorneys engaged in Patent Office practice (the “patent bar”) to decline. For example, after acquiring maybe five years of experience in Patent Office practice, if an attorney moves to litigation, this leaves a hole in the patent bar that will be filled by a novice attorney. Moreover, there is now one fewer five-plus-year attorney available to train that novice. Multiply this effect by many attorneys, and you get a decline in the experience and expertise of the patent bar, which in turn leads to a decline in the quality of the technical and written descriptions in patents. As indicated previously, one can normally expect that neither patents of very high quality nor patents of very low quality will often be litigated. However, as levels of experience and expertise within the patent bar decline and produce a corresponding degradation in patent quality, one can expect the number of “mediocre” patents, having neither very high quality nor very low quality, to increase relative to the number of very high quality patents. Typically, this type of mediocre patent is not low enough in quality to dissuade the patent holder from filing a patent infringement suit, but is also not high enough in quality to persuade an alleged infringer to take a license, rather than try to defeat the patent in court. Accordingly, an increase in the volume of patent litigation can be expected to result from a decline in

the level of experience and expertise in the patent bar. The increase in patent litigation business will in turn tend to lure even more patent attorneys away from the patent bar and into patent litigation practice, thereby Inside resulting in Minds: a further decline the levelofofPatent experience the The Art &inScience Law and expertise in the patent bar. So the problem feeds on itself. ISBN:1587623463 by Inside the Minds Staff Aspatore Books © 2004 (245 pages) Some recent court decisions are encouraging in that they seem to be moving more toward deference This text is an authoritative, insider’s on patent the laws to the examination process. If this trend continues, soperspective that both the holder and the public are which govern patents, the characteristics and capabilities of required to accord greater deference to the patent examination process and the resulting technical the successful practitioner and the future of patent regulation, and legal descriptions in thescale. patent, then the importance of Patent Office practice could increase on a global relative to that of litigation. This would hopefully reverse to some extent – or at least stem – the migration of younger patent attorneys, thereby increasing the quality of the patent bar while Table of Contents correspondingly decreasing the resources expended on patent litigation. Inside the Minds—The Art & Science of Patent Law

Patent Law—Complex, and Rewarding Clients who make theFrustrating, effort to identify their important inventions and invest in quality patent coverage Of andahead BeateninPaths forBetter themMousetraps will come out this type of framework, which should not surprise us. Why? Because,

in this framework, Congress, and Biomedical the Patent Patent Office Process operating pursuant to congressional legislation, Getting It Right the First Time—The would truly be the main forPatent securing Communication—The Key instrument to Success in Law inventors’ Practice rights in their inventions, which, as we noted at the outset, is what thePower framers of the Constitution seem to have intended from the start. Toolkits, Football, and the of Patents The Full-Service Patent Law Practice

Scott Bruning Stahl, a partner in the Richardson, Texas, office of Jackson Walker LLP, is a registered United States patent attorney. He has extensive experience in the preparation and prosecution of Taking Proper Care of a Client’s Valuable Assets patent applications throughout the world. His experience also includes preparation of patent validity The Patent patent War Game—Playing Win opinions, infringement to opinions, and patentability opinions, as well as adverse patent Patent Law-From Bicycles to Biotech counseling. He has worked in many technologies, including telecommunications hardware and Patents—How the System Works software, microprocessor and digital signal processor architectures, emulation and testability The Metes and Bounds of the Patent Application Process

Reflections on the Practice of Patent Law

hardware and software, semiconductor design and fabrication, robotics, medical imaging, applications Patents—Knowing the Value, Working the System for microprocessors and digital signal processors, real-time operating systems, and computer systems. Mr. Stahl has previously served as corporate patent counsel for Texas Instruments Incorporated, where he was responsible for strategic patent portfolio management, as well as an extensive patent appeals practice. He worked as an electronics design engineer at a U.S. Navy research facility while attending law school. Mr. Stahl holds BS and M. Eng. degrees in electronics engineering from the University of Louisville, both of which he earned while attending engineering school on a football scholarship. He earned his JD at Indiana University School of Law at Indianapolis.

Inside the Minds: The Art & Science of Patent Law The Full-Service Patent Law Practice ISBN:1587623463 by Inside the Minds Staff

Jason Cooper Aspatore Books © 2004 (245 pages) Alston & Bird LLPThis text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of Partner

the successful practitioner and the future of patent regulation, on a global scale.

Mechanical Patents –––– and More

Table of Contents

The basic legal requirements for an invention to be patentable are that it must be novel, it must be nonobvious, and it must have utility. In practical terms, those requirements usually can be distilled to Patent Law—Complex, Frustrating, and Rewarding mean that the invention must be different from what has been done before, and it must be different for Of Better Mousetraps and Beaten Paths a good reason. There must be a structural or procedural difference over what the industry has seen Getting Right the Firstthat Time—The Biomedical Patent Process before,Itand a reason difference makes the product cheaper, better, stronger, lighter, easier to Communication—The Key to Success in Patent Law Practice manufacture, etc. What is not necessary is that the invention offers some new feature that the Toolkits, Football, and thewould Powerrecognize. of Patents Manufacturing improvements are often overlooked by consumer or end-user The Full-Service Patent Law Practice companies when evaluating their patenting activities. Inside the Minds—The Art & Science of Patent Law

The Metes and Bounds of the Patent Application Process

I specialize mechanical patents. I chair the Mechanical Patents group of Alston & Bird. The bulk of Taking ProperinCare of a Client’s Valuable Assets ourPatent practice group’s time is spent preparing patent applications and prosecuting them through the U.S. The War Game—Playing to Win Patent and Trademark Office and counseling clients on various patent matters. Although our main focus is on mechanical inventions, our clients’ businesses often take us into technical fields beyond Patents—How the System Works those typically tagged with a mechanical label. These areas might include business methods, Reflections on the Practice of Patent Law manufacturing processes, and designs. Also, when the technology gets too removed from our core Patents—Knowing the Value, Working the System competence, we can rely on our colleagues in the firm’s Electrical Engineering/Computer Science, Chemical and Pharmaceutical, and Biotechnology Patent groups. Patent Law-From Bicycles to Biotech

When our clients get into situations in which they need an opinion about infringing another company’s patents, we’ll help them work through the issues and, if warranted, render an opinion to the client. Counseling a client with regard to the patent portfolios of others is an important and flourishing aspect of our practice. The intellectual property battlefield is becoming more dense and sophisticated, and companies need to take this aspect of their new product development very seriously. Also, should litigation become imminent, either offensively or defensively, we help counsel our clients through that process as we transfer responsibility to our partners in the firm’s IPLitigation group. Similarly, should our clients wish to enter into a license agreement or other IP-related deal, we call on our colleagues in the firm’s IP Transactional group.

Inside the Identifying Minds: The Art &the Science of Patent Law The Process –––– Invention by Inside the Minds Staff

ISBN:1587623463

Typically, inventors in large corporations encouraged to be innovative and will record their ideas Aspatore Books © 2004 (245are pages) formally with an invention disclosure record to have proof that they up with a particular idea. The This text is an authoritative, insider’s perspective on came the laws invention disclosure cangovern be crucially important from a legal which patents, the characteristics andperspective capabilities in of the case of an inventorship successful practitioner and the future of patent regulation, or priority disputethe in an interference proceeding in the future. Invention disclosures also serve a on a global scale. function as an administrative tool to manage and prioritize the inventions. Withof smaller companies, the process usually is not as structured, but an individual invention can be Table Contents

considerably more important to a smaller company. As outside attorneys, we will become more involved further upstream in the process and may even get involved in recording the first tangible Patent Law—Complex, Frustrating, and Rewarding invention disclosure. For companies that cannot afford a structured internal system, we can provide a Of Better Mousetraps and Beaten Paths valuable service by shepherding the invention from just after its conception. Inside the Minds—The Art & Science of Patent Law

Getting It Right the First Time—The Biomedical Patent Process

Communication—The to Success Patentprosecution Law Practiceattorney is to try to claim my client’s technical An important aspectKey of my job as ainpatent Toolkits, Football, and the of Patents innovation as broadly asPower I can and get the client the broadest legal coverage for its invention. When a The Full-Service Law client comes toPatent me with anPractice invention, the inventors know they have something important and that

pursuing protection worthwhile. Many times, however, they have a tough time articulating The Metes patent and Bounds of the isPatent Application Process what makes the invention unique. Our Assets job is to flesh that out. We look closely at the invention and try to Taking Proper Care of a Client’s Valuable determine what we think is novel about it. Sometimes the invention is easy to understand from the The Patent War Game—Playing to Win inventor’s original disclosure. More often, the invention, and more importantly a strategy for claiming Patent Law-From Bicycles to Biotech the invention,the comes only after a cross-examination of sorts of the inventors. The inventors typically do Patents—How System Works not adequately describe in the original invention disclosure what has been done in the past. It is necessary to determine this so that we can identify how the invention is different from what has been Patents—Knowing the Value, Working the System done before, and how it is different for a good reason. Reflections on the Practice of Patent Law

Inside the Search Minds: The Art & Science of Patent Law The Process –––– by Inside the Minds Staff

ISBN:1587623463

After getting the invention disclosure completed, we will often perform a search and try to Aspatore Books © 2004process (245 pages) determine how close the prior art is to the invention to refineon further our claim-drafting strategy. This text is an authoritative, insider’sand perspective the laws Sometimes the client fully aware of what has been done in capabilities the past in of this area, and a search is whichisgovern patents, the characteristics and the successful practitioner the future of patent regulation, unnecessary. However, a search is usuallyand a good recommendation, inasmuch as there are over 6 on a globaland scale. million U.S. patents alone, inventors are most often aware only of prior inventions that have been commercialized, not those that have been sitting on a shelf in the Patent Office. Inventors are oftenofsurprised Table Contentsby how much prior art there is. The inventor may have never seen it for sale, but it still couldthe have been patented in the past. Inside Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding

The search tells you several things. First is whether or not it is worth going any further before you even file the patent application. The search thus represents a decision point for the client on whether to Getting It Right the First Time—The Biomedical Patent Process proceed with the preparation of a patent application. The second thing a search can tell you is how Communication—The Key to Success in Patent Law Practice broad a claim you can hope to get through the Patent Office. The answer often coincides with that on Toolkits, and the Power of Patents the first Football, issue, but it gives the client a better understanding of how much protection they will get back. The Full-Service Patent Law Practice Finally, the search results let you begin formulating a claim strategy and plans for drafting your claims. The Metes of the Patent Application Process There areand twoBounds key concepts to remember with regard to the patent process. One is patentability, and Taking Proper Care of a Client’s Valuable Assets the other is infringement. When you are drafting claims, you’re concerned with patentability, and you The Patent War Game—Playing to Win want to get those claims as patentable as possible and as broad as possible. But the Patent Office Patent Law-From Bicycles to Biotech does not judge on whether or not you would infringe someone else’s patent. All the Patent Office cares about is whether your application is novel and unobvious and whether it has utility over what was done Patents—How the System Works in the past.onThe is looking Reflections the Patent PracticeOffice of Patent Law for patentability, so the examiner will not tell you whether a client will infringe prior patents of others if the client makes or practices the invention. Patents—Knowing the Value, Working the System Of Better Mousetraps and Beaten Paths

On the patentability issue you’re looking at a patent application and prosecuting that patent application as broadly as possible. On the infringement issue you are not looking at the client’s patent application, but the client’s product and whether or not the product would infringe someone else’s patent. The claimed invention and the manufactured product are often exactly the same, but the product will sometimes change slightly after the patent application is filed, and then the legal analyses can diverge. You have to keep those two different issues straight. Thus, the search also is often used to make an assessment of infringement risks. When your client comes up with an idea for a product they want to make, and a particular patent raises an infringement concern, you hope you can tell your client it won’t infringe that patent. However, that is not always the case, and your client, albeit without any copying, has a device that a court might determine infringes a prior patent. In these situations, if your client does not have an alternative design, the patent attorney’s job becomes one of looking closely at the patent and trying to determine whether there is a particular limitation of the claims. Depending on the limitation and the prosecution history of the patent pertaining to that limitation, a patent attorney can suggest to the client that it not use this feature so as to avoid the infringement of the patent. This process is called “designing around.”

Inside the Deciding Minds: The Artto & Science Patent Law The Process –––– File a ofPatent Application by Inside the Minds Staff

ISBN:1587623463

It is hard for the patent attorney private to know where the important products are for a Aspatore Books in © 2004 (245practice pages) client and where This the big competition is. We often don’t know profit text is an authoritative, insider’s perspective onmargins, the laws competitive positions, or the quality of onewhich product versus the competitor’s product, socapabilities we rely heavily on the company to tell us govern patents, the characteristics and of theThis successful practitioner the future of patent regulation, about these things. can make our job and difficult because, throughout the entire patent prosecution on a global scale. are always presented as to how much effort should be expended at process for an invention, decisions a particular point. To keep expenses reasonable, not every invention created by a company can merit going full distance with maximum energy. Table ofthe Contents Inside the Minds—The Art & Science of Patent Law

One of these decisions that are made by the client is whether to prepare and file a patent application for a particular invention. The best way for a company to start the process is to systematically Of Better Mousetraps and Beaten Paths determine which of many inventions are worth pursuing. The client knows which products are valuable Getting It Right the First Time—The Biomedical Patent Process to it and which ones will sell the most or save the most money. From there we can determine with the Communication—The Key to Success in Patent Law Practice company which cases we will file on. Some companies have patent committees that make decisions Toolkits, Football, and are the worth Power pursuing. of PatentsThis is a very useful process and prevents pursuit of inventions on which inventions The Full-Service Patent Law Practice with no real commercial merit from wasting the company’s resources. Patent Law—Complex, Frustrating, and Rewarding

The Metes and Bounds of the Patent Application Process

Even after a Care decision file anValuable application has been made, however, it is important for the company to Taking Proper of a to Client’s Assets continue communicate withtothe outside attorney as to which inventions remain important and which The Patentto War Game—Playing Win are failing to realize anyto value. The patent process can take several years, and cost/benefit decisions Patent Law-From Bicycles Biotech must be made along Works the way. Thus, if an invention looks as though it will be a dynamite innovation, Patents—How theall System it is to the company’s advantage to tell the outside attorney.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the System

Inside the Drafting Minds: The Art Science Application of Patent Law The Process –––– a &Patent by Inside the Minds Staff

ISBN:1587623463

Once the decisionAspatore to file on an invention has been made, we will draft a patent application, including Books © 2004 (245 pages) claims that are asThis broad as possible. Drafting claims perspective that are tooon broad can be counterproductive, text is an authoritative, insider’s the laws however, and thewhich claims should have athe reasonable chance being prosecuted through the Patent govern patents, characteristics andofcapabilities of the successful and the future of what patentwe regulation, Office without undue limitationspractitioner being required. In essence try to do is draw a circle around on aand global scale. our client’s invention make it as broad as possible, but still get it through the Patent Office. There two constraints on the scope of the claims of the application. One is what the invention is at Table of are Contents

its core. Usually that means the embodiment that the inventor has reduced to practice. You are entitled to a claim as broad as the invented concept is.

Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding

Of Better and Beaten aPaths Let’s sayMousetraps the inventor invented chair. A chair hadn’t been invented before, and he came up with an Getting Right the First Time—The Patent Process idea toItuse legs supporting a baseBiomedical to seat your body off the ground and armrests for supporting your Communication—The to in Success Patent Lawmany Practice elbows. He may notKey have his owninmind how legs are important, and he may come to you Toolkits, and the of Patents showingFootball, a prototype withPower four legs. When you are drafting a claim, you don’t want to limit your client’s The Full-Service Patent Law Practice claim to four legs if a particular number of legs is not in the prior art and a chair is wholly new. So you

may draftand claims that of include “at least one leg” to keep it broad for infringement purposes. But if you The Metes Bounds the Patent Application Process come Proper acrossCare priorofarta that shows a stool with three legs, then you can’t claim the invention so broadly Taking Client’s Valuable Assets as to include prior art within your claim. As such, you might have to limit the claim to having “at The Patent Warthat Game—Playing to Win least four legs,” Bicycles or something similar. Of course, you would also need to be prepared to argue to the Patent Law-From to Biotech Patent Officethe why havingWorks four legs is advantageous, and in this case you argue that a chair with at Patents—How System least four legs is more stable than one with three legs.

Reflections on the Practice of Patent Law

Patents—Knowing the Value,as Working It is never quite as simple a chairthe withSystem a number of legs. Envision that you are trying to draw a circle

around your client’s invention, but in the background you have several other circles representing the prior art that you can’t draw your circle around or overlap with. In real practice, however, it’s a Venn diagram with circles that aren’t perfectly round; they have irregular perimeters, like big amoebas. The most difficult patent applications to draft are the ones in which the inventions aren’t a major advance over the art. It is most challenging when you are in a crowded art, where many people have done things in the past, and you are trying to define a little space for yourself. I think it is easier to go into a whole new area where no one has been before, which is not often the case with mechanical inventions. You can have five prior art references that are staring you in the face that are all very close. From a technology standpoint, if you’re looking at your client’s complicated machine with many moving parts and pieces, trying to keep all that straight in your head, along with five references that are all complicated machines with moving parts and pieces, it takes great focus to articulate in writing why your client’s invention is different and better. The best you can do to profit from a patent is to get the best patent possible. The way you do that is to get the broadest claims you can, with a relatively clean prosecution history. You want to end up with the broadest claim protection available. The problem is that if you start with claims that are too broad, you end up having to make too many narrow amendments to the claims during the prosecution of the patent application with the Patent Office. That is the process by which you negotiate with the Patent Office to see how much protection you will have. If you start out with an opening offer that is too high, you can end up getting yourself into a situation in which the claims are narrower than you would like in certain respects. If you start out asking for too little, there is a chance that the Patent Office will take you up on your offer. In other words, if you start by drafting overly narrow claims and the Patent Office approves, then you won’t get the broadest protection for your client. As noted above, it is very important to do a search up front to try to determine what has been done in the area before. As a patent attorney, you aim to draft claims that cover close to what the final scope will be after prosecution. After the claims have been drafted, you draft the rest of the patent application, including preparing the drawings and drafting the written portion of the specification. You must meet various legal requirements when drafting the application, and a good patent attorney will make sure to meet all of them when the application is first drafted. It is much better for your client to get all the details worked out before the application is filed. We then consult with the inventors and make sure they’re happy with the text and the drawings of the application. Then you file the patent application with the Patent Office.

Inside the Minds: The Art & Science of Patent Law by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Prosecution Minds: The Art & Science of Patent Law The Process –––– by Inside the Minds Staff

ISBN:1587623463

Now you have a “patent pending.” You(245 waitpages) for the Patent Office to examine the application. They will Aspatore Books © 2004 typically do a search for any prior art closer the kind you found. The first action on your original This text is an authoritative, than insider’s perspective on the laws application will often begovern a rejection. Then go back to thecapabilities Patent Office which patents, theyou’ll characteristics and of with some proposed claim successfulas practitioner the future of patentThen, regulation, amendments andthe arguments to why theand rejection is improper. most often, the case will be a global scale. allowed, and the on patent will be issued. After it is issued, you have your protective patent rights. Going to the example above, the examiner might find for her first office action a chair that has Table of back Contents

only a base and four legs. To overcome this rejection, you might consider adding to the claims your client’s idea of having armrests on the chair. The claims will of course be narrowed if they now state Patent Law—Complex, Frustrating, and Rewarding “and at least one armrest,” but an amendment of this type would likely get the patent application Of Better Mousetraps and Beaten Paths allowed. Inside the Minds—The Art & Science of Patent Law

Getting It Right the First Time—The Biomedical Patent Process

Communication—The Key to Success Patent Law Practice process with the Patent Office. When you Patent application prosecution is ininessence a negotiation Toolkits, Patents start theFootball, openingand bid,the youPower openofwith an offer that you think is reasonable but that is also fair to your The Full-Service Law Practice client. You mayPatent start off with a claim that is somewhat broad. The Patent Office may allow it on the first

action, soand youBounds want toofask whatApplication you consider fairly broad protection. Often the examiner will not rely The Metes thefor Patent Process on theProper prior art youofsubmitted to the Patent Office (you are ethically bound to submit material prior art Taking Care a Client’s Valuable Assets for Patent consideration by the examiner), The War Game—Playing to Winand she will instead seek to find her own references, arguing that those Law-From references are closer than the ones you found. The examiner will then reject the claim. This is Patent Bicycles to Biotech part of the process the Patent Patents—How the System Works Office has in place to make sure they do not grant patents with claims

that are too broad. It is not the job of the Patent Office to grant every application that comes along. However, a thorough examination can be a good thing, and the more the Patent Office examines it, the Patents—Knowing the Value, Working the System stronger your patent will be, from a validity perspective, when seeking to enforce the patent against infringers. Reflections on the Practice of Patent Law

The amount of time the patent prosecution process takes varies a great deal based on the “art unit,” which is the group of examiners to which your application is assigned. In the Patent Office, all patent applications, depending on their technology type, go to different art units. Art units that deal with biotechnology inventions and electrical inventions are often slow. With mechanical-type inventions, we are often looking at 18 months for the first office action from the Patent Office after the patent application has been filed. After the allowance, you have to pay an issue fee and wait for the patent application to be printed. You can expect about two years from start to finish, on average. The Patent Office has been trying to improve its pendency, and it has been making progress in that regard. The Patent Office will currently extend the term of the patent if it takes them longer than 14 months to prepare the first office action after you file your application. The costs are quite variable, and it is difficult to estimate in advance. The cost depends on the technology, how much prior art there is, and how close the prior art is. Costs are keyed on attorney time, which is difficult to estimate.

the Minds: The Art & Science of Patent Law SuccessfulInside Patents by Inside the Minds Staff

ISBN:1587623463

Any discussion ofAspatore the costBooks of obtaining patents © 2004 (245 pages)must allow for a discussion of the benefits of patents and how a successful patent can benefit your business. In termson of the weighing This text is an authoritative, insider’s perspective laws the costs against the value of a patent,which a simple answer is a the question: How much a licensing govern patents, characteristics andof capabilities of stream can you expect from successful practitioner and thecould futuredo ofthe patent regulation, the patent? If thethe issue were that simple, anyone math. However, one part of the value of onpeople a globaloverlook scale. is the unseen exclusive effect. A patent is a legal monopoly to a patent that many exclude others from making, using, or selling your invention. What patentees never see is how much theirof competitor Table Contentshas to give up by not copying their invention. You can see how much it is worth when a competitor wants to copy invention, and you either get damages in a legal action or a licensing Inside the Minds—The Art &your Science of Patent Law royaltyLaw—Complex, from the competitor. But what a client never sees directly is how much value it obtains from Patent Frustrating, and Rewarding keeping the competitor of the area. Of Better Mousetraps and out Beaten Paths Getting It Right the First Time—The Biomedical Patent Process

We help clients with licensing agreements. We’re working on one now in which the client has a patented idea, and they want to license their invention. I think the license will be executed, and it will be Toolkits, Football, and the Power of Patents well worth the client’s investment to patent their invention. But sometimes we don’t know that until we The Full-Service Patent Law Practiceclient can be better served by making an honest, well reasoned are far down the road. A smaller The Metes as and ofitthe Patent Application Process decision toBounds whether wants to invest the time and effort in the patent process and whether the Taking Proper Care of a Client’s Valuable Assets market will justify that investment. A larger company may not have to do a very detailed analysis of the The Patent War Game—Playing tobenefits Win expenses versus the expected on an invention-by-invention basis, and can instead focus on Patent Law-From Bicyclestechnology to Biotech types. averages for particular Communication—The Key to Success in Patent Law Practice

Patents—How the System Works

As far as violations of a patent are concerned, whether you prosecute another company for violating your patent is a business decision related to the value of stopping your competitor from infringing your Patents—Knowing the Value, Working the System device. If you’re losing sales, you can easily determine whether it is worth suing someone for infringement. It is more difficult when you’re not actually manufacturing the product yourself, so you are not losing sales to the competitor. The law allows you to obtain your lost profits from infringing sales, but in no event will you get less than a “reasonable royalty.” This is designed for situations in which a patent owner is not manufacturing products, so there is a floor for a damage calculation. One way you determine a reasonable royalty is to see what kinds of licenses have been granted in the past in that technology area. You determine from that a percentage – a reasonable royalty percentage – and multiply that percentage by the number of sales by the infringer. From that you can determine what the damages would be. Reflections on the Practice of Patent Law

To be successful with a patent, it is very important to get your claims right from the start. It is very important to have a strategy behind how you lay out your claims. What will be your first claim? Would it be a combination or sub-combination? For example, in the mechanical world, a sub-combination claim might be directed solely to the head of a machine or the tool at the head of the machine. A combination claim might be the entire machine together with that head or the head together with the tool. So you have to devise a strategy to determine which of those is better to be your Claim 1. You also need to consider methods claims, and whether method should be your Claim 1. It is important to know that many times examiners do not have or take the time to read your entire patent application, so you have to assume that the most important part of the application is your opening claim. The other important part is the prosecution. Some recent decisions have placed a real premium on not making any amendments to your claims during prosecution. There are several ways you could do that. One is to interview the examiner, which I find a very effective way of advancing prosecution. Meeting with the examiner and making your arguments can truly move things along. The other strategy that is becoming more and more important is to strongly consider appealing an examiner’s decision. There is a procedure in the Patent Office whereby you can appeal to the Board of Patent Appeals and Interferences if you don’t like an examiner’s decision. It previously took a very long time to go through the board, and for that reason many practitioners do not recommend an appeal, but now it doesn’t take as long. Also, after you file your appeal brief, the Patent Office conducts a mini appeal of sorts. Three examiners get together before the case even goes to the Board of Patent Appeals and Interferences, and they make a decision as to whether the case is worth fighting. This appeal conference includes the examiner assigned to the application and two other examiners, who are usually more senior to the examiner of your case. Often the assigned examiner will come back after you file your appeal brief and say he is willing to allow the case after conferring with the other examiners. Many practitioners overlook the value of an appeal.

Inside the Minds: The Art & Science of Patent Law by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: The Art & Science of Patent Law Evaluating Inside a Patent Portfolio by Inside the Minds Staff

ISBN:1587623463

We have helped Aspatore clients in Books evaluating portfolios to figure out what is worth licensing or what may © 2004their (245 pages) be infringed by another company. This also when a company is looking at acquiring another This text is an authoritative, happens insider’s perspective on the laws company or that company’s portfolio. is often an attempt to place of a value on a portfolio of which govern patents,There the characteristics and capabilities the practitioner the the future of way patent regulation, patents, and there is successful a great deal of debateand about best to do that. The easiest way is to count on a global scale. the number of patents, but that doesn’t give you the full picture. You need to look at the claims of those patents to determine how broad they are. That is the key issue. There is no simple formula you can use to a value on a collection of patents. Table of put Contents Inside the Minds—The Art & Science of Patent Law

There are different ways of evaluating portfolios. One thing you can do is what we call patent mapping: You look at either your client’s patent portfolio or your client’s competitor’s patent portfolio. You lay out Of Better Mousetraps and Beaten Paths a visual grid, or matrix, that shows the landscape of where the different products are – in what areas. Getting It Right the First Time—The Biomedical Patent Process Once you lay this out, you go through and review all the patents and categorize them into different Communication—The Key to Success in Patent Law Practice areas. You lay it out visually, and this helps you identify where your competitor is strong or weak and Toolkits, Football, the Power of Patents where your clientand is strong or weak. As part of this exercise, we will often prepare a summary of the The Full-Service Patent Law Practice claim coverage so that informed decisions can be made on more than just the raw numbers of The Metes and Bounds of the Patent Application Process patents. Patent Law—Complex, Frustrating, and Rewarding

Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

ChallengesInside the Minds: The Art & Science of Patent Law by Inside the Minds Staff

ISBN:1587623463

The most challenging aspect of © my job(245 is drafting claims. It is a very tiresome exercise. After you have Aspatore Books 2004 pages) spent an afternoon drafting claims, you are pretty worn out. It is like playing This text is an authoritative, insider’s perspective on the laws 3-D chess – you are trying to keep all the pertinent teachings of the prior art references your head, which govern patents, the characteristics and in capabilities of trying to keep your client’s successful practitioner and trying the future of patentwhat regulation, invention straight,the and on the third leg you are to anticipate features infringers would not on a global copy to avoid infringing thosescale. claims. Trying to keep those three things straight in your head is very difficult. Table of Contents

You have to think about things your client may not have thought about. Referring to the example above, would your client be happy if you got him a patent limited to a four-legged chair when a Patent Law—Complex, Frustrating, and Rewarding competitor comes along and has a five-legged chair? You want to make sure your claims will cover Of Better Mousetraps and Beaten Paths situations in the future. Your client may never have told you a five-legged chair was possible, so you Getting It Right the First Time—The Biomedical Patent Process have to second-guess where an infringer might try to copy the essence of your client’s invention. Of Communication—The Key to Success in Patent Law Practice course, when you were drafting the claim and considering possible variations you wanted to cover, you Toolkits, theofPower of Patents also hadFootball, to keepand track the prior art having three legs (which you can’t cover) and your client’s The Full-Service Patent Law Practice preferred embodiment having four legs. Inside the Minds—The Art & Science of Patent Law

The Metes and Bounds of the Patent Application Process

Staying on top of your client’s Valuable interestsAssets is very difficult, and that is one of the things that clients Taking Proper Care of a Client’s sometimes do Game—Playing not realize youtoare missing. Often clients will tell you all about the new invention – the The Patent War Win termsLaw-From of its technical details – but they often forget to tell you which parts of their business are Patent Bicycles to Biotech important, how relates to other products, and where their profits will be made. The best way I know Patents—How thethis System Works is to keep asking these questions all the time. Any opportunity I get, I ask them how their various areas are doing and how certain inventions are performing commercially. When you make a Patents—Knowing the Value, Working the System recommendation to a client, you need to know how important the invention is to the client, so you know whether to recommend making an appeal or making narrowing claim amendments. Reflections on the Practice of Patent Law

To help us stay on top from a legal perspective, our firm has a very good publishing effort. One of the things we distribute regularly is an advisory on the law of the Federal Circuit, which is the court of appeals that has exclusive jurisdiction over patent issues. We also publish advisories on Patent Office procedures and changes in the laws and rules. I subscribe to journals and read as much as I can. It can be a challenge to keep up with all of the new technologies. Many times you ask your clients to educate you on the newest technologies, but of course they are the ones defining the cutting edge of those technologies, and you are right there as they are being invented. It helps that all patent attorneys are required to have an engineering or hard science undergraduate degree, and by our nature, most of us have a level of personal interest in learning about new technologies. You can also keep up with the technology by staying aware of your client’s patents and your client’s competitors’ patents. Advancing technology is the driving force behind new patents. Technology is a fluid force; it is always moving forward. This is the whole point of the patent system: It keeps technology moving. In return for the legal monopoly granted to you by the Patent Office, you tell the world about your invention, once your patent is published, and then others can come along and build on your invention in a way that advances technology. This quid pro quo is the heart of the U.S. patent system. The Patent Office tries to keep up and create new art units to deal with different areas of technology. The latest one is nanotechnology, which many people predict will be a very important field. It is interesting to see what the Patent Office will do with nanotechnology. My current understanding is that they will not create any new art units just for nanotechnology because it cuts across various chemical, biotech, and electrical inventions, the only difference being that nanotechnology does all these things on a much smaller, molecular scale.

Inside the Minds: The Art & Science of Patent Law Keys to Success by Inside the Minds Staff

ISBN:1587623463

To be a successful patentBooks lawyer, one (245 golden Aspatore © 2004 pages)rule is don’t be tempted by hindsight. When you look at whether an invention would have been obvious, it is very easy foron thethe examiner to take two prior art This text is an authoritative, insider’s perspective laws references and combine them patents, and saythe thecharacteristics invention would obvious. That argument should never which govern andbecapabilities of the successful future patent regulation, take you in. It is often the case practitioner that it wouldand notthe have beenofobvious to put those two references on arepeatedly global scale. together. The courts warn about the dangers of hindsight reconstruction, and it is easy to get caught in that trap. It is much easier to say “I could have thought of that” after you are told what “that”ofis.Contents The intangible nature of ideas is such that once you tell someone an idea, it is out of your Table possession, unless you patent in place to give you legal coverage. If you come up with a Inside the Minds—The Art have & Science of system Patent Law brilliant idea, and youFrustrating, tell someone it, there is no way you can get it back. You cannot be Patent Law—Complex, andabout Rewarding protected by conventional means. This is why we have the patent system in place. Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process

Many times patent attorneys will not read cited references closely enough. They will get a rejection from the Patent Office, look at the arguments cited against the application, and begin to agree with the Toolkits, Football, and the Power of Patents examiner. You should never ever do that. Always read the references closely, so you understand the The Full-Service Patent Law Practice full teachings of that patent. It may be that at one end the prior art reference suggests that you go in a The Metes that and would Boundsbe of closer the Patent Application Processapplication, but at the other end it says something direction to your client’s patent Taking Proper and Careteaches of a Client’s Valuable Assets else entirely away from what your client wants to do. If you do not read the whole thing, The War up Game—Playing to Win youPatent may give an argument. Communication—The Key to Success in Patent Law Practice

Patent Law-From Bicycles to Biotech

If your clientsthe keep coming back to you, you have been successful. If you can keep the same client for Patents—How System Works 40 years, you have been successful in getting them coverage they think is important. There is an old saying that only the bad patents get litigated – only the ones that are poorly written or have problems Patents—Knowing the Value, Working the System get litigated. If the patents you prepare do not get litigated very often, it is a good sign. It means your client’s competitors are staying out of your client’s technology. Reflections on the Practice of Patent Law

The best piece of business advice for a lawyer is don’t ever tell a client you are too busy to work on their matters, or you haven’t had a chance because you were too busy with another client’s work. The thing that many new lawyers fail to understand is that they have joined a service business. As in any other service business, the customer comes first. If that means you have to return that phone call right away, you have to do it. If it means you try to make it as easy as possible for your client to respond to you, you should do that. It is easy to forget you are in a service business. I think many law students do not realize this.

the Minds: Art & Science Trends andInside Changes inThe Patent Law of Patent Law by Inside the Minds Staff

ISBN:1587623463

Patents have become much better over the years. By better I mean there are broader claims, more Aspatore Books © 2004 (245 pages) enforceable claims. Ten years ago, patent claiming takenon asthe seriously This text is an authoritative, insider’swasn’t perspective laws as it should have been. There were manywhich claims that were narrower than they should have been. govern patents, the characteristics and capabilities of The process has become the successful practitioner and the future of patent much more sophisticated. Patents are much cleaner, broader, andregulation, more enforceable. Part of this on atoglobal scale. improvement is due the increased commercial importance of patents to companies getting them. I thinkversion="1.0" part of that might be that law firms are getting bigger all of the time. That larger group provides moreofopportunities for training and learning from senior lawyers. And the more training you have, the Table Contents betterthe youMinds—The are at drafting claims. Learning Inside Art &quality Science of Patent Law how to draft claims is an apprenticeship experience. It is not anything you Frustrating, can learn fully law school; learning how to draft good claims takes experience Patent Law—Complex, andinRewarding and working under senior lawyers. And in larger law firms, there are more senior lawyers from which a Of Better Mousetraps and Beaten Paths young lawyer can learn. I know that in my own situation I was lucky to join a relatively large firm right Getting It Right the First Time—The Biomedical Patent Process out of law school, and was able to learn my trade from a large number of experienced lawyers, which Communication—The Key to Success in Patent Law Practice helped me greatly in my practice. This trend toward increased quality, coupled with the huge increases Toolkits, Football, and the Power of Patents in the numbers of patent applications being filed, will make intellectual property considerations a The Full-Service Patent Law Practice primary factor in almost every product-related decision made by companies. The Metes and Bounds of the Patent Application Process

Taking a Client’s Valuable Assets In the Proper future,Care thereofwill be much more of a push to harmonize international patent laws. This topic has The Patent War Game—Playing Win been discussed a great deal, to and there has been some slow progress. For example, there is an Patent Law-From Bicycles to Biotech international patent application, but there is no such thing as an international patent. There are some

fundamentalthe differences between the various IP systems around the world that will prevent adoption of Patents—How System Works an international inof thePatent near Law future. One of these is the system relating to the treatment of two Reflections on the patent Practice inventors who came up withWorking an invention about the same time. In the U.S., the patent is generally Patents—Knowing the Value, the System awarded to the first inventor – that is, the person who first had a mental conception of the invention. In most other countries, the first inventor to file his patent application is awarded the patent. This issue will likely remain a sticking point for some time. Another issue is the question of a novelty grace period. In the United States, an inventor is given one year from the first marketplace introduction of an invention before a patent application for that invention must be filed. In other countries, there is no grace period, and a patent application must be filed before introduction of the invention to the marketplace. My prediction is that other countries will begin to provide for grace periods, and indeed some already have. Another issue where there is likely to be more harmonization is in the area currently called “work sharing.” Before a patent application is granted in most countries, that country’s patent office will typically have conducted a search and considered the issue of patentability. However, there is no one place where an examiner in a country can go to search all of the prior art references around the world. The U.S. Patent Office has its own database separate from the European database and separate from the Japanese database. There is no common place, and it would be very helpful if something like that existed. Other than the issues mentioned above, the patent laws in the various countries are generally trying to achieve the same goal: awarding a patent for an invention that is different from what has been done before, and that is different for a good reason. If the work product created by each patent office could be shared, whether that work product is search results or examination results, the amount of work that would have to be performed by the patent offices collectively could be reduced, and the costs to the applicants would also be reduced. Jason Cooper is chair of Alston and Bird’s IP – Mechanical Group. He concentrates his practice on patent law, primarily on procurement of patents relating to mechanical and manufacturing technologies and counseling as to the patents of others in these areas. Mr. Cooper has worked on patent matters for a variety of mechanical and manufacturing industries, including papermaking machinery, cutting and welding equipment, machine tools and related accessories, consumer and industrial containers, engineered textile products and related machinery, construction and building materials, packaging machinery, electrical connectors, composite materials, and furniture components. Mr. Cooper has served on the Board of Managers and as treasurer of the Carolinas Patent Trademark

and Copyright Law Association, and has also served on the Board of Directors of the Young Lawyers Association of the Mecklenburg Bar Association. He is a member of the Fé dé ration Internationale des Conseils en Proprié té Industrielle (FICPI) and a Councilor of the U.S. Section and a Inside the Minds: The Art & serves Scienceasofboth Patent Law member of the Commission d'Étude et de Travail for International Patents. He is also a member of ISBN:1587623463 by Inside the Minds Staff AIPPI, IIPA, AIPLA, and the Federal Circuit Bar Association and has spoken and written on topics Aspatore Books © 2004 (245 pages) pertaining to 35 USC 102(e) and the effective prior art status of U.S. patents. This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of

Mr. Cooper received his B.S. degree in mechanical engineering from Purdue University. After working the successful practitioner and the future of patent regulation, as a product engineer for Rexnord on a global scale. Corporation, he attended law school at Indiana University – Bloomington, where he graduated with his JD degree, cum laude, and received the American Jurisprudence Award in Patent Law. Table of Contents

Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law The Metes and Bounds of the Patent Application ISBN:1587623463 by Inside the Minds Staff Process Aspatore Books © 2004 (245 pages) This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of James J. Murphy the successful practitioner and the future of patent regulation, Winstead, Sechrest and Minick P.C. on a global scale. Shareholder Table of Contents

What Exactly Is a Patent?

Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, and Rewarding The patent system inFrustrating, the United States has its roots in the U.S. Constitution, which grants Congress Of Better Mousetraps and Beaten Paths the authority to provide for the protection of inventions and copyrights to advance the state of the arts Getting It Right the First Biomedical Patent and sciences. Over theTime—The last 200 years, through the Process evolution in the resulting statutes passed by Communication—The Success in Law Practice Congress, the case Key law to developed byPatent the federal courts, and the rules promulgated by the Patent Toolkits, Football, and the Power of Patents Office, we have developed a comprehensive system in which inventors who have novel and nonThe Full-Service Patent Practice obvious inventions canLaw obtain patents protecting those inventions from misappropriation by others. The Metes and Bounds of the Patent Application Process

The operative word is invention. Generally, one cannot obtain exclusive rights over an abstract idea, a law of nature, or a mathematical algorithm (which is a root cause of the controversy over the The Patent War Game—Playing to Win patentability of software and business methods). While an inventor need not have actually constructed Patent Law-From Bicycles to Biotech a working model of his or her invention, an inventor nonetheless must be able to demonstrate on Patents—How the System Works paper a useful, tangible application of the basic inventive concept. Hence, to obtain a patent, an Reflections on the Practice of Patent Law inventor must at least be able to describe the invention in written form, using drawings and text, so that Patents—Knowing the in Value, Working System one of ordinary skill the art – that the is, the same technological field – can make and use that invention. If the Patent Office finds that the invention is novel and non-obvious, and that all the formalities required for issuance of a patent have been met, then the patent-holder is given an exclusive period during which he can prevent others from making and using that invention. Taking Proper Care of a Client’s Valuable Assets

Inventions can be a lot of things, but again, not simply a raw idea. In legal terms, the invention must be “reduced to practice.” As touched on above, reduction to practice essentially means that the invention has been actually constructed – “reduced to practice” – or can be described on paper using text and drawings, or constructively reduced to practice, so that one skilled in the art can make and use the claimed invention. If the invention can be implemented in different ways, the best way of implementing the invention must be disclosed. In other words, the specification of the invention in the patent application must be “enabling” and must describe the “best mode.” For example, if the invention is an electronic “black box,” the inventor must at least be able to provide sufficient technical details in the patent application that someone in the same field of endeavor – in this case, an electrical engineer of a similar degree of expertise – can build that particular black box by taking the “teachings” of the patent application together with established knowledge in that field of endeavor. With that in mind, a patentable invention can be a product, such as a piece of telecommunications equipment, a car part, an electrical circuit, or a semiconductor chip. Alternatively, it can be a method of manufacturing a product – for example, a method for fabricating a semiconductor chip or concocting a new soft drink. An invention can also be a design – the ornamental design of the packaging of a personal computer, a chemical compound, or even a transgenic life form, such as a bioengineered organism. Inventions now also include software and business methods. A number of statutory provisions are concerned with the patentability of inventions relative to the prior art. The statutes provide the legal definitions for “prior art,” as well as for novelty and non-obviousness. The basic rule in the United States is that the first to invent is entitled to claim an invention, subject to certain rules regarding public disclosure and sales of products embodying the invention. The first to invent is the first to conceive and diligently reduce to practice the inventive principles; thus, one who conceives an invention first and diligently reduces the invention to practice will have superior rights to one who conceives the same invention later, but nonetheless reduces the invention to practice first. The USPTO has an extensive set of rules and procedures for resolving “interferences” when two different inventors claim to have arrived at the same invention at roughly the same time. These interference procedures are too complicated to discuss in detail here; suffice it to say that interferences are adversarial proceedings, similar to litigation in a court, in front of a board of USPTO

administrative judges. The root goal of the administrative board is to determine, from evidence provided by the parties (including documents and testimony presented in the form of depositions) which party was first to conceive andThe diligently to practice. Appeals from the board Inside the Minds: Art & reduce Sciencethe of invention Patent Law are taken up by the federal courts. ISBN:1587623463 by Inside the Minds Staff 2004 (245 pages) Assuming that theAspatore inventorBooks is the©first to invent, the owner of the invention – either the inventor or the Thisworks text isfor an–authoritative, oninvention the laws if an application is not filed company he or she can still lose insider’s the rightperspective to patent the which govern patents, the characteristics and capabilities of in a timely manner. For example, if the owner of an invention discloses that invention publicly or puts the successful practitioner and the future of patent regulation, that invention on on sale, a patent application must be filed within one year, or the patent rights to that a global scale. invention are permanently lost. (The constraints on filing can be even more severe in some foreign jurisdictions, where any public disclosure or sale anywhere in the world will result in a loss of rights.) Table of Contents Many times patent-savvy individuals, and even companies, lose their patent rights because patent Inside the Minds—The Art & Science of Patent Law protection was not sought in time.

Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths

Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: Patent Application PartsThe Art & Science of Patent Law by Inside the Minds Staff

ISBN:1587623463

A patent application, and consequently anypages) granted patent issuing therefrom, has four primary Aspatore Books © 2004 (245 sections: an abstract, the background, a detailed description, andona the set laws of claims. This text is an authoritative, insider’s perspective which govern patents, the characteristics and capabilities of

The abstract is intended to appear on the cover sheet of the issuedregulation, patent and typically describes the the successful practitioner and the future of patent on a global invention being claimed in a scale. single paragraph. Often the abstract paraphrases the broadest claim and is used as a search tool during the examination process to generally categorize the invention for comparison with the existing technology, or prior art. Table of Contents Inside the Minds—The Art & Science of Patent Law

In the background section, the inventor explains the problem the invention is trying to solve, as well the

Patent Law—Complex, Frustrating, and Rewarding current state of the art for that particular technical field. The detailed description subsequently Of Better Mousetraps and Beaten Paths describes in detail how to make and use the invention, establishes its utility (usefulness) in the relevant Getting It Right Time—The Biomedical Patent Process technical field,the andFirst demonstrates how the invention solves the problem previously set up in the Communication—The background section.Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents

TheFull-Service application, and the patent, ends with the claims. Claims are written in an arcane form and The Patent Lawissued Practice generally consist of single-sentence descriptions (typically having several clauses) defining the metes The Metes and Bounds of the Patent Application Process

and bounds of the invention, somewhat analogous to the title description of a piece of real property. The claims must be “supported” by, and interpreted in view of, the subject matter of the detailed The Patent War Game—Playing to Win description. In other words, an exclusive right to an invention can be claimed only to the extent that the Patent Law-From Bicycles to Biotech invention is described in the detailed description section. The claims are used during examination to Patents—How the System Works determine the novelty and non-obviousness of the invention, and to determine infringement of the Reflections on the Practice of Patent Law patent after grant. Taking Proper Care of a Client’s Valuable Assets

Patents—Knowing the Value, Working the System

the Minds: The Art & Science of Patent Law The Patent Inside Process by Inside the Minds Staff

ISBN:1587623463

Each patent application is Books examined in(245 thepages) U.S. Patent and Trademark Office (USPTO). In theory, the Aspatore © 2004 examiner reviewsThis the text background and detailed description to understand the scope and meaning of is an authoritative, insider’s perspective on the laws the claims. The examiner thenpatents, performs a characteristics search of priorand art capabilities – for example, which govern the of existing patents and the successfulthe practitioner and claims the future of patent regulation, publications – and compares “interpreted” against any relevant prior art uncovered during a globalalso scale. the search. (The on applicant has a duty of candor to the USPTO in bringing to the attention of the examiner any known prior art which the examiner may find relevant and material to the examination.) The of examiner can thereafter allow the claims as being novel and non-obvious in view of the prior art Table Contents uncovered during theArt search, or can issue rejections, on a claim by claim basis, as being anticipated Inside the Minds—The & Science of Patent Law (that is, not novel) or Frustrating, obvious in view the prior art. Claims can also be rejected on various grounds Patent Law—Complex, and of Rewarding forBetter lack of proper form. Of Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process

In the case of one or more claim rejections, the examiner issues a written Office Action, stating the grounds for rejection. The applicant must then decide whether to continue the “prosecution” of the Toolkits, Football, and the written Power of Patents arguments distinguishing the subject matter defined by the application by providing responsive The Full-Service Patent Law Practice claims from the prior art cited by the examiner. In strengthening the case for the allowance of the The Metesthe and Bounds of theamend Patent the Application Process claims, applicant may claims to avoid the prior art, so long as the detailed description Taking Proper Caresufficient of a Client’s Valuable Assets section provides support (description) of the subject matter being amended into the claims. The Patent War Game—Playing to Win Normally, the claims can be amended, but new matter cannot be added to the detailed description Patent Law-From Bicycles to Biotech without significant adverse consequences, such as a change in the effective filing date of the application. The prosecution of a patent application can involve several exchanges of Office Actions Patents—How the System Works from the examiner and subsequent responses from the applicant. The patent system provides for Reflections on the Practice of Patent Law appeals to the Board of Patent Appeals and Interferences within the USPTO, as well as continued Patents—Knowing the Value, Working the System appeals into the federal court system, primarily to the U.S. Court of Appeals for the Federal Circuit in Washington D.C. Communication—The Key to Success in Patent Law Practice

Once the examiner has deemed the invention novel and non-obvious, all the formalities have been met, and all the necessary fees required by the USPTO have been paid, the USPTO grants a patent from the examined application. A patent can still be challenged by a third- party request for reexamination in the USPTO or in a cause of action for invalidity in a federal court, should prior art not cited by the examiner subsequently come to light. For the term of the patent – which currently is 20 years from the date of filing – the patent holder is allowed to prevent others from making and using the invention, as defined by the final claims in the issued patent. In return for that right, once the patent expires, the subject matter described and claimed in the patent enters into the public domain and is free to be exploited by others. The scope of the issued claims is limited as a result of the examination process, namely, by any amendments to the claims and any arguments made to distinguish the invention over the prior art. Basically, if the applicant limits the claims to avoid the prior art or argues that the claimed invention differs from the prior art in a certain way, the applicant cannot later recapture under the umbrella of the issued claims the subject matter surrendered by the amendments or arguments. As a general rule, valid claims cannot ensnare the prior art, particularly if the applicant has admittedly narrowed his claims to define the invention as in view of the prior art. Note that although a patent permits the holder to prevent others from making and using the claimed invention, it does not necessarily mean that the patent holder is entitled to make and use the claimed invention himself or herself. For example, suppose that the invention is an improvement upon an electronic black box already protected by one or more patents owned by another party. With a subsequently issued patent, the new patentee can prevent others, including the owners of the preexisting patents on the black box, from making and using the newly claimed improvement. However, the owners of the pre-existing patents on the basic black box can prevent the patentee of the improvement from making and using the black box, despite the inclusion of the claimed improvement. Pre-existing patents to a given technology, which prevent the practice of later patents to improvements on that technology, are typically referred to as “dominating patents.”

Inside the Minds: The Art & Science of Patent Law Patent Strategies by Inside the Minds Staff

ISBN:1587623463

Once an invention is patented, patent Aspatore Booksthe © 2004 (245 owner, pages) who may be, for example, the inventor itself, a company for which the inventor works, or a partyperspective to which the has been assigned, has This text is an authoritative,third insider’s on patent the laws several different choices. The owner can the patent outright, licenseofone or more of the claims to which govern patents, thesell characteristics and capabilities successful practitionerclaimed and the invention, future of patent regulation, others to make orthe use the corresponding or practice the invention himself or herself on a global scale. and prevent competitors from appropriating the protected technology. A patent can also be used defensively, so thatencoding="ISO-8859-1"?> if a competitor claims infringement of one of the competitor’s patents, the patent
Most major technology companies, and many patent-sophisticated smaller-sized companies, have at least one patent committee for dealing with strategic patent issues. The typical patent committee Toolkits, and the patent Power of Patents engineers, marketing personnel, and others within, or even includesFootball, representative attorneys, The Full-Service Patent Law Practice outside, the company with knowledge of the technology and the target market. Communication—The Key to Success in Patent Law Practice

The Metes and Bounds of the Patent Application Process

The determinations the patent committee Taking Proper Care of of a Client’s Valuable Assets can be critical, since failure to pursue an important patent canPatent leave War a profitable technology unprotected, while pursuing an unpatentable invention can result in a The Game—Playing to Win significant wasteBicycles in resources. For example, if an engineer brings an invention to the patent committee Patent Law-From to Biotech for approval to patent, the committee must ask several critical questions. Among other Patents—How thepursue SystemaWorks things:

Reflections on the Practice of Patent Law Patents—Knowing the Value, the in System Is this an invention thatWorking to be used a product and therefore must be protected to maintain a

competitive advantage? Alternatively, is this an invention the company might not actually use in a product itself but nonetheless could be adopted by a competitor to gain an advantage against the company? Does it appear that the invention is novel and non-obvious, or do any of the members of the committee know of existing prior art that could prevent the invention from being patented? Finally, is the technology even ready for patenting? In other words, is the invention at the stage of development where the baseline concept has been proved to work, and sufficient details as to the characteristics are understood, so that an enabling detailed description can be drafted? Patent-savvy companies typically develop a strategy early on with respect to the use of their issued patents, whether that strategy is defensive or offensive in nature. Some companies have well developed licensing systems in place with respect to their patent portfolios, and license their patents, either as stand-alone properties or as part of a bundle of patents directed to a specific technological field, to generate a royalty stream. Companies often cross-license their patent portfolios, either in whole or in part, to avoid to disruptive patent lawsuits between themselves. Patent-holding companies simply hold patents as their only major assets and then seek to license their patents or pursue potential infringers for damages. The bottom line is that, whatever the strategy a company chooses to adopt, that strategy is usually at the core of that company’s overall business plan. Less patent-sophisticated individuals and companies present an entirely different set of problems. For example, when I meet with a individual inventor or a start-up company, one of the first things I ask is: “If we can get you the patent, what will you do with it?” Even a patent to a relatively non-complicated invention will cost on the order of $10,000 to $15,000 to prepare, prosecute, pay all the USPTO fees, and generally push to issue. This is a great deal of money to spend without a plan to exploit the invention if a patent is granted. Simply obtaining a patent clearly does not mean the patent owner can approach Company XYZ and say, “Here is my invention. Please pay me to license it.” A patent is not instant gold; a patent’s worth is coextensive only with the scope of the claims, as well as the desire of another party to practice inventions within the scope of those claims. The USPTO is filled with issued patents that never realize a significant economic return. On the other hand, a patent being infringed can be asserted in court. Regardless, the costs of enforcing an infringed patent can be exceedingly high, especially if the case is forced to proceed

through trial and appeal. As a rough estimate, even a “small” patent lawsuit – one, for example, involving a non-complex invention and only a few parties and witnesses – can cost between $500,000 and $1 million through costs areArt steep, even for largest and most patent-sophisticated Insidetrial. the The Minds: The & Science of the Patent Law companies, although it is often possible to find patent counsel who will take the case on a contingency ISBN:1587623463 by Inside the Minds Staff fee basis, if the conditions are right. Aspatore Books © 2004 (245 pages) This for textan isinvention an authoritative, insider’s perspectivetoonitsthe laws Inventor enthusiasm is not directly proportional patentability. Often inventors which govern patents, the characteristics and capabilities of approach me withthe “exciting” ideas that nonetheless turn out to be obvious extensions of known successful practitioner and the future of patent regulation, technologies. Furthermore, on a global many scale. enthusiastic inventors have not done the necessary work to develop a concept into an actual invention. In either case, it may not be worthwhile in time, expense, or effort, for either the inventor or the patent attorney to pursue patent protection for the putative invention. Table of Contents

Inside the Minds—The Artother & Science Patent Law Therefore, among the thingsofI typically vigorously probe during an initial interview with a small Patent Frustrating, and Rewarding client Law—Complex, is whether the proposed invention meets the standards to obtain a patent. I always suggest a Of Better Mousetraps andprior Beaten pre-filing search of the art Paths in the field to at least get an estimate of the probability of obtaining a

patent.ItAn inventor’s earnest belief that “this Patent has notProcess been done before” is simply not strong enough Getting Right the First Time—The Biomedical grounds to proceed.Key Additionally, attempt to determine how the inventor conceived of his or Communication—The to SuccessI always in Patent Law Practice her invention. More once, of I have encountered inventors who have attempted to cash in on the Toolkits, Football, andthan the Power Patents work of others through derivation. The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process

In the end, the question for everyone involved or potentially involved with the patenting effort is whether the overall patent strategy and the specific facts surrounding the invention point to the eventual The Patent War Game—Playing to to Win realization of reasonable value the patent owner. Taking Proper Care of a Client’s Valuable Assets Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds:Patent The Art &Application Science of Patent Law Building a Successful by Inside the Minds Staff

ISBN:1587623463

The key to writingAspatore any patent application to understand what the invention actually is. An invention Books © 2004 (245ispages) can become obscured in a morass of technical minutiae requiredontothe fully provide an enabling detailed This text is an authoritative, insider’s perspective laws description. Moreover, seemingly is one single invention may in factofbe a set of related, but which what govern patents, the characteristics and capabilities the successful practitioner the future of patent regulation, nevertheless independent inventions, whichand should be claimed separately. A patent attorney must be on aofglobal able to identify each thesescale. inventions, write an appropriately enabling specification, and draft correspondingly broad claims. At the same time, the claims cannot be so broad as to ensnare the prior art, or so narrow as to limit the full scope of the protection the patentee is entitled to. Table of be Contents Inside the Minds—The Art & Science of Patent Law

A good background section is also necessary to build a successful patent application. A good background explains what was done before the advent of the invention by those in the same Of Better Mousetraps and Beaten Paths technological art to solve a given problem, identifies the limitations on these prior art solutions, and Getting It Right the First Time—The Biomedical Patent Process also provides other baseline technical information that will allow a smooth transition to the solution Communication—The Key to Success in Patent Law Practice provided by the invention on reading the following detailed description. Patent Law—Complex, Frustrating, and Rewarding

Toolkits, Football, and the Power of Patents

The Patent description Law Practiceof the invention, including text and drawings, is typically the most An Full-Service enabling detailed

difficult portion of the of application draft. Specifically, The Metes and Bounds the PatenttoApplication Process the difficulty in drafting the detailed description is directly proportional toClient’s the complexity the invention. For a simple invention that is nonetheless novel Taking Proper Care of a Valuable of Assets andPatent non-obvious, writing the specification can be a relatively easy task. However, the more The War Game—Playing to Win complicated theBicycles invention, generally the more details that must be included in the detailed description Patent Law-From to Biotech to ensure thatthe those skilled in the art can clearly understand and consequently make and use that Patents—How System Works

invention. In such an instance, the patent attorney must work closely with the inventor to develop the required information, including the illustrations of the physical properties of the invention and the Patents—Knowing the Value, Working the System textual description that describes the functional, as well as physical, details of the invention. The drafting process often involves sitting down and spending several hours with the inventor, going over step-by-step what the invention does, how it works, and how it is built. The detailed description is basically a technical white paper about the invention around which the application is constructed. Reflections on the Practice of Patent Law

Drafting claims is an art, not a science. When drafting a claim, a patent attorney must particularly point out and distinctly claim the invention in the broadest, most generic terms possible without “ensnaring” the prior art. For example, if an electronic black box implements novel and non-obvious Functions 1, 2, and 3, the patent attorney aims to write a broad claim that generically says, “A black box that does 1, 2, and 3.” However, if a similar prior art black box implements functions 1, 2, 3, but the new black box implements functions 1, 2, 3, and 4, then the claim must include Function 4, so the claim is distinguishable from – that is, it does not ensnare – the prior art box embodying Functions 1, 2, and 3.

Inside the Minds:Patents The Art & Science of Patent Law The Most Challenging by Inside the Minds Staff

ISBN:1587623463

Patent specifications for semiconductor chips and other electronic circuits and systems can be difficult Aspatore Books © 2004 (245 pages) to draft because of the cuttingedge electronics and perspective physics technology involved. Generally, the stateThis text is an authoritative, insider’s on the laws of-the-art patent applications harder tocharacteristics write becauseand the capabilities patent attorney has to make sure there is which governare patents, the of thedetail successful and the future of patent sufficient technical in the practitioner detailed description to allow one of regulation, ordinary skill in the art to make and global scale. use the invention.on In aparticular, the patent attorney must take special care to ensure that all the t’s are crossed and the i’sencoding="ISO-8859-1"?> are dotted to ensure the patent is not attacked during litigation as being non
Conversely, it can be very easy to write a specification for a fundamental or simple invention, but writing the claim can nevertheless be difficult, since care must be taken to avoid the prior art. It may Communication—The Key to Success in Patent Law Practice also be difficult to argue with the patent examiner why such a basic invention is novel and non-obvious, Toolkits, Football, andofthe of Patents although simplicity thePower invention is not a test for patentability – novelty and nonobviousness are still The Full-Service Patent Law Practice the baseline. Getting It Right the First Time—The Biomedical Patent Process

The Metes and Bounds of the Patent Application Process

As already briefly, Valuable the requirement Taking Propermentioned Care of a Client’s Assets of disclosing the “best mode” ensures that if an invention canPatent be implemented in multiple ways, the best of those ways is described in the patent. In other words, The War Game—Playing to Win the inventor cannot conceal from the public any features of the invention that could provide a Patent Law-From Bicycles to Biotech competitive advantage the patent holder after the patent has expired. For example, if the applicant Patents—How the Systemto Works

knows that the exemplary black box from above can be acceptably made of plastic, but that a steel construction is superior, then the steel embodiment must be described in the patent for purposes of Patents—Knowing the Value, Working the System disclosing best mode. Intentional concealment of this fact is essentially fraud on the public, and not only may render the patent unenforceable in subsequent litigation, but may also expose the asserting patent holder to counterclaims for patent misuse and antitrust violations, among other things. (Sometimes inventors who are unsophisticated about patents attempt to waffle on disclosure of the best mode to complicate design-around of the patent by competitors or to protect the disclosure of trade secrets; in this case the protection of trade secrets is inconsistent with protection of the invention by patent). Reflections on the Practice of Patent Law

Inside the Minds: The Art & Part Science of Patent Law Patent Attorney: Part Lawyer, Engineer by Inside the Minds Staff

ISBN:1587623463

Patent attorneys are certainly part-engineer, or part-scientist, and part-lawyer. Part of my success as a Aspatore Books © 2004 (245 pages) patent attorney comes from my prior practice as an engineer: I speak engineering language, and, This text is an authoritative, insider’s perspective on thethe laws with some effort, which can understand the state-of-the-art technology being expounded by the inventors. govern patents, the characteristics and capabilities of future of patent regulation, Actual practice asthe ansuccessful engineer practitioner also allows and me the to appreciate the problems faced by the engineer on aprocess, global scale. during the invention such as the need to invent to overcome some technical obstacle, the pressure to develop that invention rapidly to meet production requirements, and the need to maintain an advantage over the competition. Consequently, I can try to make engineers feel comfortable on Table of Contents their own terms. Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding

I think a good patent attorney is truly an engineer or a scientist at heart, and is therefore honestly interested in what the client is doing. I get excited about the inventions on which I file patent Getting It Right the First Time—The Biomedical Patent Process applications. Probably one of the most rewarding things about my practice is that I get to see top-notch Communication—The Key to Success in Patent Law Practice engineers and scientists dream up great inventions that not only become patented, but also provide Toolkits, Football, and the Power of Patents significant improvement over the existing technology to everyone’s benefit. Nevertheless, I know of The Full-Service Patent Law Practice many patent attorneys who are simply in the patent field for the money or career status. In my opinion, The Metes and Boundsattorney of the Patent Application Process however, if a patent cannot get excited about the technology he or she is working with, that Taking Care a Client’s Valuable Assets patentProper attorney is of clearly not practicing patent law to its fullest extent. Of Better Mousetraps and Beaten Paths

The Patent War Game—Playing to Win

On theLaw-From other hand, practicing patent law can be challenging because most patent attorneys can no Patent Bicycles to Biotech longer exclusively practice their engineering or scientific specialty on a daily basis. For example, Patents—How the System Works

though I attempt to keep up with the technology through self-study, I do not design electronic circuits every day, or regularly analyze new technology from a purely engineering point of view. Moreover, a Patents—Knowing the Value, Working the System patent attorney cannot overly focus his or her practice to a narrow field of technology without narrowing their practice base. Even if a patent attorney represents only one company, that company may one day need assistance in obtaining patents, for example, on a piece of electronic hardware for implementing a particular task, and the next day on a piece of software for a implementing a completely different task. In other words, patent attorneys must be able to switch gears quickly and accept that they will not have sufficient time to completely immerse themselves in the technology of their current patent application before having to move to and focus on a new technology in their next patent application. Reflections on the Practice of Patent Law

One essential skill, therefore, is to be able to learn quickly. This starts with having good relationships with inventors. Good scientists and good engineers, if you speak their language, are usually good teachers. Obviously, the patent attorney must do his or her homework before meeting with the inventor. I find that when I am well prepared, most of the very best inventors I know become excited about discussing their invention, especially if they recognize the prestige, and often, financial rewards, concomitant with receiving a patent.

the Minds: The Art & Science of Patent Law The FutureInside of Patent Law by Inside the Minds Staff

ISBN:1587623463

I honestly believeAspatore the patent system in (245 the pages) United States actually does spur inventors to continue to Books © 2004 invent. Many inventors are unabashedly spurred on by the idea that theylaws can patent an invention and This text is an authoritative, insider’s perspective on the eventually become rich.govern The same is true larger companies that areoflooking for that competitive which patents, the with characteristics and capabilities the the future ofmany patentindividuals regulation,and companies do not edge that will lead tosuccessful increasedpractitioner profitability.and Unfortunately, on aofglobal scale. recognize the value patents until either their unprotected technology is adopted by a competitor, or a competitor obtainsencoding="ISO-8859-1"?> patents that adversely affect their business.
The patent system in the United States is not perfect. The USPTO is deluged under a morass of patent applications – good and bad. There are simply too many patents to be examined and not Patent Law—Complex, Frustrating, and Rewarding enough examiners to examine them. (Examiners are also engineers and scientists, and USPTO must Of Better Mousetraps and Beaten Paths compete with higher-paying private- sector employers for qualified personnel.) The mandate of the Getting It Right the First Time—The Biomedical Patent Process USPTO to examine patent applications and appropriately grant patents to novel and non-obvious Communication—The Key to Success in Patent Law Practice inventions is not getting any easier, either, as new technology being developed. Inside the Minds—The Art & Science of Patent Law

Toolkits, Football, and the Power of Patents

The Full-Service Patent Law Practice I have been most impressed with the European Patent Office (EPO). In Europe, professional salaries

areMetes more and or less balanced the private and government sectors. This allows the EPO to hire The Bounds of the between Patent Application Process very good patent versed in their technical fields. Their searches for prior art are Taking Proper Care examiners of a Client’swell Valuable Assets generally extensive, andtotheir The Patent more War Game—Playing Win Office Actions are typically more thoughtful. By contrast, it is generally knownBicycles that thetoexaminers in the USPTO are subject to a quota system and essentially must Patent Law-From Biotech dispose of – the accept or reject – a certain number of applications per calendar quarter. In my opinion, Patents—How System Works this too often leads to sloppy examinations where the examiner does not perform a sufficiently deep prior art search or misapplies the prior art that is uncovered to the claims – or both.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the System

My hopes are that the USPTO will remain sufficiently funded and that the USPTO improves the training of their new examiners. Of course, this is a difficult task because examiners must be trained in both legal and technical principles. But good training is not impossible – new patent attorneys in the private sector are typically trained in the same, and sometimes painfully difficult, process. Currently examiners are trained to perform examinations at the USPTO academy, often right out of university. Then they are assigned as an assistant to a primary examiner, given an office, and immediately assigned cases. The primary examiner may well also have a heavy workload. As a result, many assistant examiners are basically examining right out of the academy and right out of engineering school, with little practical experience in industry. This lack of training can be frustrating from the experienced patent attorney’s point of view. For example, I often see claim rejections contending that an invention is anticipated or obvious in view of some prior art reference, even though any experienced patent attorney would immediately recognize that the claimed invention was substantially different from the technology disclosed in the cite. This reflects, I believe, merely a lack of thorough technical training of the examiners, as well as a limit on the time allowed to sufficiently examine the application before disposition. In any event, I believe that the United States patent system is critical to our prosperity and national security. To this end, the United States must increase its number of skilled engineers and scientists to continue to compete in the global technology marketplace. At the same time, some of those top-line engineers and scientists must break out slightly and become patent attorneys, patent agents, or patent examiners. Incentives must be put forth to ensure that our patent attorneys, patent examiners, and patent agents stay up-to-date with the latest in technology, as well as the rules and regulations of an continuously evolving U.S. patent system. The USPTO must be protected against under-budgeting, an overly complex bureaucracy, and a mass-production mindset. If we are reasonably successful doing so, the United States will continue to be an engine for the development and exploitation of state-of-theart technology. As a final note, many younger patent attorneys drift away from the art and science of patent application preparation and prosecution toward the seemingly more glamorous and lucrative patent litigation practice. As they go off to practice litigation, the number of pure patent attorneys, especially in large firms, decreases. But many of us continue to love the patent practice, continue to be excited as technology marches along, and strive to be competent engineers and scientists, as well as competent attorneys. James J. Murphy has practiced in the electrical engineering arts for more than 20 years, both as an

attorney and as an electrical engineer. As an attorney, Mr. Murphy applies his technical expertise in the areas of international and domestic Inside the Minds: The Art & Science of Patent Law patent preparation and prosecution, patent litigation, patent licensing, and client counseling.

ISBN:1587623463 by Inside the Minds Staff Aspatore Books © 2004 (245 pages) A graduate of the University of Southern California, with a BS degree in electrical engineering, and a ThisCollege, text is an authoritative, insider’s perspective onMr. the Murphy laws graduate of Whittier with a JD degree, magna cum laude, is a shareholder in the which govern patents, characteristics capabilities of Dallas office of Winstead, Sechrest andthe Minick P.C. He isand registered to practice before the United successful practitioner and the future of patent regulation, States Patent andthe Trademark Office, and is a member of the Texas Bar, the Institute of Electrical and on a global scale.

Electronic Engineers, and the International Bar Association. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Taking Proper Care of a Client’sISBN:1587623463 Valuable Assets by Inside the Minds Staff Aspatore Books © 2004 (245 pages) Stephanie Seidman This text is an authoritative, insider’s the laws Heller Ehrman White & McAuliffe Co-Chair Patent & perspective Trademark on National Practice Group which govern patents, the characteristics and capabilities of

the successful practitioner and the future of patent regulation, on a global scale.

Patent Law 101

Table of Contents

A patent is a legal document that creates a property right giving the owner of a patent the right to exclude others from making, using, selling, or importing that which is claimed in the patent. Claims are Patent Law—Complex, Frustrating, and Rewarding the consecutively numbered recitations at the end of the patent that recite the subject matter of this Of Better Mousetraps and Beaten Paths right. A claim in a patent gives the owner the right to exclude others from doing certain things; it does Getting It Right the First Time—The Biomedical Process not afford the owner the right to do anything.Patent A patent contains a disclosure that teaches how to make Communication—The Key to Success in Patent Law Practice and use that which is claimed. At the time of drafting, a patent application is a prospective document Toolkits, Football, and the that teaches what can bePower doneofbyPatents virtue of what the applicant has done and described in the The Full-Service Law Practice application. ThePatent claims circumscribe and describe what can be done by virtue of the disclosure. Once The and Bounds Patent the Application Process an Metes application issues of asthe a patent, invention is defined by the claims of the patent; each claim in a Taking Care a Client’s Valuable Assets patentProper defines an of invention. Inside the Minds—The Art & Science of Patent Law

The Patent War Game—Playing to Win

Critical to understanding patent law and patent rights are the recognition and understanding that a patent does not give an owner the right to practice an invention, but gives the owner the right to Patents—How the System Works exclude others from making, using, selling, or importing the invention (that is, that which is claimed). Reflections on the Practice of Patent Law There is a common misconception that if you get a patent, you can do anything you want with the Patents—Knowing the Value, Working the System technology. For example, a patent covering a drug does not give you the right to make that drug. Rather, it gives you the right to prevent others from making, using, selling, or importing that drug or any other drug within the scope of a claim of the patent. Patent Law-From Bicycles to Biotech

Under U.S. patent laws the inventors are the owners of the patent. A company or institution generally includes provisions in employee agreements for assignment of all inventions to the institution. Thus, in the U.S. inventors typically are obligated by virtue of agreement to assign their rights to their employers. All inventors or their assignees are joint owners of the patent. Absent an agreement to the contrary, joint owners have the right to exploit their ownership of the patent without consulting the other owners. In light of this, it is important for a company or an institution to have agreements from employees and potential inventors in place early and to have agreements between joint owners. In addition, absent an agreement, each owner has the same patent rights with respect to the patent without obligation to any other owner. One owner can license the competitor of another owner or can dedicate the patent to the public. Consequently, where there are joint owners, an agreement between and among such owners also is important. Generally, to minimize disputes, agreements should be completed before a patent application is filed, and preferably before the joint research is undertaken. A patent application should be drafted with claims that are broader than any specific exemplary embodiment. A carefully drafted patent application not only describes what has been done and what can be done by virtue of what has been done, but will do so in a way that carves out an area of exclusivity to provide the owner with a strategic position. Describing the invention that is claimed requires an understanding of the prior art (public knowledge) in the field of the invention. It is not enough to conclude that an embodiment of invention is novel; it is also essential to figure out how broadly it can be claimed and to carve out the area of exclusivity. Such strategic considerations are of utmost importance.

Inside the Minds: The Art & Science of Patent Law Patenting Strategy by Inside the Minds Staff

ISBN:1587623463

Any patent strategy involves consideration of two aspects: patentability of an invention and freedom to Aspatore Books © 2004 (245 pages) practice it. To assess these issues the owner has to analyze the on prior and patent landscape to This text is an authoritative, insider’s perspective theart laws determine the potential area ofpatents, exclusivity to developand a strategy for practicing around the patents which govern the and characteristics capabilities of and the future of patent regulation, of others, such asthe bysuccessful designingpractitioner around others’ patents and/or licensing patents or determining that onnot a global scale. others’ patents are enforceable. These are separate considerations. Often an invention can be patentable, but theencoding="ISO-8859-1"?> owner does not have freedom to practice it.
Inside the Minds: The Art & Science of Patent Law Patentability by Inside the Minds Staff

ISBN:1587623463

To be patentable,Aspatore the technology be pages) novel, not known before, and in some way unobvious. Books © must 2004 (245 Whether something is inventive is determined in the context of what else is already out there. Novelty is This text is an authoritative, insider’s perspective on the laws relatively easy; something either is newthe or itcharacteristics is not. Unobviousness is more which govern patents, and capabilities of subtle. the successful practitioner and the future of patent regulation, on a global scale. Essentially, one assesses what others have done by reviewing publications and other public disclosures. If the technology at issue is different, and is not suggested by what has been done by others, then the technology is inventive. Almost anything that is novel can be described and claimed in Table of Contents such a way that conveys that it is unobvious. The issue then becomes a business decision to determine Inside the Minds—The Art & Science of Patent Law whether it is worth the time, effort, and considerable expense of the patenting process. Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: Art & Science of Patent Law Freedom toInside Practice or The Operate by Inside the Minds Staff

ISBN:1587623463

Assessment of freedom practice requires an understanding of what the patent owner (client) intends AspatoretoBooks © 2004 (245 pages) to do and a determination of what others’ patent(s) a technology This requires analysis of This text is an authoritative, insider’sinperspective on cover. the laws what is covered by the other patent(s) whether patent covers which govern patents, to thedetermine characteristics andacapabilities of a client’s technology. This the successful andpatents, the future patent regulation, analysis has nothing to do with practitioner a client’s own butofonly what the client actually is making, using, on aThis global scale. selling, or importing. distinction is important to understand. It is best to do this analysis as early as possible to avoid developing technology that cannot be Table of Contents

practiced or that will require prohibitively expensive licenses or a high risk of litigation. If this assessment is performed early in development of a technology, the direction of research and Patent Law—Complex, Frustrating, and Rewarding development can be planned or redirected so that the commercial products or services are not Of Better Mousetraps and Beaten Paths covered by the patents of others and, absent issuance of intervening patents, the owner of the patent is Getting It Right the First Time—The Biomedical Patent Process free to sell its products or services. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

Toolkits, Football, the through Power ofthe Patents Key to the abilityand to sort strategic issues and to carve out an area of exclusivity and to The Full-Service Patent Law Practice assess freedom to practice is the patent practitioner. The patent practitioner must be well versed in

patent lawand and patentofstrategy. The patent practitioner The Metes Bounds the Patent Application Process must understand a client’s technology. If either of these attributes is aweak, theValuable intellectual property strategy is in jeopardy. Taking Proper Care of Client’s Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Patent Practitioners by Inside the Minds Staff

ISBN:1587623463

Practice before the U.S. Patent (thepages) PTO) requires passage of the patent bar exam; it does not Aspatore Books Office © 2004 (245 require a law degree. To qualify to take the one must at least 30 hours of course This text is an authoritative,examination, insider’s perspective on have the laws work in a scientific discipline. coursework is determined by theofU.S. Patent Office. Generally which governQualifying patents, the characteristics and capabilities the successful practitioner the future of patent regulation, anyone with a bachelor’s degree in biology,and chemistry, physics, or other hard science will qualify. a global scale.bar exam are patent agents; attorneys who do so are patent Nonlawyers who on pass the patent attorneys. Table of Contents

The exam assesses minimal competence and tests an understanding of U.S. patent law and U.S. Patent Office rules; it does not assess understanding of the subtleties of patenting strategy. Such Patent Law—Complex, Frustrating, and Rewarding understanding can take years to learn. Generally, even for the brightest individuals, it takes at least six Of Better Mousetraps and Beaten Paths years of practice to have the breadth of experience and sufficient exposure to a full panoply of issues Getting It Right the First Time—The Biomedical Patent Process to practice without supervision by others; it takes even more exposure and experience to have the Communication—The Key to Success in Patent Law Practice perspective to give broad-based, forward-thinking, comprehensive strategic advise. In addition, Toolkits, Football, and the Power Patents although the PTO requires onlyof30 hours of coursework to qualify to take the patent bar, to draft and The Full-Service Patent Law Practice prosecute patent applications in complex technologies, such as biotechnology, including chemistry, an The Metes and Bounds of the Patent Application Process is needed to appreciate and learn the complex advanced degree or equivalent scientific experience Taking Proper Care of a Client’s Valuable Assets technologies. Inside the Minds—The Art & Science of Patent Law

The Patent War Game—Playing to Win

To beLaw-From an effective patenttopractitioner (patent attorney or patent agent), an understanding of the Patent Bicycles Biotech underlying science in a technology is needed. To draft and prosecute a patent application, the Patents—How the System Works

practitioner must understand the invention and the prior art. The particulars of a technology and an invention can be learned by working with the client. To communicate with the client and understand the Patents—Knowing the Value, Working the System invention requires a strong scientific education and an aptitude to quickly learn new technologies. A large number of patent attorneys and agents have PhDs. Many law firms with patent prosecution practices and companies with in-house legal departments actively recruit scientists, whom they train and encourage to attend law school, often helping defray the costs of school. Reflections on the Practice of Patent Law

In addition to understanding the technology, it is imperative to keep abreast of current case law and to recognize that there will be changes in the law and policies that the PTO implements in its capacity as a governmental agency. The patent application and examination process takes years. It is rare for an application to issue as a patent in under two to three years. In many technologies the backlog at the PTO before the application is examined is more than two years. So not only must there be a recognition that a patent application is a prospective document, but it also must be drafted with an eye to the fact that the standards and rules change. The case law and rules in effect at the time of drafting and filing an application will change or evolve by the time the application is examined and enforced. Obtaining a patent is a rather expensive endeavor, particularly in the biotechnology and chemical areas. Ultimately, the largest expense is the fees associated with worldwide filing and maintenance of patents; the cost of the attorney for drafting, filing, and prosecuting the application, however high it seems, is a fraction of the eventual overall cost. Worldwide filing of a patent application, which includes translation fees, can cost as much as $1 million. Nationalization in Europe, for example, can be $300,000. This does not include the yearly annuities. Generally, it takes at least about 100 hours to draft a patent application in biotechnology, typically less for pharmaceutical applications, mechanical, electrical, and software applications. A first filing, such as a first application that covers a company’s platform technology, can take longer. Each application, however, generally does not result in a single patent, but many patents, each directed to different aspects of the technology. For a variety of reasons that are beyond the scope of this chapter, the importance of a comprehensive first filing cannot be over-emphasized. A first filing must carve out the area of exclusivity and provide basis for generic and specific claims. Upon filing, an application becomes an asset whose value exceeds the cost for its preparation. Skimping on the drafting costs will denigrate the value of this asset.

the Minds: The Art & Science of Patent Law The Patent Inside Application Process by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

Drafting anThis Application text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of

The first filing, particularly for an early-stage company or for any company or individual venturing into a the successful practitioner and the future of patent regulation, new area, can beon thea most It must carve out the right of exclusivity and provide the basis for globalimportant. scale. generic coverage. With few exceptions, the only time one can obtain generic claims throughout the world is based upon the first filing. In light of this, it is important to file comprehensive first applications Table of Contents and to update them as quickly as possible if there are new developments. If a first application is Inside the Minds—The Art & Science of Patent Law drafted hastily, carelessly, or incompletely, a company can lose valuable intellectual property rights. Patent Frustrating, and Rewarding BeforeLaw—Complex, drafting an application, it is important to understand the context of the patent – not only whether Of Better Mousetraps and Beaten Paths the technology is novel, but also how to carve out a route of exclusivity from what is already known. Getting It Right the First Time—The Biomedical Patent Process

As noted above, a patent a prospective document that should teach one of skill in the art Communication—The Key toapplication Success in is Patent Law Practice (the area of technology) how toofmake and use what is claimed. A failure to meet these requirements Toolkits, Football, and the Power Patents canFull-Service result in a failure obtain a patent based on the date of the filing or a loss of an issued patent or The Patent to Law Practice theMetes early date therefore in litigation. Great care is required in drafting patent applications. The drafter The and Bounds of the Patent Application Process

must look to the future because a patent application is a forward- looking document. It is based on what the inventor or inventors can do by virtue of what they have done or described, not necessarily on The Patent War Game—Playing to Win what they have done. Taking Proper Care of a Client’s Valuable Assets Patent Law-From Bicycles to Biotech

Patents—How the System Works must encompass subject matter that is novel and unobvious. A patent A claim in a patent application Reflections the Practice of Patent Law the claimed subject matter and teach the skilled artisan how to applicationonmust adequately describe Patents—Knowing the is Value, Working the System make and use what claimed. An adequate written description must demonstrate that the inventor(s)

had possession of what is claimed (that is, understood or appreciated the claimed subject matter). The application also must disclose that which the inventor believes is the “best mode” on the day of filing for practicing what is claimed. Information from the client or inventor is critical for drafting a patent application. What do they do? What do they plan to do? The client simply cannot provide too much information. Drafting involves searching on the Internet and in databases to gather information. The more information provided to the drafter, the more complete the application will be. The most difficult aspect in the drafting processing is getting to the critical information. Information is provided in bits and pieces; the picture emerges gradually. A complete patent application describes every aspect of what the client has done, and then looks forward as to what the client will be able to do in the future. The patent lawyer’s job is to describe it as completely as possible, without relying on any trade secrets. When working with early-stage emerging companies, it is not clear what will be important to them in the future. The drafting process can be compared to assembling a puzzle. At an initial meeting with a client or inventor, bits and pieces of the invention are provided. Over time, with the provision of more information, searching, and learning of the technology, the pieces come together to create a picture of the subject matter to be claimed. At some point what differentiates the client’s product or process from what came before emerges; at that point the application can be drafted to carve out a niche for the client. The information-gathering process is somewhat like climbing a mountain: It is slow going at first and difficult to keep moving. But at some point it gels, and drafting is all downhill from there. The patent practitioner cannot ensure that clients will profit from their patents. But drafting a thorough, comprehensive application that carves out an area of exclusivity and prosecuting it with care, as discussed below, can ensure that the patent provides an area of exclusivity and is enforceable. For early-stage and emerging companies, it is also important that the application is favorably reviewed by others in any due diligence process to aid in fundraising and valuation of the company.

Filing an Application After the information gathering and drafting process, an application is filed. Depending on strategic goals, it can be filed either as a provisional application or a regular application. If a client believes the technology and claims of a patent application are commercially or otherwise

valuable immediately, a utility application is filed. If the product or process will be valuable for a longer time or in the future, or both – such as a pharmaceutical, for which the approval process takes years, a provisional application, provides anArt additional yearofofPatent patentLaw protection at the end of the patent Insidewhich the Minds: The & Science term, is filed. ISBN:1587623463 by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ProvisionalThis Applications text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of successful practitioner and the futureapplications of patent regulation, Since June 1995,the it has been possible to file provisional in the United States. These onthe a global applications afford ownerscale. the opportunity to file an application, but not have the 20-year patent termversion="1.0" begin to toll. A provisional application, however, is no different substantively from a regular application. To provide a priority date, it must meet all statutory requirements. If a patent application is Table of Contents filed as provisional Art application, is Patent not examined; it automatically lapses one year after it is filed. It Inside thea Minds—The & Scienceitof Law can beLaw—Complex, converted to aFrustrating, regular utility Patent andapplication Rewarding or a utility application claiming priority thereto within a year of filing. The decision whether Of Better Mousetraps and Beaten Pathsto file a provisional or a utility is generally related to the urgency with which one wants to obtain a and/or the need to maximize patent term. Filing a provisional Getting It Right the First Time—The patent Biomedical Patent Process application extends the patent term by a year, but also lengthens the time until an application is Communication—The Key to Success in Patent Law Practice examined. Toolkits, Football, and the Power of Patents

The Full-Serviceapplication Patent LawisPractice A provisional not any less rigorous than a regular patent application, but it does not get The Metes and Bounds of the Patent Process examined by the Patent Office andApplication does not have to be as “pretty.” The provisional application will not Taking Proper Care a Client’s Valuable Assets be examined, but of it will be reviewed during examination of a subsequent application that claims priority The Patent War Game—Playing to litigation Win to the provisional and/or during involving any patent that claims priority to the provisional to Patent Law-From Bicycles Biotech assess the priority rightstoit creates. Patents—How the System Works

Once filed, the provisional application can sit at the Patent Office for up to a year. During the course of that year, a series of provisional applications can be filed that capture any ongoing developments. It is Patents—Knowing the Value, Working the System important to understand, however, that any new material that is added will be accorded the date on which it is added; any intervening disclosures can be prior art against any claims based on the material. In most countries outside the United States, these disclosures will be novelty and/or inventive step bars against the added subject matter. In the United States, the prior art effect of such disclosures is more complicated, but can bar patentability. At any time up to one year after filing, a utility application or utility applications that claim priority to the provisional application or provisional applications, can be filed. If no utility is filed, the provisional application cannot be relied upon for a priority date. Reflections on the Practice of Patent Law

Utility Application After filing a utility application, it is examined. Generally because of the backlog at the PTO, the application is not examined for at least 14 months, and often not for two or more years. As with provisional applications, additional applications, called continuation-in-part (CIP) applications can be filed to capture ongoing developments. Again, any new material added will be accorded the date of filing of the CIP application. There are numerous strategic considerations to consider before filing a CIP; often it is advisable to file a new application that just claims the new material so that a priority claim, which shortens patent term, is not needed. The utility application sits in the Patent Office for a while. The Patent Office is supposed to examine applications within 14 months after filing, but the Office is very behind. Sometime during the next year or so after filing, we get the first response back, which is almost always rejection. In fact, if it is not a rejection, there is a problem because it likely means the Patent Office did not look at it very closely – there is always something to reject. Then there will be a back-and-forth between my office and the Patent Office as we try to obtain allowance of claims in the application. The length of time varies with technologies, but rarely is less than two or three years and routinely continues for five to eight years or more. The first Office Action by the PTO often restricts the application by dividing the claims into groups. The applicant must elect one group for examination on the merits and can file remaining claims in one or more divisional applications. In the first substantive review (first Office Action on the merits), the PTO generally rejects most, if not all, of the claims. It is not necessarily advantageous for the PTO to allow an application on a first Office Action because issues not raised and resolved during prosecution are likely to become bases for challenge during any litigation when a patent is enforced.

The back-and-forth between the applicant and the PTO, called patent prosecution, creates a record that can limit interpretation of claims, but if done with care can strengthen any issued patent and result in broadly interpreted claims. This exchange between and the PTO can continue for a Inside the Minds: The Art & Sciencethe of applicant Patent Law number of years by until a decision to allow some or all claims is reached. Furthermore, provisional and ISBN:1587623463 Inside the Minds Staff other continuing applications can be filed; each has its own prosecution history. Aspatore Books © 2004 (245 pages) This text is anprocess authoritative, perspective on patent the laws Thus, the patent prosecution can beinsider’s long and costly. If the application has been drafted which govern patents, the characteristics and capabilities of with an understanding of the prior art, and if the claims properly distinguish over the prior art, the successful practitioner and the future of patent regulation, eventually the application willscale. be allowed. Although many view the prosecution process as a on a global negotiation process, such viewpoint is not necessary correct or advantageous. The Patent Office’s role is to raise the issues, but it is the practitioner’s role to identify and carve out what is novel and Table of Contents unobvious and supported by the disclosure of the application. Absent identification of art not identified Inside the Minds—The Art & Science of Patent Law prior to filing or unforeseen issues, the practitioner, not the Office, should determine the claims that Patent Frustrating, and Rewarding issue.Law—Complex, Asking the examiner or accepting narrower claims than is warranted may result in earlier Of Better Mousetraps and Beaten Paths issuance, but always decreases the rights of the patent owner. Getting It Right the First Time—The Biomedical Patent Process

Furthermore, obtaining because theLaw PTO missed an issue is not desirable. Missed issues will Communication—The Key atopatent Success in Patent Practice be raised in litigation. A thorough airing of all issues, hopefully with an outcome desired by the Toolkits, Football, and the Power of Patents applicant, forms the basis for a strong patent. Fooling the patent examiner is not advantageous. A The Full-Service Patent Law Practice strategically patent practitioner, therefore, will be able to assess the claims to which an applicant The Metes andsavvy Bounds of the Patent Application Process is entitled and determine when to narrow or amend claims and also when to remind the Patent Office of its role in the process.

Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech

Costs and Fees

Patents—How the System Works Reflections on the Practice of Patent Law

Not only are there fees for the time the patent practitioner spends on a case, but there are also many out-of-pocket fees. In selecting clients, it is important to determine whether the client has the financial wherewithal to sustain this process. Once the process begins, it is difficult for the patent practitioner to withdraw. Not only are there rules of ethics regarding withdrawal, but the patent practitioner also becomes intellectually and emotionally invested in an application. Unpaid bills rapidly accumulate, becoming a problem for the client and the practitioner.

Patents—Knowing the Value, Working the System

Formal Requirements There are a variety of formalities with which an applicant must comply. Among these are execution of a Declaration by the inventors, which acknowledges among other things that they have read the application, that they are the first inventors of the subject matter of the application, and that they have a duty of candor with the Patent Office. In addition, when the inventors are obligated to assign their rights, assignments are recorded at the Patent Office to give third-party notice of the ownership. Ownership is important for foreign priority rights; in foreign countries the patent applicant is the owner, not the inventor. Also, when a third party evaluates a patent portfolio, ownership is among the first items reviewed.

Duty of Candor The U.S. patent laws and rules impose an ongoing duty of candor on the applicant and anyone associated with the prosecution of the application; this includes the patent practitioner. These individuals and entities have a duty to disclose any information that is material to examination of the application. Breach of the duty of disclosure, if accompanied by a finding of materiality and intent, can result in a finding of inequitable conduct, which renders any patent in which such finding is made unenforceable. Once a patent issues, such conduct cannot be cured. So the compliance with the duty of disclosure is among the most important activities of the patent practitioner during pendency of a patent application. Citable information includes prior art of which they are aware, disclosures by others (whether under confidentiality or not), results that contradict a claim in the application, art cited in related U.S. and international and national stage cases, information submitted in grants, identification of co-pending applications that are related or have common owners or inventors, and Office Actions in related cases that raise issues pertinent to the application at issue. Virtually any information that comes to the attention of these individuals relevant to the application should be cited. The patent practitioner should

have procedures in place for reviewing art and other information to permit ongoing submission of information. The client should be forthcoming with all material and information that may be relevant. Inside the Minds: The Art & Science of Patent Law

If there is a discussion with a client about whether something should be cited, it probably should be ISBN:1587623463 by Inside the Minds Staff cited. This duty pertains from the day a utility application is filed until the day the patent application Aspatore Books © 2004 (245 pages) issues as a patent. Such information must be considered, even if it comes to the attention of these This text of is an on theit laws individuals after payment theauthoritative, issue fee. Asinsider’s difficult perspective as it may seem, is more advisable to pull a case which govern patents, the characteristics and capabilities of back from issue to cite information than to let a case issue and have this problem lurking in the the successful practitioner and the future of patent regulation, background that can enforcement of the patent. on a preclude global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

theand Minds: The Art &Examiners Science of Patent Law The Patent Inside Office Patent by Inside the Minds Staff

ISBN:1587623463

Like patent practitioners, must meet minimal educational criteria. Many have Aspatorepatent Books examiners © 2004 (245 pages) advanced degrees. Patent examiners are assigned technologyoncenters, This text is an authoritative, insider’stoperspective the lawswhich are further divided into art units. Based on govern the subject matter claims, applications are assigned to each art unit and which patents, the of characteristics and capabilities of practitioner and the future patent regulation, then to examinersthe forsuccessful examination. Patent examiners are of required to move a requisite number of cases global scale. primarily based on the speed and efficiency with which they every two weeks on anda are promoted accomplish this. encoding="ISO-8859-1"?>
An examiner has a limited number of hours to examine each case from beginning to end. In fact, patent examiners are limited a surprisingly few number of hours, typically eight to 15 hours, depending Patent Law—Complex, Frustrating, and Rewarding upon experience and the technology, for the entire prosecution, including searching and drafting Office Of Better Mousetraps and Beaten Paths Actions, conducting interviews, and any other tasks until the case is allowed, abandoned, or sent to the Getting It Right the First Time—The Biomedical Patent Process Board of Appeals for review. Examiners cannot ruminate on issues, but must act quickly to review an Communication—The Key to Success in Patent Law Practice application and raise issues to be addressed or rebutted by the patent practitioner. They learn to do Toolkits, Football, Power Patentsof cases simultaneously. To achieve their productivity goals, it their jobs quicklyand andthe work on aofcouple The Full-Service Patent Law Practice is essential to put the burden on the applicant to resolve issues. To be effective as an examiner, the The Metes and Bounds of thewhat Patent examiner must appreciate is Application patentable Process to know when a case is allowable. This knowledge is Taking Care of a Client’s Valuable Assets gainedProper from experience and from an understanding of the law and Patent Office policy. Many The Patent War Win examiners areGame—Playing inexperienced to and do not have this perspective. Faced with this shortcoming, the Patent Law-From Bicyclestotoreject Biotech examiner will continue cases, rather than risk making an error. Inside the Minds—The Art & Science of Patent Law

Patents—How the System Works

Many patent practitioners worked as examiners for a number of years and consider the experience invaluable training. They can review an application with an examiner’s eye, avoiding common pitfalls Patents—Knowing the Value, Working the System and readily addressing certain rejections. They can convey to the Office why claims are patentable. It isn’t surprising that examiners are often recruited out of the Patent Office. Reflections on the Practice of Patent Law

Inside the Minds: Art & Science of Patent Law Hiring in the Patent LawThe Field by Inside the Minds Staff

ISBN:1587623463

To work in the patent law field, important to have an aptitude for science and to learn science Aspatore Booksit©is2004 (245 pages) quickly. As a result, patent law is often a career choice for experienced scientists and less experienced This text is an authoritative, insider’s perspective on the laws people with advanced seekingthe an characteristics alternative career outside theoflab. Going through the rigors whichdegrees govern patents, and capabilities theselects successful practitionerwho andhave the future of patent regulation, of obtaining a PhD for individuals the ability and training to quickly learn new a global scale. experience quickly becomes out-of-date, but the skills learned can technologies. Theonactual scientific be invaluable for aencoding="ISO-8859-1"?> patent practitioner. With the fast pace of technological advances, patent
Currently, there is a shortage of patent attorneys, particularly talented associates. Consequently, law firms have found that the best way to develop competent patent attorneys is to hire scientists who Getting It Right the First Time—The Biomedical Patent Process would like to go to law school. Heller Ehrman and many other firms, general practice and patent Communication—The Key to Success in Patent Law Practice boutiques, pay all or part of law school tuition. While pursuing their legal training, these scientists work Toolkits, Football, the Power of Patents for law firms andand receive hands-on training. Of Better Mousetraps and Beaten Paths

The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

ChallengesInside the Minds: The Art & Science of Patent Law by Inside the Minds Staff

ISBN:1587623463

One of the biggest challenges patent is working with inventors and companies to Aspatore Booksfor © 2004 (245practitioners pages) translate their work and ideas into patents. The challenge is two-fold: obtaining the information from This text is an authoritative, insider’s perspective on the1)laws a client to properly draftgovern a patent application and 2) working the client which patents, the characteristics andwith capabilities of effectively. It is an art the successful futureas ofscientists patent regulation, learned over time. Most patent practitioner practitionersand arethe trained and do not necessarily have the on a global scale. social skills or training. Second, drafting an application for the Patent Office is always a challenge because the issues they Table of Contents

focus on change constantly. As a result, when an application is drafted in year one, the issues a Patent Office focuses on will be different from those issues they will focus on in years three, four, and five, Patent Law—Complex, Frustrating, and Rewarding when the application is examined. Inside the Minds—The Art & Science of Patent Law Of Better Mousetraps and Beaten Paths

Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Insidein thePatent Minds: The Art & Science of Patent Law Staying Ahead Law by Inside the Minds Staff

ISBN:1587623463

Patent law and practice are constantly changing. Aspatore Books © 2004 (245 pages) As the trend to worldwide patent harmonization proceeds, U.S. patent laws and rules have changed.on the laws This text is an authoritative,significantly insider’s perspective which govern patents, the characteristics and capabilities of

To keep an edgethe in the industry, the practitioner must keep abreastregulation, of case law, changes in the laws successful practitioner and the future of patent onimplications a global scale. and rules, and the of such changes. This can be accomplished by reviewing cases on a daily or weekly basis and through continuing education. In addition to legal aspects, the patient practitioner needs to keep up with advances in technology. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: The Art & Science of Patent Law The FutureInside of Patent Law by Inside the Minds Staff

ISBN:1587623463

There have beenAspatore many changes the(245 patent Books ©in 2004 pages)laws during the last 20 to 25 years. There have been significant and fundamental changes in the during the past on eight ten years. In 1995, the U.S. This text is an authoritative,laws insider’s perspective thetolaws changed the termwhich of a patent 17 years from issuance tocapabilities 20 years from governfrom patents, the characteristics and of filing the priority date. successful practitioner and rules the future of patent regulation, More recently, thethe United States has instituted by which patent term is adjusted. These changes on a global scale. and many of the others require adjustment and reevaluation of patenting strategies and the way firms process applications. Table of Contents

Patent costs are increasing now, forcing us to file patents more infrequently. Moreover, the increased cost per claim will change the style of the approach for patent lawyers. While the patent law field Patent Law—Complex, Frustrating, and Rewarding changes quickly and dramatically, what does not change is the importance of patents and patent Of Better Mousetraps and Beaten Paths applications for companies. For many companies their intellectual property is their most valuable Getting It Right the First Time—The Biomedical Patent Process asset. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

Toolkits, Football, and is the of Patents Stephanie Seidman a Power shareholder and currently co-chairs the Patent & Trademark National Practice The Full-Service LawWhite Practice Group at HellerPatent Ehrman & McAuliffe LLP. Dr. Seidman’s intellectual property practice

emphasizes and chemical patentProcess prosecution with a focus on strategic counseling. The Metes andbiotechnical Bounds of the Patent Application Taking Proper Care of a Client’s Valuable Assets

Dr. Seidman has a BS in chemistry and physics from William Smith College and an MS in chemical physics and a PhD in molecular biology/biochemistry from Indiana University. She received her JD Patent Law-From Bicycles to Biotech from The Catholic University of America, Columbus School of Law, and is admitted to practice in the Patents—How the System Works District of Columbia and before the U.S. Patent & Trademark Office. The Patent War Game—Playing to Win

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law The Patent War Game—Playing ISBN:1587623463 to Win by Inside the Minds Staff Aspatore Books © 2004 (245 pages) Kenneth R. DeRosa This text is authoritative, insider’s perspective on the laws Schnader Harrison Segal & an Lewis LLP which govern patents, the characteristics and capabilities of Partner

the successful practitioner and the future of patent regulation, on a global scale.

A Guide Through the System

Table of Contents

The patent system, in my view, creates a market for ideas. The market provides protection for ideas and allows people to buy, sell, license, and trade those ideas. The market allows inventors to extract Patent Law—Complex, Frustrating, and Rewarding value from their useful ideas. It may be an invention, a product design, or any type of idea you have Of Better Mousetraps and Beaten Paths that can be protected. Virtually any way you can extract value from an invention becomes feasible Getting It Right thesystem. First Time—The Biomedical Patent Process under the patent Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

What this meansand to me a patent attorney is that I am a guide. I guide inventors and patent owners Toolkits, Football, the as Power of Patents through the treacherous of patent law.Patent law contains many pitfalls for the unwary, and The Full-Service Patent Lawforest Practice patent lawyers serve of as the thePatent guidesApplication to avoid them. A patent attorney’s main function is providing advice The Metes and Bounds Process or legal opinions Taking Proper Careto ofbusiness a Client’s people, Valuablewhich Assetsthey can rely upon to make informed business judgments. The Patent War Game—Playing to Win

The purpose of the patent system is to give fair and reasonable protection to inventors – while avoiding excessive overreach or abuse. At the same time, once the patent attorney gets the inventor what he is Patents—How Works entitled to forthe hisSystem idea, you also want to prevent the competitors of the inventor, or the company that Reflections on the Practice of over-reaching Patent Law employs the inventor, from in respect to their own patents. Patent Law-From Bicycles to Biotech

Patents—Knowing the Value, Working the System

In short, I make sure everybody plays by the rules and plays nicely.

Inside the Minds: The Art & Science of Patent Law Patent Portfolio Evaluation Process by Inside the Minds Staff

ISBN:1587623463

The biggest problem in evaluating patents occurs when a small company or a first-time company Aspatore Books © 2004 (245 pages) attempts to evaluate their portfolio. Typically, the company has made before it even gets in This text is an authoritative, insider’s perspective on themistakes laws touch with a patent attorney orpatents, someone is knowledgeable. The patent which govern thewho characteristics and capabilities of law is so fraught with successful the future of patent regulation, problems that thethe first time out,practitioner companiesand generally make mistakes that affect the value of their on a global scale. patent rights or portfolio. Under circumstances, we figure out what was done before the patent was actually filed Table of those Contents

(assuming there are patents filed). Problems arise especially when what was done, such as disclosures to the public, occurred more than one year before the filing date. In this case, rights can be Patent Law—Complex, Frustrating, and Rewarding irretrievably lost. Inside the Minds—The Art & Science of Patent Law Of Better Mousetraps and Beaten Paths

Getting It Right the First Time—The Patent Process We trace through the process andBiomedical make sure the patent is valid – that the inventor and the company Communication—The Key to Success in Law Practice did everything they were supposed toPatent do to obtain a valid patent. To determine the scope of the Toolkits, Football, the Power of Patents history to determine what transpired in the patent office. We protection, we goand through the prosecution The Full-Service Law examine Practice the prior art, and get a feel for what type of protection these claims read the claim Patent language,

may be entitled to, assuming they Application are valid atProcess this point (based on the published claim). The Metes and Bounds of the Patent Taking Proper Care of a Client’s Valuable Assets

In addition, we determine the extent of the patent portfolio and establish whether the patents are valid. Then we determine the scope of the claims in relation to what is in the prior art or public domain, and Patent Law-From Bicycles to Biotech that gives us an idea as to what type of patent protection the company may have. Once we have Patents—How the System Works determined the scope and validity of the patent portfolio, it is then possible to gauge the value of the Reflections on the Practice of Patent Law portfolio using standard valuation techniques. The Patent War Game—Playing to Win

Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Filing Strategy by Inside the Minds Staff

ISBN:1587623463

Developing a strategy for aBooks particular product line, or invention often depends on the client’s Aspatore © 2004client, (245 pages) budget and how aggressively the client’s competitors are pursuing protection. More importantly, This text is an authoritative, insider’s perspective on patent the laws developing a sound strategy depends on how aggressively the competitors are enforcing their which governalso patents, the characteristics and capabilities of successful practitioner and the future of patent regulation, own patent rights.the This determines how aggressive your client will have to be to stay competitive in the on amany globalaggressive scale. industry. If there are competitors with lots of patents, you and your client need to play the same ballgameencoding="ISO-8859-1"?> the competitors are playing. I call this the nuclear warhead theory of patents.
The worst position a company can find itself in is being in an industry that has many patents when it has none. At that point you are forced to be very risk-averse. Whereas, normally a company might Patent Law—Complex, Frustrating, and Rewarding want to closely emulate a successful product or product line, a company playing it safe is forced to Of Better Mousetraps and Beaten Paths stay further away from these potential opportunities. In contrast, the competitor will frequently have no Getting It Right the First Time—The Biomedical Patent Process qualms about copying your successful products. Obviously, this is not a favorable situation to be in. Communication—The Key to Success in Patent Law Practice You cannot skate on the line of coming close to someone’s successful product. Instead, you have to Toolkits, Football, andyou the do Power of Patents closely watch what because you are at risk of being threatened with a charge of patent The Full-Service Patent Law Practice infringement. Not only will you have nothing to counter this threat with, other than the defense of nonThe Metes and (which Boundsisofalways the Patent Process infringement riskyApplication with today’s juries), but also you will become ensnared in the Taking Proper Care of a Client’s Valuable Assets expensive game of patent litigation. messy, time-consuming, and astronomically Inside the Minds—The Art & Science of Patent Law

The Patent War Game—Playing to Win

So theLaw-From idea is either to stop producing the (profitable) product or pay a lot of money to lawyers. The Patent Bicycles to Biotech way to avoid the all this is toWorks develop a suitable patent filing strategy before this problem rears its ugly Patents—How System

head. In my opinion, the most efficient filing strategy actually depends on what the competitors are doing and how much you have to be there. You want to have enough patents in your portfolio to stake Patents—Knowing the Value, Working the System out your own property rights to avoid encroaching competitors. A good filing strategy includes offensive as well as defensive patents and other intellectual property rights, including utility patents, design patents, trade dress rights, trademark protection, and copyrights, to name the most common. Reflections on the Practice of Patent Law

That is basically the big arsenal you want at your disposal. Ideally, you will never have to use it. But it is always there when you need it. The trick is determining how you should expend whatever budget you might have to obtain the most protection in the most efficient manner. This is where the experienced patent attorney earns his or her keep.

Inside the Minds: The Art & Science of Patent Law The Process by Inside the Minds Staff

ISBN:1587623463

Pre-filing considerations certain Aspatoreinclude Books ©making 2004 (245 pages) there are no public disclosures that are not controlled, such as through non-disclosure agreements, outsideperspective the company your client. Then make sure the This text is an authoritative, insider’s on – the laws scientists or engineers the invention properly inand some type of notebook. which document govern patents, the characteristics capabilities of the successful practitioner and the future of patent regulation, a global scale. Next, get an earlyon evaluation of the scope of whatever patentability protection may be available. This usually takes the form of some initial disclosure to determine whether the idea is patentable. Assuming the idea is worth pursuing at that point, the next step is probably the most important: The inventor must Table of Contents get an adequate disclosure or description of the invention to the patent attorney. The most difficult Inside the Minds—The Art & Science of Patent Law problem we have as patent attorneys is trying to extract that information from the inventor. They are Patent Law—Complex, Frustrating, and Rewarding busy pushing iron out the door; they have products to sell; and it is hard for them to sit down and think Of Better Mousetraps and Beaten Paths about what their invention is and getting it down in writing. Getting It Right the First Time—The Biomedical Patent Process

Communication—The Key in Patent Law Practice Once that information is to in Success the attorney’s hands, he can begin the job of drafting the patent application, Toolkits, Power is, of Patents figuring Football, out whatand the the invention identifying it, and determining what is patentable, then drafting the The Full-Service Patent Law Practice application to get the broadest scope of protection, and filing the patent application. This is the most

difficult part the process canApplication be made Process even more difficult if the inventor has not provided a good The Metes andofBounds of the and Patent invention disclosure. borrow an old Assets computer science saying: “Garbage in equals garbage out.” Taking Proper Care of aTo Client’s Valuable The Patent War Game—Playing to Win

After the patent is filed, most of the hard work is done – if the attorney has done his job properly and patent claims have been broadly drafted to both avoid the prior art and provide a broad scope of Patents—How the System Works protection. The claims determine the success of the patent process from here on out, for the most Reflections on the Practice of Patent Law part. The outcome is almost predetermined. Patent Law-From Bicycles to Biotech

Patents—Knowing the Value, Working the System

Once the patent applications are filed, they tend to sail through the patent office if your claims have been drafted properly. At this point, you want to avoid undue prosecution within the patent office. Problems with your claims inevitably give rise to objections and questions from the patent examiner, forcing you to rebut, argue, and clarify your position and claim language. This leads to a common pitfall: making a large record within the Patent Office as you argue with the patent examiner as to the scope of the patent and whether it is patentable. Ideally, you want to say as little as possible during prosecution. Get in and get out as quickly as possible. If there is anything new to address that the examiner uncovered, which you were not aware of in the pre-filing stage, or if any amendments or arguments have to be made, you want to keep them to a bare minimum at that point. You also want to show the examiner that the path of least resistance is to pass your application to issue, rather than for the examiner to maintain his position of unpatentability. The idea is to present an application that is well drafted and lets the examiner feel confident passing it to patent. He or she wants to pass it; you just have to give the examiner something he can rest his hat on. If the patent attorney has done his or her job properly, the application should sail through the Patent Office as long as you have a reasonable examiner. If the examiner is being unreasonable, my advice is to impress upon him that you are more than willing to go to the Board of Patent Appeals to seek allowance of the application if he maintains his unreasonable position. The threat of having to draft an appeal brief for a dubious position tends to put the examiner in the right frame of mind for passing the application to issue.

Inside the Part Minds:of TheProcess Art & Science of Patent Law Most Challenging by Inside the Minds Staff

ISBN:1587623463

The hardest part Aspatore of this process getting disclosure from the inventor early in the process. One Books ©is2004 (245 the pages) reason I need it early is that the information gets me up to speedon with technology. It also gives me This text is an authoritative, insider’s perspective thethe laws a good idea, fromwhich the inventor, about what he thinks is patentable and forces him to describe govern patents, the characteristics and capabilities of the successful the future of patentisregulation, everything he knows about the practitioner technology.and After all, the inventor an expert in the field. He has to onthe a global scale. I need to draft a good patent application, and it all hinges on the provide me with all information disclosure. As I stated above, it’s the “garbage in/garbage out” theory: If he gives me garbage, I can almost guarantee it will take me a long time to get the application into good shape. Table of Contents Inside the Minds—The Art & Science of Patent Law

The ability to quickly get up to speed on a new technology is difficult. I have to become an expert as quickly as possible, especially when I take on a new client. We need a big brain dump from the Of Better Mousetraps and Beaten Paths inventor, and I have to quickly understand what he has told me. That gives me the ability to do my job Getting It Right the First Time—The Biomedical Patent Process as the patent attorney and to properly protect him. Part of that is identifying patentable features. I ask Communication—The Key to Success in Patent Law Practice myself: What are the features that make this new, complicated idea patentable? The device itself Toolkits, and the of Patents might fillFootball, three rooms of Power equipment, and I have to find those features and strip away everything else The Full-Service Patent Law Practice from it. It is a matter of identifying the patentable features and claiming them properly while avoiding The and or Bounds of the Patent theMetes inclusion superfluous fluff. Application Process Patent Law—Complex, Frustrating, and Rewarding

Taking Proper Care of a Client’s Valuable Assets

Routinely, I give the inventor atoform The Patent War Game—Playing Win our company has developed over the years that tries to extract as muchLaw-From information as possible with as little effort as possible from the inventor. Usually that is sufficient, Patent Bicycles to Biotech but especiallythe when I amWorks drafting software applications, the programmers, for some reason, have a Patents—How System

difficult time describing their inventions adequately. Usually, I get one small part of the big picture, and then I have to probe for the rest of the details. It usually is not a pretty process. I try to formulate Patents—Knowing the Value, Working the System questions that will provoke responses from them that unearth more information. It is usually an iterative process; as they provide more and more piecemeal information, I have more information I can use. It’s expensive for them – I understand that – but it’s an important step in the process. Reflections on the Practice of Patent Law

Inside Minds: The Art & Science of Patent Law Patent Cases tothe Avoid by Inside the Minds Staff

ISBN:1587623463

If we find out an inventor’s design© 2004 is not(245 patentable, it makes sense to refuse the case. It’s rare that Aspatore Books pages) something is not This patentable, but there are times when the application definitely not be patentable, text is an authoritative, insider’s perspective on thewill laws such as when there is agovern dead-ringer piece of prior art theand inventor is not aware of. The other instance which patents, the characteristics capabilities of the the successful practitioner the future patentbar regulation, occurs when I know inventor has done and something thatofwould him from getting a patent – for onmade a global scale. disclosure more than one year before coming to me. instance, if he has a public In those types of situations, I won’t file the application knowing that. But these are exceedingly rare Table of Contents

cases. Usually we have some wiggle room to avoid these problems and still file the patent application. It may be a very slim chance, but sometimes the inventor wants to take that chance, and once in a Patent Law—Complex, Frustrating, and Rewarding while something I don’t think is patentable turns out to be. Inside the Minds—The Art & Science of Patent Law Of Better Mousetraps and Beaten Paths

Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside to the Make Minds: The & Science of Patent Law Methodologies theArtProcess Easier by Inside the Minds Staff

ISBN:1587623463

The most important thing is to make the application examinerfriendly. The examiner wants to allow the Aspatore Books © 2004 (245 pages) application. TheyThis call text it theisPatent Office; they don’t it the Rejection Office. The system is an authoritative, insider’scall perspective on the laws completely tailored for the examiner to the pass the application issue for aofvalid patent. The examiner is which govern patents, characteristics andtocapabilities thetosuccessful and are the entitled future oftopatent regulation, actually mandated do this bypractitioner law. Inventors patents if their inventions meet the tests of on a global scale. patentability. You of don’t want to make rookie mistakes or glaring errors that jump out at examiners. Usually these are Table Contents

mistakes in the abstract – little formalities that aren’t important to anybody but the patent attorneys and the examiners. But don’t do things that stick out like sore thumbs. Draft your claims cleanly, with a Patent Law—Complex, Frustrating, and Rewarding reasonable scope, and avoid claims riddled with indefinite language. It’s like pornography in a way: I Of Better Mousetraps and Beaten Paths don’t know how to explain what a good claim is, but I know it when I see it. It takes years to learn how Getting It Right the First Time—The Biomedical Patent Process to do it, and you have to see a lot of examples, but eventually the attorney does learn how to do it. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

Toolkits, Football, and the of Patents A bad claim will ruin the Power chances of successfully getting the patent. No matter how well you know The Full-Service Patent Practice patent law, if you are aLaw bad claim drafter, you will make problems for yourself. Another useful

technique is toBounds avoid having too many claims Process in the application because that is not examiner-friendly. It The Metes and of the Patent Application just creates work for them. Taking Proper more Care of a Client’s Valuable Assets The Patent War Game—Playing to Win

You want to present arguments that are directed to your claim. You don’t want to present arguments for features that are not found in the claims. When I was an examiner, one of the most prevalent things Patents—How the System Works other examiners and I saw were pages and pages of arguments about features that were not in the Reflections on the Practice of Patent Law claims. Our response would be: “That’s all well and good, inventor (or inventor’s attorney), but those Patents—Knowing things are not in the the Value, claim. Working You wentthe onSystem for ten pages and created all kinds of prosecution, but the arguments are basically invalid.” Patent Law-From Bicycles to Biotech

Another thing is to try to show the examiner your game face. You have to inspire confidence in him that you know what you are doing and that he can rely on at least some of your judgment. You also have to impress on the examiner that no matter what he says, if he is saying something wrong, you will call him on it and that you will go to the Board of Patent Appeals, whose members are very inventor- friendly. Make sure you not only show him the game face, but also prosecute your application wisely. After the examiner has issued his first office action – usually it rejects most of the claims, even if it’s a straw-man argument – you have to be ready with your final response. You have to be ready to go with nice, cleanly drafted claims and your arguments all set to go to appeal if you have to. The better examiners and the ones who have some experience know when you are ready to go to appeal, and hopefully they will not maintain ridiculous arguments for too long at that point. They also know that if you are not ready to go to appeal, they can do whatever they want at that point. It’s a game between you and them. If they know they can maintain shaky arguments for a long time, the best way to successfully prosecute the application is to get the application ready for appeal as soon as possible, preventing the meta-games between you and the examiner.

Inside the Minds: The Art & Science of Patent Law Patent Impediments by Inside the Minds Staff

ISBN:1587623463

The success of the patentBooks hinges© on Aspatore 2004how (245 good pages) the disclosure is. The most difficult patents to work on are the ones for which I have received rotten disclosures, where on all the I have is a “cocktail napkin” This text is an authoritative, insider’s perspective laws description. Evenwhich worsegovern is getting a cocktail napkin description where there patents, the characteristics and capabilities of are large, complicated, the successful practitioner the of into patent regulation, multi-man-year software applications that Iand have tofuture convert a 50-page document in two days to on adate. global scale. avoid a potential bar Whatever the technology is, I can get up to speed quickly, and I will know how to prosecute. But Table of Contents

success truly hinges on the initial disclosure and how well the inventor has been able to describe his invention.

Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths

Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Patent Valuation by Inside the Minds Staff

ISBN:1587623463

In the valuation ofAspatore patents,Books I quote Teddy “Speak softly and carry a big stick.” The patent is © 2004 (245Roosevelt: pages) often the big stick. And when your competitor gets a little too close, sometimes you have to hit him with This text is an authoritative, insider’s perspective on the laws that stick. which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, global scale. You don’t want toon beatoo aggressive and sue everybody, but I try to rely on an old chess maxim, too: “The threat is actually stronger than the execution.” The threat is usually enough to keep the competitors at bay. With your nice arsenal of patents surrounding you, your competitor knows the Table of Contents damage you can cause and tends to keeps a healthy distance from your commercial interests. Inside the Minds—The Art & Science of Patent Law Patent Frustrating, I had aLaw—Complex, client in a situation whereand the Rewarding client and the competitor had patents on very similar products. Of Better Mousetraps and Beaten Paths The competitor was infringing our patent, and my client did not want to pursue action at that time Getting It Right the First Time—The BiomedicalThe Patent Process was producing this infringing product and because patent litigation is very expensive. competitor Communication—The to Success in started Patent Law Practicea similar product, and the competitor thought was very successful.Key Then my client producing Toolkits, Football, the Power of So Patents he infringed oneand of their patents. each competitor believed the other was infringing. The company The Law with Practice thatFull-Service challengedPatent my client infringement would not back down, and eventually the only way we got

himMetes to back was assert our patent against him. The anddown Bounds ofto the Patent Application Process Taking Proper Care of a Client’s Valuable Assets

With patents, you either pay me now or pay me later. You go through the expense of getting patents for yourself, or you pay me later to defend you against questionable patent lawsuits.

The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works

Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law As the Patent World Turns by Inside the Minds Staff

ISBN:1587623463

Changes that have occurred in patent law pages) can best be appreciated by recognizing pre- and postAspatore Books © 2004 (245 Federal Circuit issues. In the late 1980s and early 1990s, beforeon thethe Federal This text is an authoritative, insider’s perspective laws Circuit existed, patents were routinely struck down. Aspatents, a result,the there wasn’t much attention paidofto the quality of the which govern characteristics and capabilities practitioner and the future of patent regulation, draftsmanship of the thesuccessful application. on a global scale.

After the Federal Circuit came into being, patents were routinely upheld; in fact, there was a diametric shift.ofThe result was that property rights that the patents entailed became much more valuable. With Table Contents more attention being paid to property rights, the quality of the applications has vastly improved. Inside the Minds—The Art & Science of Patent Law Patent Frustrating,tend and to Rewarding SomeLaw—Complex, of the older practitioners have been a little on the lazy side and didn’t care about the Of Better Mousetraps and Beaten Paths scope of the their claims. They just wanted to get the patents for the inventor at that point. The Getting It Right the First Time—The Biomedical Patent oldtimers would frequently draft lengthy claims thatProcess included everything but the kitchen sink. The Communication—The Keyfor to all Success Patent Law Practice resulting patents were intentsinand purposes worthless, but the practitioner knew for the most Toolkits, and the Power Patents part theFootball, patent would never seeofthe light of day. Most patents are never litigated; most are never The Full-Service Patent Law could Practice commercialized; and you often be sure nothing would ever happen with it. The client was happy

thatMetes you got a patent that he could hang on his mantle or adorn his board room with. The andhim Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets

It is a little different now. You can easily get a successful patent, and it will be upheld. What you include in your claims to get a patent will, therefore, be scrutinized, and so will the quality of the patents.

The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works

Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: Art & Science Patent Law in the Industry Personal Strategies for The Dealing withofChanges by Inside the Minds Staff

ISBN:1587623463

Good practice is somewhat timeless. is good practice today was probably good practice 20 years Aspatore Books © 2004What (245 pages) ago and will mostThis likely be good practice 20 years from now, as far as general strategies go. text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of

Changes in patent law usually affect thoseand whothe arefuture at theoffringe the practice – those areas in which the successful practitioner patentofregulation, onquite a global scale. someone does not know what they are doing and are at the fringe of what is considered acceptable practice. They are the ones who are reined in by changes in the patent law. Table of Contents

I keep myself abreast of changes in the law and try to adapt quickly to new changes as they come. If there is a major change or a major Supreme Court decision, or if the Federal Circuit has changed Patent Law—Complex, Frustrating, Rewarding something, we comply with thoseand changes. Lately, changes are coming more frequently – little Of Better Mousetraps and Beaten Paths procedural things, such as forms of amendments. Inside the Minds—The Art & Science of Patent Law

Getting It Right the First Time—The Biomedical Patent Process

I read industry periodicals. I go to the PatentLaw Office’s Web site and figure out what is going on. The Communication—The Key to Success in Patent Practice Google Football, search engine a great Toolkits, and theisPower of place. PatentsThere are all kinds of Internet forums available to discuss issues with other patent attorneys. The Full-Service Patent Law Practice This is not too difficult because there is not a great deal of change in thisMetes sector. But I try toofbethe aware of Application everything Process connected to the practice of patent law. The and Bounds Patent Taking Proper Care of a Client’s Valuable Assets

Copyright law and trademark issues might undergo changes, but in patent law, I don’t see any

The Patent War Game—Playing to Win groundbreaking movements that will cause major changes, other than harmonization between Patent Law-From Bicycles to Biotech countries. But I don’t classify those types of things as major. Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the for Minds: The Art & Science of Patent Law The DrivingInside Force Most New Patents by Inside the Minds Staff

ISBN:1587623463

The changes in industries affect ©almost every other tangential industry. Technology is usually the Aspatore Books 2004 (245 pages) driving force for new patents, but not necessarily in the same field. example, many advances This text is an authoritative, insider’s perspective on As thean laws have been madewhich in thermoplastics. Thethe material properties thermoplastics and other types of govern patents, characteristics andfor capabilities of the successful practitioner and theAlso, future patenttoregulation, materials have increased rapidly in recent years. theofability process plastics has changed. on a global scale.

As a result, the inventors in the plastics industry are thrilled; they are getting their patents. But it is also goodoffor products made from these plastics. Clients that make plastic products know what Table Contents developments are taking place in the plastics industries. They know what can be done and what is Inside the Minds—The Art & Science of Patent Law being developed, and they are incorporating those changes into their products. Patent Law—Complex, Frustrating, and Rewarding

Of Better Mousetraps Beaten Paths Another example is and the electronics industry. For the most part, all kinds of electronics, including Getting It Right theare First Time—The Biomedical Patent Process computer chips, being networked – all the control systems, for example. Everything is driven by the Communication—The Key to Success in Patent and Law cheap Practiceavailability of electronics. Technology is Internet, network capabilities of computers, Toolkits, Football, and force the Power of Patents definitely the driving in many industries that are far afield of the original industry, not just the base The Full-Service Patent Law Practice industry. The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: Art & Science of Patent Law Measuring Inside Results of a The Patent Attorney by Inside the Minds Staff

ISBN:1587623463

A patent attorneyAspatore should have a ©success that is well into the 80th to 90th percentile to be Books 2004 (245rate pages) considered a successful In otherinsider’s words, a patent attorney This textpractitioner. is an authoritative, perspective on theshould laws see at least 80 percent to 90 percent of his applications maturing patents. and capabilities of which govern patents, the into characteristics the successful practitioner and the future of patent regulation, on a global scale. Patent attorneys receive almost immediate feedback. Either they receive patents for their clients, or they don’t. If it takes a long time and multiple responses and multiple applications, and continuation applications must be prepared, and it’s tough to get it through the Patent Office, the attorney is doing Table of Contents something wrong. If the process is relatively easy, allowances within one or two responses, the Inside the Minds—The Art & Science of Patent Law attorney is doing it right and getting the patents. Patent Law—Complex, Frustrating, and Rewarding

Of Mousetraps Beatenwhat Pathsworks for him and never be satisfied with it. Success takes AnBetter attorney needs toand discover Getting It Right the First Patent constant tweaking and Time—The rolling withBiomedical the punches, so Process to speak. Communication—The Key to Success in Patent Law Practice

If something is not working for me, I am not afraid to abandon it and try something new. As I achieve Toolkits, Football, and the Power of Patents some success,Patent I incorporate it and tweak it some more and do it better next time, like the old Marines The Full-Service Law Practice motto: “Improvise, adapt, and overcome.” The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: The Art &of Science of Patent Law The NuclearInside Warhead Theory Patents by Inside the Minds Staff

ISBN:1587623463

The Nuclear Warhead Theory Nuclear Warhead Theory of Patents The Nuclear Aspatore Booksof©PatentsThe 2004 (245 pages) Warhead TheoryThis of Patents text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of

The fact that a business has a patent makes competitors a littleregulation, wary. If they are aware of it, they the successful practitioner anditsthe future of patent on a know globalthere scale.is some type of new property out there they have to watch out for and tend to study it. They avoid trespassing upon. Table of Contents

As a company, you can be aggressive when you have a good defense behind you. If you have patents that you know some competitors are infringing, you can assert against them even if it is questionable. Patent Law—Complex, and Rewarding You can be more of aFrustrating, risk-taker yourself. You can skate up to the line of infringement and be pretty Of Better Mousetraps and Beaten Paths confident that the competitors won’t assert infringement actions of their own patents against you – they Getting It Right Firstsame Time—The Biomedical Patent Process know you can the do the to them. When you have the cards, you use them. If you don’t, you have to Communication—The Key to Success Law Practice be a little more risk-averse and stayinaPatent bit further away from your competitor’s property. Inside the Minds—The Art & Science of Patent Law

Toolkits, Football, and the Power of Patents

It isFull-Service a little bit like the nuclear warhead theory of patents and using game theory to develop how you The Patent Law Practice willMetes proceed. The and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Best AdviceInside the Minds: The Art & Science of Patent Law by Inside the Minds Staff

ISBN:1587623463

An older partner of mine once me(245 thatpages) in our clients’ eyes we are all fungible as patent attorneys. Aspatore Bookstold © 2004 We may think weThis are text the most brilliant patent attorney out there,on butthe thelaws clients, for the most part, have is an authoritative, insider’s perspective no way of knowing if wegovern really patents, know what are talking about. They certainly couldn’t care less about which thewe characteristics and capabilities of successful practitioner the the future of patent regulation, the intricacies of the patent law. They just careand about Executive Summary and assume that every a globalofscale. patent attorney ison capable providing the same summary. In fact, the most important thing is to be responsive. Answer your phone calls; be ready to answer any Table of Contents

questions the client may have; and go the extra yard for him. What you see lacking in most attorneys is that they tend to ignore clients, putting them on the backburner while they work on something more Patent Law—Complex, Frustrating, and Rewarding pressing. We’re all busy, but to gain client satisfaction, make them the center of attention. It is the most Of Better Mousetraps and Beaten Paths important thing you can make happen. Inside the Minds—The Art & Science of Patent Law

Getting It Right the First Time—The Biomedical Patent Process

Communication—The Success Patent LawisPractice In addition, often myKey owntoadvice to in colleagues not to do anything unless you have a definite plan of Toolkits, Football, and the Power ofplan. Patents action. Make sure it is a flexible Follow it, but don’t be a slave to it, and modify it when you need The Patent to. Full-Service Recognize that no Law planPractice will survive first contact with the enemy, but have an idea of where you want

to go, andand make sureofyou the goal. Process The Metes Bounds theachieve Patent Application Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law DeRosa’s Wish List by Inside the Minds Staff

ISBN:1587623463

I would like to remove the Books current ambiguity with respect to claim interpretation. Right now that law is a Aspatore © 2004 (245 pages) mess. The current state of it is like the wild West. Anything goes on withthe claim This text is an authoritative, insider’s perspective lawsinterpretation. I can make any argument and find govern supportpatents, in case the lawcharacteristics on both sides and of any issue, and which capabilities of I could assert in an the claim successful and the future of patent regulation, interpretation of the that Ipractitioner want. on a global scale.

That’s bad because there is no certainty as to the scope of patent claims as it exists right now. The result that people tend to be a little too conservative with their actions. In my opinion, this isn’t good Table ofisContents for the economy in general. You don’t quite know whether your new product, in which you invested Inside the Minds—The Art & Science of Patent Law millions to try to get it to market, will infringe. I think it stifles innovation and depresses the economy. My Patent Law—Complex, Frustrating, and Rewarding big concern is to clarify that part of the law. Of Better Mousetraps and Beaten Paths

Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

The GoldenInside Rulethe Minds: The Art & Science of Patent Law by Inside the Minds Staff

ISBN:1587623463

The Golden RuleAspatore of patents boils© down to pages) “Claims, claims, claims.” There is a multitude of little Books 2004 (245 fundamentals to heed, but the big, most important one is the quality of the This text is an authoritative, insider’s perspective on the lawsclaims. which govern patents, the characteristics and capabilities of

Claims drafting isthe notsuccessful taught easily. Most practitioners areofhorrible drafters. As a patent practitioner and the future patent claim regulation, onat a hundreds global scale. examiner, I looked of applications, and I see more when I look at younger associates working. Table of Contents

Learning claims drafting is a long, painful process. An examiner may work with you and try to get the claims into shape, but you must learn how to write well-drafted claims because they can move Patent Law—Complex, Frustrating, and Rewarding mountains. Inside the Minds—The Art & Science of Patent Law Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Ken’s Additions by Inside the Minds Staff

ISBN:1587623463

A design patent can be used very effectively, even when there is no related utility patent for it. They are Aspatore Books © 2004 (245 pages) almost as good as patents. It is as expensive to litigate a design patent it is to litigate a utility patent. This text is an authoritative, insider’s perspective on the as laws And a design patent can be obtained more cheaplyand than a utility patent. which govern patents,much the characteristics capabilities of the successful practitioner and the future of patent regulation, on amany globalofscale. A design patent has the same advantages, especially the threat of litigation, that the utility patent has. It also helps you establish trade-dress rights in your products. Table of Contents

For product configuration now, you have to show some type of secondary meaning the consumer identifies your design with – the origin of source, which is your company. That has to be established Patent Law—Complex, Frustrating, Rewarding through secondary meaning, andand it takes years. But in the meantime, nothing protects your product Of Better Mousetraps and Beaten Paths until that is established. The design patent, though, has a 14-year life, and those 14 years can be used Getting It Right the First Time—The Biomedical Patent Process to establish those rights. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

I have seen a lotand more and trade dress in conjunction with utility patents. Knowing that Toolkits, Football, thedesign Power patents of Patents from the beginning, The Full-Service Patentestablishing Law Practicea patenting regime and trademarking regime that take all those things intoMetes consideration – the full Patent spectrum of rightsProcess to be protected – along with your advertising campaigns, The and Bounds of the Application can be used as tools in your arsenal to give yourself and your clients a business advantage.

Taking Proper Care of a Client’s Valuable Assets

The PatentR. War Game—Playing to Win Kenneth DeRosa is a partner in the Intellectual Property Group of Schnader Harrison Segal & Patent Law-From Bicycles to Biotech Lewis LLP, where he concentrates his practice in patent and trademark procurement and enforcement Patents—How theintellectual System Works worldwide and property litigation involving patents, trademarks, trade secrets, and unfair Reflections on Mr. the DeRosa’s Practice of counseling Patent Law activities include the rendering of opinions regarding the competition. Patents—Knowing the enforceability Value, Workingofthe System validity, scope, and patents and trademarks.

Before entering private practice, Mr. DeRosa was a patent examiner for the U.S. Patent and Trademark Office, where he was commended for outstanding quality and performance. Mr. DeRosa conducts all aspects of patent prosecution, both foreign and domestic, including: crafting utility, design, reexamination, and reissue patent applications, crafting responses to Patent Office actions, conducting examiner interviews, and conducting matters before the Board of Patent Appeals and Interferences and the Office of Petitions. Mr. DeRosa represents clients in a wide variety of mechanical, electrical, computer hardware and software, and control systems disciplines. Mr. DeRosa has substantial experience with every aspect of major patent litigation, including pre-filing investigation, discovery, Markman procedures, motion practice, trial, and appellate practice. Mr. DeRosa’s counseling activities include the rendering of opinions regarding the validity, scope, and enforceability of patents; the right to use, registerability, and enforceability of trademarks; and the strategic acquisition, management, and exploitation of intellectual property rights. Mr. DeRosa earned his JD degree from the George Washington University Law School. He also received a BS mechanical engineering from Drexel University.

Inside the Minds: The Art & Science of Patent Law Patent Law-From Bicycles to Biotech ISBN:1587623463 by Inside the Minds Staff Aspatore Books © 2004 (245 pages) Cathryn Campbell This text is an authoritative, insider’s perspective on the laws McDermott, Will & Emery which govern patents, the characteristics and capabilities of Partner

the successful practitioner and the future of patent regulation, on a global scale.

A Major Degree of Difference

Table of Contents

For the past 20 years I have been practicing biotechnology patent law. I was very fortunate to have had a PhD in genetics and to have graduated from law school in 1983, just when the biotechnology Patent Law—Complex, Frustrating, and Rewarding industry was in its infancy. Traditionally, patent attorneys have degrees in engineering – mechanical, Of Better Mousetraps and Beaten Paths electrical, or chemical. At that time very few patent firms had anyone who had ever taken an advanced Getting the First Time—The Patent Process courseItinRight the biological sciences, Biomedical to say nothing of a degree. I was fortunate to have been in the right Communication—The Key to Success in Patent Law Practice place at the right time. Ever since then, I have had what I consider the world’s greatest job, at least for Toolkits, Football, and the Power of Patents me. Inside the Minds—The Art & Science of Patent Law

The Full-Service Patent Law Practice

In my practice, I handle my Patent clients’Application intellectualProcess property issues from the ground up. The group I have The Metes and Bounds of the worked with since starting the Valuable firm of Campbell & Flores in 1992 has always emphasized heavy Taking Proper Care of a Client’s Assets technological Most oftous have PhDs, and many have had experience in academia or industry. The Patent War training. Game—Playing Win We work closely with inventors, to first determine exactly what they have discovered. One of the challenges is to figure out what aspects of new scientific discoveries can be patented. Sometimes it is Patents—How the System Works obvious, but sometimes it is frankly quite difficult to determine what can be patented. We then write, Reflections on the Practice of Patent Law file, and prosecute patent applications in the U.S. Patent and Trademark Office and oversee filings in Patents—Knowing the Value, Working the System foreign countries. Patent Law-From Bicycles to Biotech

Inside the Minds: The Art & Science of Patent Law Practice Basics by Inside the Minds Staff

ISBN:1587623463

One of the majorAspatore areas of Books my practice is advising © 2004 (245 pages) clients on their overall intellectual property strategy: what should be protected through patents and what isperspective better protected trade secrets. And if a client This text is an authoritative, insider’s on the by laws decides to proceed withgovern patentpatents, protection, are their ultimate goals?ofDo they want to keep their which the what characteristics and capabilities successful practitioner and the ofwant patent competitors fromthe selling the patented product? Or future do they to regulation, license others in exchange for a onofa products? global scale. royalty on the sale Filing patents without a clear understanding of their use and value to a company can be aencoding="ISO-8859-1"?> tedious and expensive pastime.
A basic requirement for a patent application is that the invention be described in sufficient detail to enable one skilled in the art to practice the invention. In other words, the patent application must teach Patent Law—Complex, Frustrating, and Rewarding someone else how to do what the inventor is trying to claim. There are related issues, called written Of Better Mousetraps and Beaten Paths description and best mode, and all of those require a great deal of detail in the application. Inside the Minds—The Art & Science of Patent Law

Getting It Right the First Time—The Biomedical Patent Process

Communication—The Key to Success in the Patent LawofPractice A common misconception relates to scope protection a patent provides. To understand what a Toolkits, Football, andmust the Power Patents patent covers, you look toofthe claims and only to the claims. The claims, which are found at the The Patent Law Practice endFull-Service of the patent, determine the metes and bounds of patent protection. Because of the requirements

thatMetes a patent describe invention in copious detail and discuss the background material, The and application Bounds of the Patent the Application Process patents contain a of great deal ofValuable information that is not covered by the claims. Only the claims define Taking Proper Care a Client’s Assets what is protected by the patent. The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech

There are a couple of key issues related to the claims. First, broad claims are desirable because if you have only narrow claims, your competitors may be able to easily design around your patent with only Reflections on the Practice of Patent Law minor changes. However, broad claims can be dangerous because the broader the claim, the more Patents—Knowing the Working the System likely there is prior artValue, that would defeat the novelty and nonobviousness of the invention, two requirements of patentability. If there is prior art that falls within the scope of the claim, the claim is not valid. Often clients are delighted with previous patent attorneys who have obtained very broad claims. But such claims can be invalidated by a court. It is a critical strategic issue to get claims that are broad enough in scope to be valuable, but are still valid over the prior art. Patents—How the System Works

the Minds: Art & Science of Patent Law You Have aInside Patent ––––The Now What? by Inside the Minds Staff

ISBN:1587623463

The most important misconception about is what rights they provide. People often do not Aspatore Books © 2004 (245 patents pages) realize that all a patent allows the owner to do is exclude others from the inventions – from This text is an authoritative, insider’s perspective on thepracticing laws making, using, selling, for sale,the or characteristics importing the invention. Patents which offering govern patents, and capabilities of do not provide any thethe successful practitioner and futurethe of patent regulation, affirmative right for patent holder himself tothe practice invention. There are several reasons a onnot, a global scale. patent holder may in fact, be able to practice his invention. For example, there may be regulatory requirements – such as FDA approval – without which you are unable to practice an invention. Additionally, even if you have a patent, there may be other patents you need to license to practice your Table of Contents invention; these are called dominating patents. Inside the Minds—The Art & Science of Patent Law That you have obtained a patent does not mean you can infringe other people’s patents. is a very common misconception – people think that Patent Law—Complex, Frustrating, andThat Rewarding patentability and lack of Beaten infringement Of Better Mousetraps and Paths are the same thing, but they are not. Getting It Right the First Time—The Biomedical Patent Process

Patents are not self-effectuating – no one comes and arrests infringers. So we work with our clients to help them achieve what they want from their patent – licensing or, if necessary, suing infringers to Toolkits, Football, of Patents make them stopand or tothe getPower damages. But it can be extremely expensive to actually sue for patent The Full-Service Patent Law Practice infringement. The process is complex and drawn-out. It is not uncommon for patent cases to take five The Metes and Bounds of the Processnot only in terms of dollars, but also in time lost to years from filing to trial. ThePatent costs Application can be daunting, Taking Proper Care of a document Client’s Valuable Assets depositions, conferring with attorneys, and testifying at the company through production, The Patent War Game—Playing to Win trial. Companies need to be very clear about why they are going to sue – for example, that they want Patent Law-From Bicycles to Biotech the infringer to take a license and pay a royalty, or they want to obtain an injunction prohibiting the other company selling the patented product. Patents—How thefrom System Works Communication—The Key to Success in Patent Law Practice

Reflections on the Practice of Patent Law

Companies also have to be very sure their patent is valid before they assert it in court. Defendants to an infringement suit virtually always defend on the basis that even if they are held to infringe, the patent is invalid or unenforceable. The bases for invalidity and unenforceability include lack of novelty or obviousness over the prior art, failure to adequately describe the invention in the application, and inequitable conduct before the Patent Office. Patent infringement litigation is different from just about any other kind in that the patent holder is putting his patent at risk. If the patent is found to be invalid, it can never again be asserted. Rather than going to court and getting money from a competitor, the patent holder risks losing his patent altogether. It is definitely a calculation of risk, and the cost can be very high, unfortunately.

Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Patenting Biotechnology by Inside the Minds Staff

ISBN:1587623463

In the biotechnology area,Books the main asset Aspatore © 2004 (245 many pages) small biotech companies have is their intellectual property. It is important that their patent strategy be well thought-out, and that makes our role as patent This text is an authoritative, insider’s perspective on the laws attorneys very important. It is not our job tocharacteristics direct the science in our clients’ which govern patents, the and capabilities of companies, but we do need the successful practitioner the future of patent regulation, to make them aware of the need to plan forand patent protection as they develop their research plans. on a globalaware scale. that patents can be a source of considerable income, so patenting Nonprofits are increasingly the inventions that encoding="ISO-8859-1"?> come out of their laboratories is important. In addition, nonprofits need to have
Particularly in the pharmaceutical area, patent protection is critical for getting drugs on the market. The exclusivity patents provide is extremely important; it can cost upwards of $500 million to get a new drug Of Better Mousetraps and Beaten Paths through FDA approval. Patent Law—Complex, Frustrating, and Rewarding

Getting It Right the First Time—The Biomedical Patent Process

Communication—The Key to Success in Patent Law Practice One thing that distinguishes the area of biotechnology is that it developed through basic new Toolkits, Football, and Power of Patents techniques – such asthe gene cloning or DNA sequencing – that were invented during the last quarter of The Patent Law Practice theFull-Service 20th century. These new techniques have provided methods to design and identify new drugs, for

example. TheBounds question are those basic technologies for finding drugs themselves worth The Metes and of is, thethen, Patent Application Process patenting, or Care should wait until you Assets find the drug, using these technologies, and then patent just the Taking Proper of ayou Client’s Valuable drug? I like to use the analogytoofWin bicycles. The Patent Office has provided the statistic that at the turn The Patent War Game—Playing of theLaw-From 20th century, one-third of all patent applications related to bicycle technology. With bicycles, no Patent Bicycles to Biotech

one ever came with aWorks new method to design a better bicycle and then patented that design method; Patents—How theup System instead, they would just use the method to design a better bicycle and then patent that bicycle.

Reflections on the Practice of Patent Law

Patents—Knowing Value, itWorking the System In biotech, unlikethe bicycles, is the platform – or tool – technology that has provided most of the

innovation and that many patents claim. And these patents can pose problems of enforcement because it is often hard to tell whether someone is infringing. With platform patents, infringers, in a sense, use the patented method “once” in the privacy of their laboratories, and then never use it again. It is also hard to determine what the damages for those “one-time” infringements should be. Should it be the cost of a one-time license? Or is it a percentage of all the drugs the patent holder discovered using the patented technology? If the former, the infringer will surely take the position that such a license should cost very little – $1.95? If the latter, the patent holder may think he deserves a royalty on all the drugs sold – which could amount to millions of dollars! And the question will go to a jury. These are some of the considerations that go into the decision of what to patent and what not to patent. Sometimes you’re better off keeping your technology secret and using it yourself to find the drugs, rather than essentially teaching your competitors how to find better drugs. It has been a very difficult marriage between patent law – which grew out of the 19th century, primarily at the time of the Civil War, when people were patenting things such as armaments and the cotton gin – and biotechnology. For example, until recently, the patent laws never had to account for such issues as “Can you patent a useful drug like penicillin that is found in nature?” The answer is yes, if you are the first to purify it, so that it is in a useful form. The patent system is designed to promote science and the useful arts, and it actually doesn’t work well with biotechnology because often the people who are rewarded are not the ones who are doing the breakthrough science. The truly important issues in the biological sciences are how things work – why a certain compound is effective or what metabolic pathway in the body causes certain diseases, for example. The criteria for patentability of drugs is the same as for any other material – the drug has to be novel (which essentially means new), nonobvious, and have utility (it has to work as you say and have some social use). Knowing the mechanism of action is not a requirement.

Inside Both the Minds: Art & Science of Patent Law Understanding theThe Business Strategy and the Science by Inside the Minds Staff

ISBN:1587623463

There are very few areas of law ©in2004 which Aspatore Books (245people, pages) after practicing for 20 years, are constantly encountering theThis number of new issues that we encounter in biotechnology text is an authoritative, insider’s perspective on the laws patent law. Part of the challenge arises which from the fact patents, that there is characteristics not a good marriage betweenofbiotechnology and patent govern the and capabilities the successful and the and future of patent law. The Patent Office is alwayspractitioner playing catch-up changing theregulation, game on us, so we try to keep one on a step ahead of them toglobal figurescale. out how to get the best patent protection for our clients. Another challenge is that the science moves so fast; you have to adapt to new discoveries and be able Table of Contents

to learn very quickly. That is actually one of the things I like most about patent law – it’s the closest thing I know to being a student. It’s challenging because every company and every invention are Patent Law—Complex, Frustrating, and Rewarding different, and it requires understanding both the business and the scientific objective of a company or Of Better Mousetraps and Beaten Paths institution to tailor a patent strategy specifically for them. Patent law is also extremely complex, and Getting It Right the First Time—The Biomedical Patent Process biotechnology is a new enough field that there are many unanswered questions. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

Toolkits, Football, and the Power Patents When we begin working with a of client, the most important thing is to clearly understand their science, The Full-Service Patent Lawimportant, Practice why they would start a company around it, and where they would where it’s going, why it’s

likeMetes to go.and Second, it’sofimportant understand their business strategy – whether they are interested in The Bounds the PatenttoApplication Process partnering with another company, whether they are looking for venture capital money, whether they Taking Proper Care of a Client’s Valuable Assets arePatent planning build a portfolio out-license, or whether they ultimately want to be bought out by a The WartoGame—Playing to to Win pharmaceutical company. Many companies think that having a patent attorney draft a patent Patent Law-From Bicycles to Biotech application isthe a mail-order process. We do not believe you get value for money that way. Especially in Patents—How System Works

biotech, you need someone who understands both your business strategy and your science. And each invention is different and deserves to be considered strategically.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the System

For example, if a company has a very broad-based technology that has applications far beyond what they themselves can exploit, they should be encouraged to get patents to out-license to others as a source of revenue. If their technology is not as broadly based, and there are no opportunities to outlicense, then the question is whether they want to patent the technology or wait and patent what comes out of it. Do they want to file early, or do they have the luxury of filing later? If you are filing only in the United States, the patent application will not be published or publicly available until it is issued. If you file in foreign countries, the patent will be published 18 months after filing. You may want to use a strategy of filing only in the United States, so the patent isn’t made public until you find you will get good patent protection.

Inside the Minds: The Patents Art & Science of Patent Law Strategies for Successful by Inside the Minds Staff

ISBN:1587623463

We have a very good relationship with (245 the pages) Patent Office in that we have a great deal of credibility. We Aspatore Books © 2004 try to maintain very high quality in our patent applications. They know we are tenacious and honest with This text is an authoritative, insider’s perspective on the laws them. If we have which writtengovern a patent application, we are relatively certain theofinvention is patentable, and patents, the characteristics and capabilities the successful practitioner and the future of patent regulation, we don’t give up easily. on a global scale.

I have also come to believe more and more in the importance of a very thorough understanding of the science, which is why our firm has emphasized a great depth of technical expertise. We also make a Table of Contents point of understanding all the ramifications and the considerations of our clients’ inventions. I tend to Inside the Minds—The Art & Science of Patent Law spend quite a bit of time explaining to clients why they need to do what I ask them to do, and the legal Patent Law—Complex, Frustrating, and Rewarding basis for it. I find clients appreciate these explanations because patent law is not intuitively obvious. It is Of Better Mousetraps and Beaten Paths easier for them to provide the needed materials, for example, if they understand why they are Getting It Right the First Time—The Biomedical Patent Process necessary. We become more of a team, and it is much easier to get information and cooperation. Communication—The Key to Success in Patent Law Practice

Toolkits, Football, and the Power Patents I have had clients come to me of who are not being honest and who know that what they want to patent The Patent Law Practice hasFull-Service been invented before, even if it was not widely known. There have also been times when I’ve been

skeptical of the science – and this Application goes alongProcess with honesty. I have turned down potential clients The Metes and Bounds of the Patent because I didn’t science was Assets accurate, but that has been rare. Taking Proper Carethink of a the Client’s Valuable The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside theas Minds: The Art & Science of Patent Law Tips for Success a Patent Lawyer by Inside the Minds Staff

ISBN:1587623463

By definition, for something to be©patentable it has to be new; it has to be something you didn’t learn in Aspatore Books 2004 (245 pages) grad school. So what you really want in a patent attorney is someone This text is an authoritative, insider’s perspective on thewho lawsis very bright, who is a quick learner, and whowhich likes the subject. Thethe people who are the teachers govern patents, characteristics andbest capabilities of are the inventors successful to practitioner the future of be patent themselves, and the it’s important be a quickand learner and to openregulation, to learning. Obviously you have to on a global scale. that you can understand most basic fields, and you have to keep up have a broad enough background in general with what is going on in the world, but the primary factor in a good patent attorney is a desire and of ability to learn quickly. Patent lawyers also have to be creative and analytical with the law. Patent Table Contents law isthe notMinds—The the kind of Art field& where can goLaw to a book and learn what to do. That was especially not Inside Scienceyou of Patent true 20 years ago. Frustrating, and Rewarding Patent Law—Complex, Of Better Mousetraps and Beaten Paths

Satisfaction of clients, in terms of their perception of the quality of the job the attorney is doing, is important. Getting patents issued with the strong and valid claims is another indicator of quality. One of Communication—The Key to Success in Patent Law Practice the ultimate validations is seeing these claims asserted in court and being upheld or seeing potential Toolkits, Football, the Power Patents infringers agree and to settle a caseofout of court. When clients seek venture capital or partnerships within The Full-Service Patent Law Practice an industry and get positive feedback on their patent portfolio, that is another indicator of success. So The Metes andofBounds the Patent Application perceptions clients,ofcompetitors, partners, Process and the Patent Office are all clues as to how well we do Taking Proper Care of a Client’s Valuable Assets as patent lawyers. Getting It Right the First Time—The Biomedical Patent Process

The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: ArtBiotechnology & Science of Patent Law Changes inInside Patent Law The and by Inside the Minds Staff

ISBN:1587623463

In the last five to ten years,Books both ©the courts and the Patent Office have become much more stringent Aspatore 2004 (245 pages) on what can be validly patented. The standards for describing inventions are becoming increasingly This text is an authoritative, insider’s perspective on the laws exacting, and thewhich scopegovern of patentable matter hasand been narrowed. patents, subject the characteristics capabilities of That’s one of the challenges the successful practitioner patent – to work in a field where you can’t predict and howthe thefuture courtsofwill look regulation, at a patent years down the road. In on a global scale. addition to the requirements becoming much more exacting for patent attorneys, the Patent Office has also version="1.0" unfortunately encoding="ISO-8859-1"?> made the process much more expensive for the clients.
I think patent law is changing and will continue to change in ways that are not predictable. I would like to think that, rather than the Patent Office and the court moving incrementally to deal with individual Patent Law—Complex, Frustrating, and Rewarding issues as they arise, there will be a major revamping of the patent laws by Congress. Inside the Minds—The Art & Science of Patent Law Of Better Mousetraps and Beaten Paths

Getting It Right the First As an example, the firstTime—The day I wasBiomedical teaching aPatent class Process on patent law, I was a little panicked that someone Communication—The Key to Success in Patent Practice would ask a basic question for which I didn’tLaw know the answer, so I prepared extensively. But, of Toolkits, the Power of Patents course, Football, I did get and a question I couldn’t answer: “Why is the patent protection 17 years?” I had no idea. It The Full-Service Patent Practice appears that the best Law reason is that at the beginning of the patent system in medieval Venice, 17 years

wasMetes approximately the lifeApplication of an artisan. In today’s world, that is clearly not the average length The and Bounds ofworking the Patent Process of one’s career. it the properValuable term forAssets a patent? Taking Proper CareIsof a Client’s The Patent War Game—Playing to Win

That question raises numerous issues about the length of patent protection. In fact, the term has now been changed to 20 years from the date of filing, so as to accord with most other countries of the Patents—How the System Works world. One could argue that 17 years is too long, or that it is too short. For example, because Reflections on the Practice of Patent Law pharmaceutical drugs take so long to get through the FDA approval process, by the time the drug Patents—Knowing the Value, Working theonly System actually hits the market, there may be three to five years of patent protection left. And since it can cost $500 million to get approval, a longer period of patent exclusivity is required to allow pharmaceutical companies to get a return on their investment. On the other hand, where so much of what is patented in biotechnology is basic platform technology, the protection should be shorter so that science is encouraged to move on. Patent Law-From Bicycles to Biotech

the Minds: The Art & Science of Patent Law Best Piece Inside of Advice by Inside the Minds Staff

ISBN:1587623463

I had a wonderfulAspatore mentor who told me (245 never to think patent law is simple. Patent law is extremely Books © 2004 pages) complex, and youThis cantext never think too hard about what you are doing. is an authoritative, insider’s perspective on thePatent laws attorneys need to always be expanding their minds, thinking of new to help clients of achieve their business goals. It which govern patents, the strategies characteristics andtheir capabilities successful andwho the future of patentand regulation, is not a job for thethe faint of heart.practitioner But for those like challenge thrive on complexity, I know of no on a global scale. more gratifying career. Cathryn Campbell is a partner in the San Diego office of McDermott, Will & Emery, where she serves Table of Contents

as head of the firm’s Life Sciences Intellectual Property practice. She concentrates her practice on biotechnology patent law and has extensive experience in developing patent portfolio strategies, Patent Law—Complex, Frustrating, and Rewarding negotiating and drafting license agreements, and preparing patentability, validity, infringement, and Of Better Mousetraps and Beaten Paths freedom to operate opinions. She represents biotechnology and pharmaceutical companies, as well Getting It Right the First Time—The Biomedical Patent Process as numerous non-profit universities and institutions. Inside the Minds—The Art & Science of Patent Law

Communication—The Key to Success in Patent Law Practice

Toolkits, Football, and theDr. Power of Patents Before joining the firm, Campbell was a founding partner of Campbell & Flores, LLP, in San Diego, The Full-Service Patent Law Practicein biotechnology intellectual property. Preceding private practice, she California, a law firm specializing

wasMetes a lawand clerk to theofHonorable T. Goodwin The Bounds the PatentAlfred Application Processof the U.S. Court of Appeals for the Ninth Circuit. Taking Proper Care of a Client’s Valuable Assets

Dr. Campbell has been recognized by California Lawyer as one of the state’s top patent lawyers and was the recipient of the 1997 “Women Who Mean Business” award for law. She also has been widely Patent Law-From Bicycles to Biotech accredited for her promotion of executive women, having received the 2002 Athena Pinnacle Award Patents—How the System Works and having been named one of San Diego’s “Ten Cool Women” by the Girl Scouts of San Diego and Reflections on the Practice of Patent Law Imperial Counties. She is a prolific lecturer and author. She sits on various boards and is active in Patents—Knowing the Value, Working the System numerous civic organizations. The Patent War Game—Playing to Win

Dr. Campbell graduated from the University of California, Los Angeles School of Law, where she was a member of the UCLA Law Review. She received her PhD in genetics and her MS in paleobiology from the University of California, Davis. She undertook advanced research at King’s College, Cambridge University, and graduated from Wellesley College with a BA in the biological sciences.

Inside the Minds: The Art & Science of Patent Law Patents—How the System Works ISBN:1587623463 by Inside the Minds Staff

Paul E. Krieger Aspatore Books © 2004 (245 pages) This LLP text is an authoritative, insider’s perspective on the laws Fulbright & Jaworski which govern patents, the characteristics and capabilities of Partner

the successful practitioner and the future of patent regulation, on a global scale.

Underlying Principles of Patent Law

Table of Contents

Patents are simply another form of property. They have very similar attributes to land, which is also known as real property, and personal possessions, which are called personal property. Patents are the Patent Law—Complex, Frustrating, and Rewarding form of property that protects inventions. Inside the Minds—The Art & Science of Patent Law Of Better Mousetraps and Beaten Paths

Getting It Right First Time—The Biomedical Patenting is thethe obtaining of the patent itself, Patent which Process protects the holder's rights to the invention. Communication—The Key to Patent Law Practice Licensing is the granting ofSuccess rights toinan invention. A license may be obtained for a pending patent

application or anand already issued Toolkits, Football, the Power ofpatent. PatentsA license may also be obtained for technology or know-how thatFull-Service has never Patent and willLaw never be patented. The Practice The Metes and Bounds of the Patent Application Process

If an inventor or business has new technology or has improved on its pre-existing technology, then it may have to make a decision as to whether it wants to file for a patent. The technology must be The Patent War Game—Playing to Win evaluated to determine whether a patent is worthwhile for the development. There are various Patent Law-From Bicycles to Biotech strategies to determine whether obtaining a patent is worthwhile. The decision is easy to make if the Patents—How System Worksthe inventor or business believes is important. patent wouldthe cover a product Taking Proper Care of a Client’s Valuable Assets

Reflections on the Practice of Patent Law

If the new technology won’tWorking be usedthe commercially, a business might employ a competitive or blocking Patents—Knowing the Value, System strategy, where the business could get a patent on something it does not make and sell, but might have the effect of blocking a competitor from making a competitive product. Additionally, the business may be building a portfolio of patents with the goal of generating revenues through licensing. When advising a client on whether to obtain a patent, the goals and business realities of the client should be understood so the attorney can give the client good advice. Any strategy on patents should be molded to the client’s needs and interests. A patent is basically a contract between the inventor and the government. The government has provided patent rights as an exception to the normal prohibition against monopolies. A patent grants an inventor a limited exclusionary right, or monopoly, to the invention for a specified period of time. A patent publicly discloses the details of the invention, so that once the patent has been issued, others can learn about and understand the details of the invention and can build or improve on it. That is the basis of our patent system. Patents provide information on the latest technology to the public so that society can better understand that technology and improve on it.

InsideLawyer the Minds: The Art & Science of Patent Law Being a Patent by Inside the Minds Staff

ISBN:1587623463

My job is that of aAspatore lawyer who works on(245 patent Books © 2004 pages)matters, as well as other intellectual property matters. When I deal with This patent law issues, I am asked to solve a client’son problem text is an authoritative, insider’s perspective the lawsand to come up with one or more creative solutions. For example, ancharacteristics inventor wantsand to protect his or which govern patents, ifthe capabilities of her rights to an invention, I the to successful practitioner andpossible the future patent regulation, will try to find a way get the best protection forofthat inventor. In that situation, I may discuss a global scale. with the client theon possibility of keeping the invention as a trade secret, as opposed to making it publicly available by obtaining a patent. Alternatively, there may be an existing patent that may be a potential roadblock for my marketing my client’s invention. In that case, I will try to find a way to allow my client Table of Contents to go the forward and notArt be&stopped blocked by this patent. Inside Minds—The Science or of Patent Law Patent Law—Complex, Frustrating, and Rewarding

When counseling clients, I try to have my client decide whether the technology or invention is actually worth the expense of obtaining a patent. Technology can be of value to a client if it is critical to the Getting It Right the First Time—The Biomedical Patent Process product the client makes and sells. Technology also can be worth something as a licensing property. If Communication—The Key to Success in Patent Law Practice the client is interested in either selling or licensing technology that it has already patented, even if it is Toolkits, Football, and thecommercially, Power of Patents not using the invention then the cost of obtaining a patent might be worthwhile. Of Better Mousetraps and Beaten Paths

The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: The Art & Science of Patent Law The Patent Inside Application Process by Inside the Minds Staff

ISBN:1587623463

The process to obtain a patent when a client first discloses to the attorney the details of an idea, Aspatore Booksbegins © 2004 (245 pages) model, or productThis in some stage of development. At that time, it on is important text is an authoritative, insider’s perspective the laws to obtain enough information from which the client to fully understand the invention, advantages, govern patents, the characteristics andits capabilities of and the differences over the successful practitioner and the of patent regulation, what was used before. The client may describe thefuture technology verbally, bring in a model, or provide a a global scale.and sketches. written descriptiononwith drawings Onceofthe invention is understood, earlier attempts to solve the same problem, or “prior art,” are studied Table Contents

to understand the differences between it and the client’s invention. This analysis can involve obtaining information from experts in the relevant field or from the client if it has worked in the industry for a long Patent Law—Complex, Frustrating, and Rewarding time and knows the historical development of predecessor technology. Background information can Of Better Mousetraps and Beaten Paths also be obtained from patent or literature searches. Inside the Minds—The Art & Science of Patent Law

Getting It Right the First Time—The Biomedical Patent Process

Communication—The Success in aPatent Law Practice After understandingKey the to differences, determination will be made as to whether the client’s invention is Toolkits, Football, theinvesting Power ofthe Patents novel enough to and justify money to seek a patent, or whether the invention is not obvious The Full-Service Patent Practice over the prior art. ThisLaw analysis involves whether the invention is obvious to one with ordinary skill in the

art,Metes in view of Bounds what was done before. Sometimes, if you are not that familiar with the technology, you The and of the Patent Application Process have to rely on people who have that level of expertise. They will tell you whether they believe it is Taking Proper Care of a Client’s Valuable Assets obvious. The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech

There are various objective tests you can use to determine whether an invention is obvious. These include whether the invention satisfies a long felt need, or whether other people have tried and failed to Reflections on the Practice of Patent Law develop this technology to solve the same problem, or whether the invention is a commercial success. Patents—Knowing the be Value, Working the System These factors must analyzed before advice is given to the client, upon which it can rely to make a decision on whether the client will likely obtain a patent that is worthwhile. Patents—How the System Works

If a client wants an attorney to review an existing patent to determine whether it has any value, the same basic process is followed, in addition to reviewing the claims of the patent to determine what it covers or what might infringe the patent. The same type of evaluation is made to consider whether the claims are valid in view of the prior art. The decision of whether to file a patent application depends on the client. If the client is an individual, he or she should look carefully at the economics of the situation. In addition to deciding whether something is patentable, the client must look at the cost and what it can expect to gain from getting a patent, and then decide whether it wants to make the investment. For large corporations, the analysis is more complicated because it involves long-term marketing strategies, the types of product(s) involved, what other patents it has, and whether the patent might be useful for the company to protect a product it has or to block a competitor from getting into a related area. If the client does decide to go forward and make the investment of time and money necessary to get a patent, the patent attorney prepares the patent application. The application includes the drawings necessary to understand the invention and claims, which are the boundaries of a patent. The attorney then files the patent application with the Patent Office, along with the appropriate fees. The Patent Office then examines the application. They conduct the same type of research as the attorney in determining whether the invention is patentable. The Patent Office sends a letter explaining their findings. Sometimes the examiner agrees that the application as it is filed is worthy of a patent; however, most of time the examiner will not agree the invention is patentable. Then there is an exchange of letters, personal interviews or interviews on the telephone to explain to the patent examiner why the inventors believe that an invention is patentable. Often changes will be made to the claims or boundary description of the patent to clarify the claim language or to narrow the scope of what would be covered by the patent. The examiner may agree to grant a patent, in which case the patent will issue, or the examiner may disagree and refuse to grant a patent. If you can finally reach an agreement with the examiner, the patent will issue after the client pays an issue fee. If the examiner does not agree, you can file another patent application, which is called a continuation. Or you can file an appeal. The first level of an appeal is held before the Patent Office’s Board of Patent Appeals and Interferences. At the first appeal, the Board reviews the examiner’s decision after the parties file briefs and have an oral argument. If the Board agrees with your position

and overrules the examiner, the application will go back to the examiner, and the examiner will issue the patent. If the Board disagrees with your position, you may appeal the Board’s decision to a federal appeals court, and even the to the Supreme Court, if you want to go that far. Inside Minds: The Art & Science of Patent Law by Inside the Minds Staff The amount of time the process takes varies. Some patents can take a little as three or four months, Aspatore Books © 2004 (245 pages) and others as long as ten to 15 years. These are extremes that do not happen very often. Typically, This something text is an authoritative, insider’s perspective on the laws however, if you have that is patentable, it will take anywhere from one-and-one-half to two which govern patents, the characteristics and capabilities of years to obtain a the patent. successful practitioner and the future of patent regulation, ISBN:1587623463

on a global scale.

To expedite a patent application you have to pay an extra fee, follow the application with a petition filed with version="1.0" the Patent Office, and advise the Patent Office that you have done a search. Or you can show that Table of Contents individuals are currently infringing on the client’s rights and that you need to have the patent issued Inside theInMinds—The Artstatute & Science of Patent quickly. addition, the provides thatLaw under certain circumstances a patent can be issued more Patent Law—Complex, Frustrating, and Rewarding quickly. Of Better Mousetraps and Beaten Paths

In terms of cost, seen patent applications range from three or four thousand dollars to more Getting It Right theI have First Time—The Biomedical Patent Process

than a hundred thousand dollars. The cost largely depends on how complicated the invention is and how long it takes to write the patent application. Typically patent applications will range anywhere from Toolkits, Football, and the Power of Patents five or six thousand dollars to ten or twelve thousand dollars. On top of that, there is a filing fee of one The Full-Service Patent Law Practice or two thousand dollars, and an issue fee for about the same amount. Communication—The Key to Success in Patent Law Practice

The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & Science of Patent Law Strategies for Patent Applications by Inside the Minds Staff

ISBN:1587623463

Whether one patent is obtained than another depends on how good the invention is, how Aspatore Books more © 2004 quickly (245 pages) well it is described, how receptive the examiner is to the technology, what type of prior art exists, and This text is an authoritative, insider’s perspective on the laws other conditions. which Each situation is unique. govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. and it appears that the examiner might not understand the If my client’s application is rejected invention, I call the examiner and arrange for an interview or try to talk to them over the phone. I find out exactly where the difficulty is because often the Patent Office’s concerns are not readily apparent Table of Contents when I look at the examiner’s letter. If I agree with the examiner’s concerns, I craft my response to Inside the Minds—The Art & Science of Patent Law address the examiner’s objections. If I disagree with the examiner’s position, I push to try to get what I Patent Law—Complex, Frustrating, and Rewarding think is the right coverage. It is important to facilitate the process by being in communication with the Of Better Mousetraps and Beaten Paths examiner. Getting It Right the First Time—The Biomedical Patent Process

Communication—The to Success in Patent as Law As a strategy, I try toKey educate the examiner toPractice the technology my client is seeking to patent. I also try Toolkits, and the to Power Patents to makeFootball, a presentation showofthe difference between the technology and the prior art (what was The Full-Service done before). I Patent alwaysLaw findPractice that it helps immensely to have an inventor who is articulate and

enthusiastic theofinvention and who can Process discuss it intelligently with the examiner. Communication The Metes andabout Bounds the Patent Application is critical. Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win

To get a patent approved, you need both a good invention and a good patent application. It should be clear to the examiner what coverage the client seeks. A good invention is one that advances the art Patents—How the System Works and provides advantages over what has been done before. Patent Law-From Bicycles to Biotech

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the No one knows whether an invention willSystem be worth the expense of going through the patent application

process. In large companies, they will try to make this assessment by doing market evaluations and sales forecasts. They know how much of a capital investment it will take to get the patent and will calculate a percentage of return. Certainly anyone considering obtaining a patent should go through that type of analysis to determine whether there might be a financial return that justifies the expense. How do you avoid a conflict with a competitor's patent? Sometimes you can draft a patent application to provoke a dispute with a competitor’s patent. If you believe your client’s invention has priority over the competitor’s, you may be able to knock out its patent. Most clients that are large corporations make sure to avoid patent conflicts because there is nothing worse than getting involved in an expensive lawsuit where you do not have a good position. They look at their competitor’s patents carefully as they are going through the design process and see if they can avoid any potential conflicts.

Minds: The Art & Science of Patent Law ChallengesInside and the Risk by Inside the Minds Staff

ISBN:1587623463

The most challenging partBooks of my©practice to give the client value for its money. It is also challenging Aspatore 2004 (245 is pages) to truly understand the invention. That involves gettingperspective the inventor help you understand the most This text is an authoritative, insider’s on to the laws important aspectswhich of thegovern invention. Sometimes that process time. Itofdepends on how complicated patents, the characteristics andtakes capabilities and thewith future patent regulation, the technology isthe andsuccessful how well practitioner you communicate theofclient. on a global scale.

Another challenge is to give the client good advice. You want to give realistic advice without sugar coating. Sometimes that means telling the client things they do not want to hear. That is probably the Table of Contents biggest challenge. But the golden rule is to always be forthright with your clients. You should try to be Inside the Minds—The Art & Science of Patent Law as objective and realistic as you can with your clients when telling them what their prospects are and Patent Law—Complex, Frustrating, and Rewarding then develop a strategy do the best job you can for them. Of Better Mousetraps and Beaten Paths

Getting It Right the First in Time—The Biomedical Yet another challenge representing small Patent clientsProcess is the misconception that a patent will make an Communication—The Key to Success inclients Patent come Law Practice inventor an instant millionaire. Many in believing they have a great idea, and they want to Toolkits, Football, the Power of Patents get a patent on itand to become rich. I tell them there are a number of hurdles they have to overcome The Full-Service Practice before they willPatent make Law money on their idea. The client needs to be able to go from idea to market to

success. It is not easyoffor smallApplication businessperson The Metes and Bounds thethe Patent Processto come up with an idea and make a success of it. LargeProper corporations millions of dollars Taking Care ofspend a Client’s Valuable Assets on research and development and marketing forecasts, andPatent not even of their products are successful. The Warall Game—Playing to Win Patent Law-From Bicycles to Biotech

When I evaluate risk for clients I use a spreadsheet. For example, if my client wants to enforce his patent against someone else, or if someone is going to enforce their patent against my client, I have a Reflections on the Practice of Patent Law spreadsheet using a probability analysis on infringement, validity, and probability of success. That Patents—Knowing the Value, the System spreadsheet merely gives aWorking dollar amount as a starting point for discussion. Risk is an extremely difficult thing to assess. You have to look at how aggressive the other party is and the potential benefits. Assessing risk and probability of success is probably the hardest part of my job. Unfortunately, many clients do not understand that a patent lawyer simply cannot assess risk with certainty. Patents—How the System Works

Inside theHas Minds: The Art & Science of Patent Law How the Industry Changed by Inside the Minds Staff

ISBN:1587623463

A change I have noticed the field of (245 patent law in the past five to ten years is that big firms are now AspatoreinBooks © 2004 pages) getting involved inThis thistext field. Patent law is now mainlyperspective practiced inonlarge firms. There is room for is an authoritative, insider’s the laws boutiques, but they are govern niche players. big firms haveand decided they need which patents,The the characteristics capabilities of to round out their successful the futuredepartments. of patent regulation, practices, and asthe a result, havepractitioner developed and large patent on a global scale.

Another change is that clients are becoming more litigation-averse because it is so expensive and unpredictable. Clients are working harder at avoiding patent litigation, rather than getting involved in it. Table of Contents However, I still see a lot of money being spent on research and development of patent filings. To Inside the Minds—The Art & Science of Patent Law protect their assets, companies continue to believe patents are an important part of their business. Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: The Art & Science of Patent Law The FutureInside of Patent Law by Inside the Minds Staff

ISBN:1587623463

I would like to seeAspatore this industry a little Booksbecome © 2004 (245 pages)more predictable. The U.S. Patent Office is overworked; many applications get delayed; and the inventor is unable to protect hislaws invention effectively. It would This text is an authoritative, insider’s perspective on the be beneficial if they could speed up thethe process and conduct better searches. which govern patents, characteristics and capabilities of the successful practitioner and the future of patent regulation, on acontinues global scale. Patent enforcement to be a crapshoot because it is still very difficult to predict what the court or a jury will do on any particular case. Now that judges construe patent claims in what are called Markman hearings, parties will know sooner than before where they stand in a case. However, the Table of Contents process for these hearings is not working well because there a relatively high number of reversals of Inside the Minds—The Art & Science of Patent Law lower court decisions by the appellate court. Fixing these procedures will help people decide whether Patent Law—Complex, Frustrating, and Rewarding they want to settle or perhaps pursue a motion for summary judgment early in a lawsuit. Of Better Mousetraps and Beaten Paths

Getting Right thetoFirst Patent Process I wouldItalso like see Time—The the patentBiomedical process become less expensive. Patents are becoming more and Communication—The Key toenforce, Success in Patentinto Law more costly to obtain and turning a Practice playground for only the big corporations, and small Toolkits, Football, and the Power of Patents companies and individual inventors are being shut out, which is not how the system is supposed to The Full-Service Patent Law Practice work. The Metes and Bounds of the Patent Application Process

A partner in Fulbright & Jaworski’s Houston office since joining the firm in 1998, Paul E. Krieger has been lead counsel in more than 50 patent, trademark, and copyright lawsuits throughout the United The Patent War Game—Playing to Win States. He is an author and a frequent lecturer on intellectual property topics to groups of attorneys Patent Law-From Bicycles to Biotech and business executives in the United States, Europe, and Asia. Taking Proper Care of a Client’s Valuable Assets

Patents—How the System Works

Reflections on the Practice&ofJaworski Patent Law Before joining Fulbright LLP, Mr. Krieger was a longtime shareholder in the firm of Pravel, Patents—Knowing Value,inWorking System Hewitt, Kimball &the Krieger Houstonthe and before that was a senior patent attorney for Dresser

Industries, Inc., in Dallas. Mr. Krieger’s earlier experience includes partnership at Lane, Aitken, Dunner & Ziems in Washington, D.C., and associate experience at Brumbaugh, Graves, Donohue & Raymond in New York, New York. With more than 30 years of experience in intellectual property law, Mr. Krieger leads one of the largest and most highly regarded IP departments in the United States. He also mentors students at the University of Houston, where he has been an adjunct professor at the Bates College of Law, teaching trademark and trade secret law courses, since 1985. He is listed in Who’s Who in the World, Who’s Who in America, and Who’s Who in American Law. Mr. Krieger earned his LLM degree at George Washington University and his LLB at the University of Maryland. He earned a BS in mining engineering at the University of Pittsburgh, where he was later a graduate assistant in mining engineering.

Inside the Minds: The Art & Science of Patent Law Reflections on the Practice of Patent Law ISBN:1587623463 by Inside the Minds Staff

Jay G. Taylor Ice Miller |Partner

Aspatore Books © 2004 (245 pages) This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale.

The Nuts and Bolts of Patent Law

Table of Contents

Patent law is a form of intellectual property law that provides inventors an exclusive right to exclude others from the manufacture, use, sale, or offer for sale of their patented invention. “Invention” is a very Patent Law—Complex, Frustrating, and Rewarding broad term that includes any new and useful process, machine, manufacture, or composition of matter Of Better Mousetraps and Beaten Paths and new and useful improvements thereof. The Court of Appeals for the Federal Circuit recently Getting Right Firstanything Time—The Patent Process stated It that justthe about thatBiomedical is new and useful can be classified as patentable invention. Thus, Communication—The Key to Success in Patent Law Practice forms of life, business methods, and computer software have all been found to be patentable Toolkits, Football, andprotect the Power of Patents inventions. Patents those new and useful inventions that help spawn innovation and advance The Patent Law Practice theFull-Service useful arts and sciences. Inside the Minds—The Art & Science of Patent Law

The Metes and Bounds of the Patent Application Process

To understand theofdifferences between patents and the other three forms of intellectual property law, it Taking Proper Care a Client’s Valuable Assets is useful contrast patents with trademarks, copyrights, and trade secrets. The PatenttoWar Game—Playing to Win Patent Law-From Bicycles to Biotech

As stated above, patent law protects new and novel inventions. Trademark law, on the other hand,

Patents—How System Works protects any the word, device, logo, symbol, trade dress, and so on, that is capable of distinguishing the Reflections on the Practice of Patent Lawor services from those of another – for example, Coke for cola source of origin of one party’s goods Patents—Knowing the Value, Working SystemTrademark law allows you to prevent another party from drinks and McDonald’s for fast foodthe services.

using your mark in a conformingly similar manner to lead consumers to believe the other party’s goods or services originate with you. Copyright law protects creative endeavors like written literary works (books, magazines, plays, newspapers), artistic works (paintings, sculptures) and choreographic works (ballet scores, dance routines). Basically, all of the creative artistic efforts that may derive from the human mind are potentially subject to copyright protection. Copyright law grants authors of works the exclusive rights to prevent others from reproducing copies of their work, distributing copies of their work, making derivative works from their work, displaying their work, and performing their work. Trade secret law protects any sort of useful information that has independent economic value because it’s kept confidential by the owner so that others, including competitors, do not know it. Trade secrets can include, for example, secret formulas, like the formula for Coke, confidential customer lists, and manufacturing processes and know how. Trade secret law prevents others from misappropriating your trade secret. For something to be patentable, it first has to fit within the statutory classification of being an invention. Once you get over that hurdle, which is relatively easy, the invention has to be new, novel, and unobvious in light of the prior art. Prior art is a legal term that means all public information and may include prior patents, publications, public uses and sales. If the invention is new, novel, and unobvious, it’s patentable. The U.S. Patent Act protects inventions only in the United States. Each country of the world has its own patent law, and each country’s law is slightly different. But by and large the concepts are very similar. For example, the European countries typically focus on what is called “an inventive step” or “an advancement in the art” in determining patentability. Those countries tend to focus on the difference between the invention as a whole and what is disclosed in the prior art to determine whether those differences are a sufficient advance in the art to merit a patent. However, it comes down to much the same test as in the United States – that is, would it have been obvious to one of ordinary skill in the art at the time of the invention to arrive at the invention based upon what was already known in the art? The European “inventive step” is a similar concept applied in a slightly different way, and a little more strictly than it is in the United States. In the end analysis, though, the patent laws are very similar, and if you can get a patent in the United States, you can usually get a patent in other countries. However, foreign patent law does not allow

patenting of certain technologies. Pharmaceuticals are not patentable in some countries; some countries do not allow patents for software. So the scope of protection is not uniform throughout the rest of the world. Inside the Minds: The Art & Science of Patent Law by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: The Art &for Science of Patent Law DevelopingInside a Patent Strategy Clients by Inside the Minds Staff

ISBN:1587623463

There usually isn’t a singleBooks reason a client wants to acquire a patent. It depends on the company, its Aspatore © 2004 (245 pages) business, and what the company is trying to in its market. This text is an authoritative, accomplish insider’s perspective on theThere laws are fundamentally four reasons for acquiring patent.patents, the characteristics and capabilities of whicha govern the successful practitioner and the future of patent regulation, on a one global The first and primary forscale. many companies is that they just want to have the exclusive right to manufacture, use, and sell that invention for as long as possible, so they can make as much money as possible from that invention. That’s the pharmaceutical drug company model – to have the patent on a Table of Contents drug, so they’re the only company that can sell that drug until the patent runs out. This allows premium Inside the Minds—The Art & Science of Patent Law pricing so they can make as much money as possible during the exclusive patent period. For new Patent Law—Complex, Frustrating, and Rewarding drugs or new pharmaceutical compounds nobody has thought of before, exclusive patent protection is Of Better Mousetraps and Beaten Paths a realistic possibility. Getting It Right the First Time—The Biomedical Patent Process

Communication—The Key to Success in inventions Patent Laware Practice However, for most technologies, the relatively minor improvements over existing Toolkits, Football, and Power of ahead Patentsthat lets you get the exclusive right to manufacture and sell a technology. There isthe no big leap The Full-Service Patent Law Practice whole new product and keep everyone else from making and selling that product. In the typical

industry, a case ofPatent patenting the keyProcess features and improvements and trying to create what I The Metes it’s andmore Bounds of the Application like toProper call a “competitive mineValuable field,” aAssets portfolio of patents that makes it as difficult as possible for your Taking Care of a Client’s competitors to Game—Playing compete. While The Patent War to you Win may not be able to keep your competitors from competing with you, you may beBicycles able toto make it difficult to compete easily and effectively. If you can cover the key Patent Law-From Biotech improvements necessary to make your particular product a desirable one in the marketplace, you Patents—How the System Works

force your competition to design around or eliminate that feature. That design- around may be costly and time-consuming, though, and eliminating the feature may make the competing product less Patents—Knowing the Value, Working the System desirable. So the patent strategy is to throw these little land mines (patents) out there to make it more difficult for your competition to work its way through that mine field. But typically, your competition is doing the same thing, so it’s often a trade-off. Reflections on the Practice of Patent Law

A third possible reason to acquire patents is to have as broad a portfolio as possible for defensive purposes. You know your competition is patenting everything they can think of, so defensively you try to patent everything you can think of. If you ever reach a head-to-head legal confrontation with your competitor, you’re in a much better position to start discussing settlement: It is much easier to reach a settlement if you can say, “While I might be infringing your patent, you’re infringing my patent. Let’s consider cross- license.” If you have taken the steps to protect as much technology as possible, it’s much more likely that you’ll be in a position to settle, and you won’t be at risk of having to stop manufacturing and selling your product and paying large amounts of damages. If your goal is simply to have as much paper as possible in your portfolio for defense purposes, the inventions the client seeks to protect will be relatively broad. That strategy goes hand-in-hand with a strategy of “knockoff” protection. For those clients who are predominantly competing against overseas competitors, their protection might be more directed to very insignificant features, but features you have to have if you’re going to “knock off,” or identically copy, that particular product. Patents on such things as bearing housings, brushing housings, and ways of attaching things may be very effective tools against knockoffs. A fourth reason you might want to acquire a patent is purely economic. You’re looking for a revenue stream from licensing your patents. Many companies make a lot of money doing nothing more than licensing their technology. Some very big companies make as much or almost as much money licensing their technology as they do making and selling their own products. If your client’s goal is to license its technology to make money, you look to patent technology that is very economically significant to a number of people, or necessary to a number of people to function effectively. Telephone technologies, manufacturing technologies, computer technologies, and software technologies have all been technologies that have produced significant license royalties. Those are the four basic reasons you may want to acquire a patent portfolio. If the company wants the blockbuster patent so that it can keep everybody out, then you look for those types of inventions that provide that type of protection. If the client merely wants to make life difficult for its competitors, then you look more to key improvements being made to their products, the market significance of those improvements, and the difficulty to design around a patent directed to that improvement.

When advising clients on its patent strategy, it is necessary first to find out the client’s goals. What does the client want to accomplish with their patent portfolio and patent strategy? Do they want to patent key Inside thesome Minds: The Art & Science of Patent technology that gives them sort of exclusionary right within aLaw field or market? Are they trying to ISBN:1587623463 by Inside Minds StaffAre they looking for knockoff cover improvements in oldthe technology? protection from foreign Books © 2004 (245 pages) knockoffs? Or areAspatore they trying to develop and patent technology that has value to others, so they can This text an authoritative, insider’s perspective the laws will affect what you want to license that technology forisroyalty income? The answers to theseonquestions do and what you which will trygovern to do. patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation,

a globalstrategy scale. for your client, you need to get as much information as you can Also to create anon effective about their business and how it functions in the marketplace. Often, the client’s perception of what they needofand what they actually do need are different. Sometimes it’s a matter of convincing the client that Table Contents they can’t accomplishArt what they think they want Inside the Minds—The & Science of Patent Law to accomplish because either the market or the technology will not permit them to doRewarding so. It’s an educational process both ways. You have to learn as Patent Law—Complex, Frustrating, and much asMousetraps you can about the client’s Of Better and Beaten Pathsbusiness and competition, and the client has to learn as much as possible about what can and can’t be done with theProcess patent process. Getting It Right the First Time—The Biomedical Patent Communication—The Key to Success in Patent Law Practice

Once the patent strategy is established, I advise my larger clients to establish a patent committee, if

Toolkits, Football, and the one, Power Patents invention disclosures submitted by employees and decide they don't already have toof evaluate The Full-Service Patent Law Practice which are worthy of search and possible application. A typical patent committee consists of at least

The andfrom Bounds of the Patent Application oneMetes person engineering or R&D, at leastProcess one person from marketing or sales, at least one person Taking Propermanagement, Care of a Client’s from upper andValuable usually Assets one person the financial side of the business for cost The Patent Warpurposes. Game—Playing to Win containment This mix usually allows a good analysis of the technical and commercial merits Patent to Biotech of theLaw-From invention,Bicycles its likelihood of usefulness to the business, and its patent strategy. Clients typically

want the attorney to get Works involved in the process of evaluating the disclosures and making the decision Patents—How the System of whetherontothe proceed. Often the client Reflections Practice of Patent Law wants the attorney input where it is a close question as to whether the invention is worthy of further action. Patents—Knowing the Value, Working the System It is also important for the client to understand that we need to learn as much as we can about the client’s technology. We have some clients give us a training seminar on their technology and what they’re trying to accomplish. They treat us as part of their staff training. That is the best of all worlds. Other clients however, are not so forthcoming, and we have to try to pull the technical information out of them as best we can. The inventors and the company’s Web pages provide helpful information about the client and their technology. Sadly, many clients either are too busy or don’t realize the importance of educating their patent attorneys on their technology. The better informed the patent attorney is, the better and less expensive the service to our client.

Inside the Minds: TheClients Art & Science of Patent Law Working Effectively With by Inside the Minds Staff

ISBN:1587623463

The most significant thingsBooks a manufacturing or service business needs to know to be successful are Aspatore © 2004 (245 pages) what the customer wants and how the business can most effectively and efficiently provide that to the This text is an authoritative, insider’s perspective on the laws customer. All businesses are driven bythe their customers. Aand company canof make the world’s greatest which govern patents, characteristics capabilities successful practitioner and the future of patent regulation, product, but if thethe customer doesn’t know about it or doesn’t want to buy it, the company will not be onother a global scale. successful. On the hand, a company that has done marketing research and makes a product somebody actuallyencoding="ISO-8859-1"?> wants, and makes it so it’s cost-effective and competitive, will be successful. The
The golden rules for working with patent clients are very similar. Know your client. Select a patent strategy that best protects the business interests and goals of your client. Implement that strategy as Communication—The Key to Success in Patent Law Practice cost effectively as you can. It’s also wise to periodically sit down with the client and review that strategy Toolkits, the Power ofthe Patents to makeFootball, sure it’sand accomplishing client’s intended goal, and if it isn’t, make the changes necessary The Full-Service Patent Law Practice to make it more effective. Getting It Right the First Time—The Biomedical Patent Process

The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

the Minds: The Art & Science of Patent Law The Patent Inside Application Process by Inside the Minds Staff

ISBN:1587623463

My advice varies Aspatore with the size and sophistication Books © 2004 (245 pages) of the client. If it’s a private individual – a basement inventor – I spendThis a lot of time explaining theinsider’s problems and expenses in acquiring a patent so text is an authoritative, perspective on theinvolved laws that there are no which surprises. I also explain even if I canand getcapabilities a patent for govern patents, thethat characteristics of them, it does not mean the successful and the future of patent client will be ablethe to market andpractitioner sell this invention. Too many timesregulation, I’ve gotten patents for people, and on atoglobal they’ve been unable take scale. it to the next level and start up a business or find anyone interested in either purchasing the patent or licensing the patent. I’ve had other instances where private individual clients have been very successful in marketing their invention. Nonetheless, I always want people to Table of Contents know the up front, beforeArt they spend aoflot of money Inside Minds—The & Science Patent Law acquiring a patent, that a patent doesn’t necessarily meanLaw—Complex, they’ll make any money from invention. Patent Frustrating, and the Rewarding Of Better Mousetraps and Beaten Paths

Typically, upon receipt of an initial disclosure, we run a patentability search. It usually takes between 30 and 60 days to get the search and prepare an opinion. If it’s favorable, the patent application Communication—The Key to Success in Patent Law Practice process can usually take another 30 to 60 days. This timing can be expedited depending on whether Toolkits, Football, the that Power of Patents there are any barand dates have to be met. Getting It Right the First Time—The Biomedical Patent Process

The Full-Service Patent Law Practice

Occasionally, we have inform client that we cannot acquire a patent for them. There are several The Metes and Bounds ofto the Patenta Application Process reasons we might turn a clientValuable away. One is that their development is simply not patentable because Taking Proper Care of a Client’s Assets they have War waited too long to seek protection. The Patent Act provides that an inventor cannot acquire a The Patent Game—Playing to Win patentLaw-From for an invention that invention has been in public use or on sale for more than one year. Patent Bicyclesifto Biotech Occasionally,the anSystem inventorWorks starts the commercial process long before thinking of seeking patent Patents—How

protection to see how successful the invention will be before spending the money for a patent. If the inventor waits too long, the invention is barred.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the System

More frequently, we have to inform an inventor the invention is not patentable because it is disclosed in the prior art. That’s the typical case. You run the search, you compare the prior art to the invention, and you determine you cannot acquire meaningful patent protection for the client. If the search results are positive, however, we recommend moving ahead with a patent application. The application preparation process begins with understanding the invention. If you do not know what the invention is and how it works, you cannot prepare a competent patent application. Next, you have to understand what the prior art discloses and how to draft around it. Typically, your patentability search gives you a good idea of what you’re up against, although the patent examiner might find better prior art during examination of the application. Once you understand the invention and the prior art, then it’s a process of drafting a specification and claims that cover the subject matter as broadly as possible, while distinguishing over the prior art you know about. Ideally, you want to get claims that require a minimum of prosecution and amendment so that the scope of interpretation is as broad as possible, and consequently, the scope of protection is as broad as possible. Probably the most difficult part of the patent application process for the patent attorney is drafting claims you feel will protect the invention while distinguishing over the prior art. The claims must be narrow enough to get around the prior art, but be broad enough to provide a decent scope of protection. This is the most challenging aspect of any patent application. After filing the application, the time frame for the patent prosecution process depends on the Patent Office. You can expect the patent application process to take from a year-and-a-half to three-and-ahalf or more years, depending on the technology involved. Certain Patent Office art groups are so far behind, you can’t expect a first Office Action for at least two years. For other art groups, you can receive an Office Action six to 12 months after filing. Thus, the time required is a function of the type of invention, the applicable art group, and the efficiency of operations of that art group.

Inside the Minds: The Art & Science of Patent Law Defining Success by Inside the Minds Staff

ISBN:1587623463

Usually, there is no way toBooks determine Aspatore © 2004whether (245 pages)success is even possible until after the search. You cannot tell a client whether it is possible to acquire a patent until on after search. I’ve had too many This text is an authoritative, insider’s perspective thethe laws instances where even client’s is not and on the market now, the search shows that whichthough govern the patents, theinvention characteristics capabilities of the successful practitioner the future patent somebody else thought of it years ago, gotand a patent for it,ofbut it wasregulation, not successful in the marketplace. a global I’ve had instancesonwhere youscale. could literally take the drawing of a prior art patent and substitute it for the drawing in the encoding="ISO-8859-1"?> client’s invention disclosure. In one instance, the prior art patent was more than 100
My strategy for success hasn’t changed over the years. The key is do a good search, know what’s out there, and then determine whether you can get meaningful patent protection for the client. Sometimes Getting It Right the First Time—The Biomedical Patent Process you simply have to tell the client that there’s just no way, that every aspect of this invention is covered Communication—The Key to Success in Patent Law Practice by the prior art. Of Better Mousetraps and Beaten Paths

Toolkits, Football, and the Power of Patents

The Full-Service Patent Usually, however, youLaw canPractice find some improvement that is not disclosed in the prior art, and then it

becomes an issue of of whether the client thinksProcess a patent covering that improvement is significant enough The Metes and Bounds the Patent Application to warrant theCare costofofa aClient’s patentValuable application. We’ll go back to the client and tell them they can get either Taking Proper Assets broad protection, limited protection, The Patent War Game—Playing to Win or no protection, whichever applies. We try to explain to the client whichLaw-From features we think to weBiotech can get protected and which we can’t, and then the client makes the Patent Bicycles decision as tothe whether protection warrants the expense of the patent application. Patents—How Systemthat Works Reflections on the Practice of Patent Law

Success can be measured differently, depending on the situation. In patent litigation, it’s winning and

Patents—Knowing the Value, Working the prosecution, System recovering money damages. In patent it’s much more difficult to determine success

because while you may get a patent, and that’s one measure of success, you never actually know how important or how significant that patent might be because you don’t know what problems or havoc it may have created for the competition. You may think it’s a relatively insignificant patent, but because it’s in your portfolio, your competitors may be tearing their hair out trying to figure out how to design around it. Usually you’ll never know that unless your competitors were unsuccessful and you are able to sue for infringement.

Inside the Minds: The Art & Science of Patent Law Enforcing Patents by Inside the Minds Staff

ISBN:1587623463

Clients often fail to adequately their patent rights. If you go to all the expense and trouble to Aspatore Booksenforce © 2004 (245 pages) acquire those patents in the first place, you ought to have an effective This text is an authoritative, insider’s perspective on themeans laws of investigating and determining whether they are being infringed. Far too often, acquire which govern patents, the characteristics andclients capabilities of patents, but put them in a the successful practitioner andtothe future of patent is regulation, file drawer and never pay attention thereafter whether anybody infringing those patents. If you go a global patents scale. and developing a portfolio, it’s only prudent business to police to the expense ofon acquiring those patents and encoding="ISO-8859-1"?> to make sure you’re getting the full value out of them. Full value is achieved only if
Pre-litigation analysis typically begins with determining whether there is clear infringement. If there is infringement, and you’re relatively comfortable that the patent is valid, then it becomes an issue of cost Communication—The Key to Success in Patent Law Practice versus risk analysis, as in any business. What are the potential damages being caused by the Toolkits, Football, and are the Power of Patents infringement? What the projected costs of litigation? What are the probabilities of success? Getting It Right the First Time—The Biomedical Patent Process

The Full-Service Patent Law Practice

I tryMetes to frame litigation as a business judgment for the client: “Here’s what we think it will The and the Bounds of theanalysis Patent Application Process cost toProper prosecute thisa case. Here are the damages you can expect to recover. Here are the other Taking Care of Client’s Valuable Assets intangibles thatGame—Playing must be considered.” The Patent War to Win Basically, the analysis comes down to what it will cost to prosecute this case, howtobig the pot of gold is at the end of the rainbow, and what risk factors you have Patent Law-From Bicycles Biotech to consider. The business decision is ultimately up to the client. We’ll advise them as to the strengths Patents—How the System Works

and weaknesses, and all the aspects of the risk-reward analysis, but ultimately the client has to make the decision on whether to file a lawsuit.

Reflections on the Practice of Patent Law

Patents—Knowing the Value, Working the System

For patent litigation, I think the ultimate challenge is an issue of proper advocacy. The challenge is to make the court or the jury understand what the case is about so that they can make a rational and sound decision. So the technology and the law must be explained in terms the average layman can understand. It is critical to select expert witnesses who can relate to the court or jury and explain things in a manner that can be easily comprehended. You may have the best case in the world, but if you cannot explain it to the court or jury so that they understand, you will not win.

Inside the Minds: The Art & Science of Patent Law Dealing with Industry Changes by Inside the Minds Staff

ISBN:1587623463

Over the years, I Aspatore have sought patents many Books © 2004 in (245 pages)diverse areas of technology. For example, I have been involved in such diverse technological fields electro-mechanical This text is an authoritative, as insider’s perspective on devices, the laws pollution control apparatus, electronic ceramic curable whichequipment, govern patents, the compositions, characteristics ultraviolet and capabilities of inks, digital equipment, themedical successful practitioner and the future ofcompositions patent regulation, computer software, and dental devices, chemical and processes, micro-dialysis on a globaldevices, scale. gasoline distribution devices, automotive lighting applications, probes, hearing protection automotive electronics, and high- voltage electrical transmission equipment. Some practitioners tend to limit their practice to specific fields of technology, like chemistry or pharmaceuticals, and become Table of Contents experts that field. But practitioners, me, either do not or cannot specialize in any field Inside theinMinds—The Art most & Science of Patent including Law of technology. Rather, most patent Patent Law—Complex, Frustrating, andpractitioners Rewarding take a very broad-brushed approach and handle matters involving a wide variety Paths of technologies, the breadth of which makes it more difficult to keep up Of Better Mousetraps and Beaten with changes in technology. Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice

Dealing with change is a function of trying to keep up as best you can with the technology itself,

Toolkits, Football,the and the Power of Patents understanding technology, and understanding where the industry is going and why. There’s been a The Full-Service Patent Law Practice constant shift over the years of various industries from the electro/mechanical side to the softwareThe Metes and Bounds side. of theTypically Patent Application Process controlled computer today most pieces of equipment that are doing something useful Taking Proper Care ofto a Client’s Valuable Assets and software; whereas, 35 years ago those machines are doing it subject control by a computer The Patent War Game—Playing to Win would have been human- controlled. Patent Law-From Bicycles to Biotech

Recently, because of changes Patents—How the System Works in technology, much of what I do has been in the area of computer

software technology. That area of technology has expanded dramatically in recent years. Twenty years ago, the personal computer was an expensive toy that few could afford. The mainframe dominated the Patents—Knowing the Value, Working the System business market, and the average businessperson had little if any direct contact with computers. It took a staff of highly trained personnel to support and operate a mainframe computer system. Very few people, in those days, envisioned the impact that PCs and software for PCs would have on the business world in the coming few years. Today, networked PCs and software control most aspects of modern business, including manufacturing, inventory, purchasing, human relations, finance, sales, messaging, and word processing. Even the company’s telephone and voice mail system is computer controlled. All of that software has been developed in the last 20 years, and new software is being developed daily to make businesses more productive and efficient. That is one reason the United States is the most productive economy in the world. Reflections on the Practice of Patent Law

Software patent applications are considerably different from mechanical, chemical, and electrical applications. Each is a very different animal. Unlike mechanical patent applications or electrical patent applications, which are typically structural in nature, software patent applications tend to be more functional in nature. The computer is being programmed to perform a specific function or series of functions. So the claims of software patents tend to be functional in nature. It is hard to avoid using the more limited “means for” format. Over the years, I’ve had to educate myself about computer technology and software. When I was in college, a computer typically filled the whole wing of a building, with an air conditioning unit the size of a house to keep it cooled down. Programs were on punch cards that filled up an entire file drawer. Storage was on massive tape reels that filled another entire room. We’ve now reached the point where I have more computing and storage capacity on my desk than an entire building had when I was in college, and in fact there is probably more capacity in my wristwatch than in those early computers. Computer technology has changed dramatically over the years, and the older generation has been forced to keep up. My background is mechanical engineering, but I had a fairly high concentration in electrical circuitry while I was in college. I was a coop student, and my co-op job was predominantly electronic. So I learned a lot about electronic circuitry when I was in college, but computer technology was barely in its infancy. Only one digital computer course was offered when I was in college, and that was a programming course in a language that is now obsolete. Today, if you’re not computer literate and don’t know what you’re doing around a computer, there’s hardly any business you can pursue. If someone had told me I could not practice law by the time I got ready to retire without having a computer sitting on my desk, which I would have to use constantly, I would have thought they were crazy. But that’s the way it is, and the practice of law will get more and more dependent on technology.

Technology will become more and more important in all aspects of business, so you just have to learn and adapt and go forward. Inside the Minds: The Art & Science of Patent Law

Most of my technical knowledge has been acquired over the years by working directly with clients. I’ve ISBN:1587623463 Inside the Minds Staff been lucky in thatbyI’ve had so many different technologies to work with. One of the beauties of patent Aspatore Books © 2004 (245 pages) law is that if you are scientifically curious, it’s a wonderful field because you can learn so much about textOut is an on how the laws so many differentThis fields. of authoritative, necessity youinsider’s learn soperspective much about things work. It’s fascinating. which govern patents, the characteristics and capabilities of

the successful practitioner and the future of patent regulation, When I was a boy, I was always curious about how things worked. Patent law has been an extension of on a global scale. that inquisitiveness. I’ve looked into everything from ceramics to electronics. I’ve found them all to be fascinating, interesting fields. And now it’s becoming more and more driven by computer technology Table of Contents and computer software. Inside the Minds—The Art & Science of Patent Law

Life sciences are alsoFrustrating, becoming and more important. Additionally, nanotechnology is becoming more Patent Law—Complex, Rewarding significant and may and be aBeaten whole Paths new field that may be driving our economy ten years from now. There Of Better Mousetraps are so Itmany happening, that Patent it’s interesting Getting Rightdifferent the Firstthings Time—The Biomedical Process and exciting, but it is difficult to keep up. Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art & of Science of Patent Law The Evolution and The Future Patent Protection by Inside the Minds Staff

ISBN:1587623463

There has been aAspatore series ofBooks changes patent law that are very significant, starting with the evolution of © 2004in(245 pages) the protection of software. Twenty years ago, the protection of software was virtually impossible. Today This text is an authoritative, insider’s perspective on the laws it’s fully recognized thatgovern you can either the protect it as part ofand a computer or protect it as an entity which patents, characteristics capabilitiessystem, of successful practitioner and the future of patent as long as it’s in athe form that meets the statutory requirements. Thatregulation, process took a number of years a globalby scale. and a number of on decisions the Court of Appeals for the Federal Circuit, the Supreme Court, and otherversion="1.0" courts. Today, it’s well accepted that if you draft your claims correctly, you can protect software. Table of Contents

Another significant change has been the allowance of patents on living things – patents on modified bacteria, patents on multi-celled life – which, once again, is protection that has evolved only in the last Patent Law—Complex, Frustrating, and Rewarding few years. Another area of major change is patents for business methods. When I started in this Of Better Mousetraps and Beaten Paths business 36 years ago, the accepted mantra was that you could not get a patent for a business Getting It Right the First Time—The Biomedical Patent Process method. It was just accepted as gospel without question. That’s now changed. Recently, the Court of Communication—The Key to Success in Patent Law Practice Appeals for the Federal Circuit reviewed all of the law and concluded that there is no basis to say a Toolkits, Football, the different Power of from Patents business methodand is any any other kind of method. They are protectable and patentable. The Full-Service Patent Law Practice Consequently, today you can protect a new and novel business method. The issue is: What is new and The Metes andPatent Bounds of the Application Process a library of prior art so they can adequately novel? The Office is Patent struggling with developing Taking Proper Care of a Client’s Valuable examine business method patents, butAssets they had the same problem with computer software 20 years The War able Game—Playing to Win a suitable library and conduct effective examination. agoPatent and were in time to develop Inside the Minds—The Art & Science of Patent Law

Patent Law-From Bicycles to Biotech

I think there’sthe nothing butWorks an upside for the future of patents. There will be a continuing concentration Patents—How System on protection of technology because the business world is becoming more and more technically oriented and technology-driven. More and more companies will focus on protecting their technology Patents—Knowing the Value, Working the System and their intellectual capital through intellectual property protection, particularly patents. Reflections on the Practice of Patent Law

We’ll see more and more patent activity by more and more businesses, at much earlier stages, and it will become a very significant part of any company’s evaluation. You see that now with smaller start-up companies. The first thing the venture capital people want to know is whether you have protected your technology – that is, what patents you have and what they cover. That will continue to be more and more the case in the future. When I started in this business, the general philosophy was that patents were fine for the big companies, but they weren’t worth much for the little companies. The perception in those days was that patents were rarely enforced, and when they were enforced, it cost a lot of money to do it, and the recoverable damages were not great. The likelihood of having the patents held valid and infringed was slim, so why spend all that money to acquire patents when it didn’t do your business any good? Over the years that attitude has changed dramatically, particularly after the Court of Appeals for the Federal Circuit was created in the early 1980s. The Federal Circuit took it as their mandate to make the patent system stronger and more beneficial to business by enforcing patents more broadly and awarding greater damages. Consequently, the patent system went through a metamorphosis after 1982, so that now companies recognize the need for patent protection to protect their technology, to insulate them from their competitors, to give them a good position in the marketplace either offensively or defensively, and hopefully to develop a revenue stream, through licensing their technology so that they can make a profit for the company from their technology. The key in the next ten years will be whether the Patent Office can keep up with the rapidly advancing technology. As I mentioned earlier, businesses and the economy will be more and more driven by new technology. If nanotechnology, for example, does develop as anticipated, it could revolutionize many different areas, such as how computers are made and what they contain. The life sciences field is expanding dramatically, with new methods of treatment of sicknesses, new ways of testing for illnesses, and new devices for treatment of disease and injury. I think there will be a pronounced change in the American economy in the future because we’re rapidly shifting away from being a smokestack manufacturing economy to being a new technology- and service-driven economy. Twenty years from now, if you don’t have a background in some technological field, it will be difficult to get a good paying job. We’ll be more and more driven to be increasingly efficient in how we build things and what we build; consequently, that will mean more

technology and more emphasis on protecting that technology. I believe it would be in the best interest of this country and the rest of the world if we came to a more Inside the Minds: The Art & Science of Patent Law uniform patent system throughout the world. If something is patentable in the United States, it should ISBN:1587623463 by Inside the Minds Staff also be patentable in the rest of the industrialized nations of the world. We shouldn’t have the situation Aspatore Books © 2004 (245 pages) where something is patentable in the United States, but not other countries, or that something is This text is anbut authoritative, insider’s onsituation the laws tends to force certain patentable in those countries not patentable here.perspective The current which govern patents, the characteristics and capabilities of technologies to concentrate in those countries that provide the best protection, to the exclusion of the successful practitioner and the future of patent regulation, countries that don’t on provide a global any, scale.or provide limited, protection. For innovation and patent protection in general, it would be better if we had a more uniform global system; then you wouldn’t have to worry about someone knocking off your technology in a country where you can’t get protection for your Table of Contents technology. This will provide the greatest protection for new technology, which in turn will stimulate Inside the Minds—The Art & Science of Patent Law innovation and economic development. Patent Law—Complex, Frustrating, and Rewarding

Of Better Mousetraps and Beaten Paths Jay G. Taylor is a partner with and chairman of the Intellectual Property Group of the firm of Ice Miller.

BeforeItmoving to Indianapolis in 1990, he practiced intellectual property law in Chicago for more than Getting Right the First Time—The Biomedical Patent Process 20 years, first with Kirkland & Ellis and then Law with Practice Haight & Hofeldt, a firm specializing in patent Communication—The Key to Success in Patent litigation. Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice

Mr. Taylor received a BSME degree from the University of Cincinnati and a JD degree, magna cum laude, from Indiana University.

The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets

The Patent War Game—Playing to Winhas been involved in hundreds of intellectual property cases. As a In his litigation practice, Mr. Taylor Patent Law-From to Biotech litigator, he has Bicycles been involved in the mediation and settlement of more than a hundred cases. He has

also served as expertWorks witness in patent cases, including design patent cases. Mr. Taylor has had Patents—How thean System experience all Practice aspectsof ofPatent licensing, Reflections oninthe Law acquisition of and risk counseling regarding intellectual property rights. In his trademark practice, Mr.the Taylor has represented nationally known trademark franchises, Patents—Knowing the Value, Working System international businesses, and start-up businesses, and he has counseled those businesses regarding the selection, protection, and enforcement of trademark, service mark, and trade dress rights, and the protection and enforcement of trade secret rights. Mr. Taylor has represented authors, artists, and agents in connection with the protection and commercial exploitation of their copyrighted works. Mr. Taylor has been active in the American Bar Association, the American Intellectual Property Law Association, the Chicago Intellectual Property Law Association, and the Federal Circuit Bar Association. He is a past chairman of the Patent, Trademark & Copyright Section of the Indiana State Bar Association. He is the author of articles on intellectual property law appearing in the Indiana and Illinois Bar Association Journals, and has been a speaker at numerous CLE seminars.

Inside the Minds: The Art & Science of Patent Law Patents—Knowing the Value, Working the System ISBN:1587623463 by Inside the Minds Staff Aspatore Books © 2004 (245 pages) William L. LaFuze Vinson & Elkins This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of Partner

the successful practitioner and the future of patent regulation, on a global scale.

Good and Better Ideas

Table of Contents

Thepatent law in this country is founded on policy that is embodied in the United States Constitution. The founding fathers wanted a system that encourages innovation. In the Constitution they provided a Patent Law—Complex, Frustrating, and Rewarding foundation for laws that promote science and the useful arts. The Constitutional provisions set forth Of Better Mousetraps and Beaten Paths such a framework. Inside the Minds—The Art & Science of Patent Law

Getting It Right the First Time—The Biomedical Patent Process

Communication—The to Success Patent Law Science and the artsKey translate into in patent law forPractice science and copyright law for the arts. We encourage

innovation, and we writing and literary creativity. The Constitution allows lawmakers to Toolkits, Football, andalso the encourage Power of Patents pass patent laws and Law copyright laws. The Full-Service Patent Practice The Metes and Bounds of the Patent Application Process

The patent laws, on a broad level, are basically a contract between the government and an inventor. There is a trade-off: People come up with new ideas – that’s innovation – which are the subject of the The Patent War Game—Playing to Win patent system. The patent law requires inventors to publish their inventions and make them publicly Patent Law-From Bicycles to Biotech available. In exchange, the government gives a limited monopoly to inventors. For a long time in this Patents—How the System Works monopoly was 17 years from the date of issue of the patent. But country, the term of the limited Reflections on the Practice Lawto make the term 20 years from the date of filing the patent recently, the law changedofinPatent the U.S. Patents—Knowing Working the System application, with the the Value, possibility for relatively minor adjustments, depending on certain events that may occur during prosecution of the patent application. Taking Proper Care of a Client’s Valuable Assets

The of publishing these ideas and making them publicly available is to allow everyone to see the new ideas, and in turn, build on them and come up with further technological improvement and even better ideas. That is the fundamental principle of the U.S. patent system. The primary users of the patent system are inventors. Some of them may work in universities or in academic institutions, and independently in their garages at home. Many of them are employed inventors working for corporations – entities that, as part of their overall business strategy, attempt to innovate by investing in people who operate in an innovative environment, like researchers and scientists. But the industry doesn’t stop there. In its broadest sense, the patent industry includes people, like patent attorneys, who work with inventors and provide a liaison between inventors and the U.S. Patent and Trademark Office (USPTO). The USPTO employs technically trained examiners who conduct the examination process to determine which patent applications should be granted, based on what is found to be in the public domain. The PTO itself is a part of the industry. There are a number of other peripheral service providers. There are people who run errands at the Patent Office and find things. And there are private patent searchers who analyze new technology to determine prior to filing a patent application whether new technology is potentially patentable. They search the patent office files to try to help determine what will happen during an examination by a patent examiner in terms of comparing the invention with that which is in the public domain. There are different kinds of patents. Most people think of patents as solely utility patents, which constitute the vast majority of all the patents that are issued. There are also design patents. You can get a patent on a new design for something that has some aesthetic novelty. You can also get a patent on certain kinds of plants that are asexually reproduced. Utility patents are required to be a machine, a process, a composition of matter, an article of manufacture or an improvement of those categories of inventions. The subject of a utility patent has three features: 1. It must be novel, which means generally different from that which is in the public domain. 2.

1. 2. It must be unobvious. An invention, although novel, is not patentable unless it adds a sufficient quantum of advance, in scientific context. In other countries of the world the obviousness is called “anInside inventive In other words, it has toofbe something thestep.” Minds: The Art & Science Patent Law more than just an incremental improvement of what has been done in the past. ISBN:1587623463 by Inside the Minds Staff 3. It must be Aspatore useful. Books © 2004 (245 pages) This text is an authoritative, insider’s perspective on the laws which govern of The two most important criteriapatents, are thethe firstcharacteristics two – it has toand be capabilities new and unobvious, since most the successful practitioner and the future of patent regulation, inventions are useful. on a global scale.

Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Minds: The Art & Science Patent Law Keeping UpInside withthethe System with theof System by Inside the Minds Staff

ISBN:1587623463

My background isAspatore computers, electronics, and physics. I do not do biotechnology work, and I do not do Books © 2004 (245 pages) usually do complex chemical patent work because not haveon more This text is an authoritative, insider’sI do perspective the than laws basic training in those areas. I handle virtually all subject matter biotechnology and complex chemistry. which govern patents, theexcluding characteristics and capabilities of the successful practitioner and the future of patent regulation, a global scale. I work with thingson I understand. Although I am not knowledgeable about most inventions, I have the basic intelligence, training, and education to understand what inventors describe to me. It is a matter of being Table ofprepared Contentswith the tools so that a client can educate me about their invention. I must understand it well enough to be able to compare it with what is in the public domain, so I can describe what is new Inside the Minds—The Art & Science of Patent Law and different and unobvious in the patent claims. Patent Law—Complex, Frustrating, and Rewarding

Of Better Mousetraps and Beaten Paths I am a part of the system. I am a service provider. I have a great deal to do with helping inventors use Getting It Right the Firstdo Time—The Patent Process the system. Inventors not knowBiomedical enough about law, nor do they know enough about the process, to Communication—The Key to Patent Law Practice actually use the system. SoSuccess lawyersinare actually an essential part of the overall framework of the Toolkits, Football, and the Power of Patents patent system. The Full-Service Patent Law Practice

Ultimately, if you get aofpatent, a patent ownerProcess has the right only to exclude someone else from making, The Metes and Bounds the Patent Application using, selling, or importing the invention. The only way to enforce the patent is through the courts. You could have a patent issued and go through all of the expenses of litigation, but if the patent application The Patent War Game—Playing to Win is not prepared carefully and properly, you may have a piece of paper that, because of defects, cannot Patent Law-From Bicycles to Biotech be used to enforce your rights against someone who has infringed on that patent. I feel I am an Patents—How the System Works important part of the process. I help people get patents. When they find infringers, I help them go to Reflections on the Practice of Patent Law court and get the court to stop infringers from infringing patents. I help the court and juries to Patents—Knowing theand Value, Working the System understand, value, award damages for which patent owners are fairly compensated for infringement. Taking Proper Care of a Client’s Valuable Assets

When we hire attorneys, we look for people who are intelligent and who have performed extremely well in school. We look for people who can communicate well with other people. Being a patent lawyer requires a high level of interpersonal skill because we must communicate effectively with people every day – our clients, our adversaries, juries, judges, and each other. We negotiate transactions. We do a lot of reading. Those interpersonal skills are not generally taught in law school. But knowing how to deal with people is a very important quality in assessing the value of an effective attorney. On the technical side, I do little to stay on top of technical developments except through client work and projects. My primary business is to keep up with the law. That is a full-time job. I keep up with the law, and I expect my clients to teach me the technology. Inventor types range across the spectrum. On one end are people who are so solely technical that they understand their subject, but can’t teach it easily to others; on the other end are people who can both understand it and teach it. I cannot think of a stereotype inventor. Inventors are people. Some are great educators; some are very poor educators. We attorneys are trained to cross-examine and ascertain the truth. So even for clients who are innovative and not good educators, we are trained to seek out the important information we need to know to assist them.

Inside Process the Minds: The Art & Science of Patent Law How the Patent Works by Inside the Minds Staff

ISBN:1587623463

When a client comes into Books the office, the first thing to do is to look at the likely scope of protection of his Aspatore © 2004 (245 pages) invention and assess potential value. Sometimes people come up that are patentable. This text is an authoritative, insider’s perspective onwith the inventions laws But if the patent protection is limited to the such an insignificant thatof feature may not be of much which govern patents, characteristics andfeature, capabilities the successful practitioner and the future of patent regulation, commercial value. on a global scale.

The first step of the process is to determine whether any patent protection is available. The next step is to determine the scope of protection. The third step is to try to ascertain the potential commercial value Table of Contents of that protection. Many great ideas have no value. In contrast, many seemingly simple ideas have Inside the Minds—The Art & Science of Patent Law tremendous value. Patent Law—Complex, Frustrating, and Rewarding

Of Better Mousetraps and Paths is of interest to only a very small population of people. For Sometimes the value of Beaten an invention Getting It Right the First Time—The Biomedical Patent Process example, you might have something that, in the abstract, has great value, but if there are only a dozen Communication—The Key to Success in Patent Practice people in the world who have any interest in Law it, even if you get a nice payment, the total value is not Toolkits, Powerhand, of Patents likely to Football, be high. and On the other if you come up with an invention for which there is a large volume The Full-Service Patent Law Practice of sales – for example, diapers or automobiles – even if the value is small on a per- unit basis, the total

value canand be high. The Metes Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets

In terms of the filing strategy, ultimately you have to balance the cost of getting a patent against the ultimate reward to determine whether it is cost-effective and worth moving forward to get patent Patent Law-From Bicycles to Biotech protection. If a client comes in with a patent and wants to sue someone, for example, and the ultimate Patents—How the System Works potential recovery is small or the benefit of an injunction is insignificant, we would not generally advise Reflections on the Practice of Patent Law them to waste their money if the benefit is not worth the cost. The Patent War Game—Playing to Win

Patents—Knowing the Value, Working the System

Many clients do not have the money to participate and pay for the lawyer’s hourly fees involved in the litigation system. In these cases the lawyers may be asked to work on a contingent fee basis, in which there is sort of a partnership and a sharing of the risks and rewards. But a client could come in and say to his attorney that someone is infringing his patent, and the potential recovery of damages is so small that it would not make sense for the lawyer to invest time and effort. Even if the attorney is entitled to a significant portion of the recovery for a fee, it may not make economic sense for anyone to use the system to enforce a patent when the recovery does not pay reasonably for the expected work effort. There are many cases in which a patent has effectively little or no value, and it does not make sense economically for anyone to pursue a patent infringement claim. As far as competition goes, inventors don’t use patents generally as vehicles for avoiding the technology of competitors. The goal in getting someone a patent is to get the broadest coverage that you can possibly get them, so you can protect their invention. That process does not necessarily involve staying clear of anybody else’s patent. Patents often overlap. For example, if you had a patent on the first personal computer, and I saw your personal computer and found a way to make it better, my improved computer may infringe your basic personal computer patent, but it means that we now have blocking patents. I cannot make my improved computer without permission from you. You cannot make your basic invention using my improvement without permission from me. So each of us actually needs permission from the other to make an improved personal computer. This overlap situation is normally handled through an exchange of licenses so that both inventors can practice the best possible technology.

the Minds: The Art & Market Science of and PatentValue Law Evaluating Inside a Patent Portfolio: by Inside the Minds Staff

ISBN:1587623463

When evaluatingAspatore a patent Books portfolio, you(245 must determine what rights the patent owner has that are © 2004 pages) exclusive and thatThis givetext them a competitive advantage in the marketplace. It requires a very is an authoritative, insider’s perspective on the laws sophisticated analysis. which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. For most innovations, multiple patents cover a given product. It is not usually a matter of analyzing only one patent but, rather, analyzing a group of patents that one company owns and comparing that group against another group of patents another company owns. You are trying to determine what segment of Table of Contents the market somebody has exclusive rights in and then assessing commercial value. At the end of the Inside the Minds—The Art & Science of Patent Law day, what you learn is that patent protection is important, but the ability of companies to market, Patent Law—Complex, Frustrating, and Rewarding advertise, and sell the products is every bit as important as the underlying value of the patent Of Better Mousetraps and Beaten Paths protection, if not more so. Getting It Right the First Time—The Biomedical Patent Process

Communication—The Key to meetings Success inwhere Patentcompanies Law Practice When you go to business are trying to start up, you often hear that the Toolkits, Football, and the Power Patents three most important things in aofnew business are marketing, marketing, and marketing. Patents have The Full-Service Practice their place, andPatent if you Law do not have a good idea, you probably can’t market it. But if you have a great

ideaMetes and you not have good marketing The and do Bounds of thea Patent Applicationstrategy Process and marketing people, you can fall flat on your face because youof doa not haveValuable the talent to get even a potentially great product to market. Taking Proper Care Client’s Assets The Patent War Game—Playing to Win

The biggest misconception about patents is a misunderstanding of the market and value. Inventors often come up with great ideas, but sometimes have no ability or talent for assessing value. Many Patents—How the System Works inventors believe that, if they get a patent, they will be millionaires, which is not the case at all. An Reflections on the Practice of Patent Law inventor can be awarded a patent that satisfies the requirements of the patent law, but is totally Patents—Knowing theno Value, Working the System worthless because one has any interest in it, and there is no commercial demand for the invention. Patent Law-From Bicycles to Biotech

There are many patents on various types of devices in the toy industry, for example. You can come up with a toy that meets the requirements of the patent law – but one that nobody wants. Someone assumes that because you get a patent, it has value. Many patents on the books have no value at all.

theGlobal Minds: The Art & Science of Patent Law The FutureInside of the Marketplace by Inside the Minds Staff

ISBN:1587623463

One challenging Aspatore aspect about intopages) the future is that new technologies come along and do not Bookslooking © 2004 (245 fit the traditional categories of patentable subject matter. Over my This text is an authoritative, insider’s perspective on30-year the lawscareer, one such subject matter that arosewhich was computer software. a long period of time, court govern patents, the Over characteristics and capabilities of decisions were conflicting the successful practitioner and the futurecame of patent regulation, about whether software was patentable. Biotechnology along and raised questions of the a global scale. patentability of lifeonforms. And in the 1990s, the courts clarified that business methods are patentable subject matter. encoding="ISO-8859-1"?>
By and large, the patent system works for its intended purpose. The patent system symbolically dangles a carrot in front of anyone who has the ability to come up with something patentable. If Patent Law—Complex, Frustrating, and Rewarding someone comes up with something patentable and they are able to get a patent on it, they then have Of Better Mousetraps and Beaten Paths created a property right, which they can potentially take to the bank and actually make money on. Inside the Minds—The Art & Science of Patent Law

Getting It Right the First Time—The Biomedical Patent Process

Communication—The Key to on Success in Patent Practice inventors with PhDs. Many inventors who are People who make money patents are notLaw necessarily Toolkits, Football, the up Power Patents to everyday problems and make lots of money. There are “ordinary” peopleand come withofsolutions The Full-Service Patent Law Practice myriad examples of people who invented items of value like Velcro material. It does not necessarily

take a rocket scientistoftothe come up Application with things Process that are patentable. Obviously, many sophisticated The Metes and Bounds Patent inventions areCare the of subject of patents, there are many seemingly simple inventions that have made Taking Proper a Client’s Valuablebut Assets people’s efficient, have The Patentlives War more Game—Playing to Winmade things more cost-effective, and have improved everyone’s standard of living. Patent Law-From Bicycles to Biotech Patents—How the System Works

One of the great developments of the last 20 years, I would say, is the global marketplace. If an invention has value in the United States, it probably has value in Europe, China, Japan, and other Patents—Knowing the Value, Working the System industrialized countries all over the world. Accordingly, most successful companies do not limit their marketplace to their home country; rather, they have a global marketplace. Generally, international peace has made that easier to achieve than in times when the world was more polarized by international conflict. If you were located in Europe only a couple decades ago, your business space was often more limited to Europe. Reflections on the Practice of Patent Law

Every major country of the world has its own independent patent law (although the European patent has more centralized patent protection in Europe). To get worldwide patent protection for a company that wants to sell worldwide, that company must generally deal with different patent laws in different countries, even when the different countries are members of treaties such as the Patent Cooperation Treaty. The patent laws have become more and more harmonized with the similar provisions in the last two decades. It would help us to have a world patent. If you came up with a good idea right now, and you wanted to get patent protection in all industrialized countries in the world, it would be a very expensive proposition. You must deal with lawyers all over the world; you must deal with substantive differences in patent laws and patent examination processes; and you must enforce your patents separately in the various countries. It is very frustrating for inventors with worldwide patent rights to use the systems of innumerable countries to enforce their rights. It would truly help everyone if we had, effectively, a world patent law with a world system of justice. In this way you would not have to deal with multiple countries, multiple lawyers, and multiple laws. We are definitely working toward harmonized patent laws; however, it has been a slow process. We have treaties and treaty amendments that are being made and considered on an ongoing basis to achieve effective world patent harmonization. It has been a topic of immense discussion, interest, and progress for the last several years. It continues to evolve, but we won’t likely have a world patent in my lifetime. It will take many decades. Another new technology that has been a challenge to patent protection is the Internet; yet another is biotechnology. There will be other new technologies that none of us knows about today five, ten, 15, and more years into the future. There are technologies that no one can now imagine and that the patent laws will have to deal with, as to whether, as a matter of policy, it is good for people to be given patent monopolies on such new kinds of technologies. For example, what should we do with the new technologies in space? There are a lot of unanswered questions. If we end up finding there are life forms on other planets, it becomes not just a global economy, but an interplanetary economy. Then we will have to deal with those issues.

Inside the Minds: The Art & Science of Patent Law by Inside the Minds Staff Aspatore Books © 2004 (245 pages)

ISBN:1587623463

This text is an authoritative, insider’s perspective on the laws which govern patents, the characteristics and capabilities of the successful practitioner and the future of patent regulation, on a global scale. Table of Contents Inside the Minds—The Art & Science of Patent Law Patent Law—Complex, Frustrating, and Rewarding Of Better Mousetraps and Beaten Paths Getting It Right the First Time—The Biomedical Patent Process Communication—The Key to Success in Patent Law Practice Toolkits, Football, and the Power of Patents The Full-Service Patent Law Practice The Metes and Bounds of the Patent Application Process Taking Proper Care of a Client’s Valuable Assets The Patent War Game—Playing to Win Patent Law-From Bicycles to Biotech Patents—How the System Works Reflections on the Practice of Patent Law Patents—Knowing the Value, Working the System

Inside the Minds: The Art &Your Science of Patent Law Advice: Know How to Market Idea by Inside the Minds Staff

ISBN:1587623463

Marketing is probably at least as©important to realizing value from an invention as the underlying Aspatore Books 2004 (245 pages) protection for theThis invention by patents. Getting a patent is only the text is an authoritative, insider’s perspective onfirst thestop. laws A patent gives you the opportunity to be which successful. your goal to build a business based onof the patent, your management governIfpatents, theischaracteristics and capabilities successful practitioner andthe theidea future of patent regulation, team, your sales the force, and your ability to get in the right strategic places are the important on a global scale. factors that determine success in achieving that goal. In the Table ofmid-1980s, Contents Michael Dell started a company that has been hugely successful, based on a

personal computer. He faced tremendous odds. IBM was the leading competitor; Compaq was up and coming as a formidable competitor; there were others, as well. In essence, Mr. Dell originally ordered Patent Law—Complex, Frustrating, and Rewarding off-the-shelf components from component manufacturers, plugged them together, and made a Of Better Mousetraps and Beaten Paths personal computer. Why was Michael Dell so successful in selling a personal computer? Among other Getting It Right the First Time—The Biomedical Patent Process things, he was the only one in the industry who gave a 30-day total-money-back guarantee if someone Communication—The Key to Success in Patent Law Practice bought one of his products and for any reason did not want it anymore. He got people to buy personal Toolkits, Football, Power he of Patents computers from and him the because had a marketing technique that was not offered by anyone else. He The Full-Service Patent Law Practice did not even have an idea that was patentable in the early days – it was a marketing idea combined The and Bounds of the He Patent Application Process withMetes a high-quality product. later found ways and hired people with education and intellect with Taking Care ofcomputers a Client’s Valuable Assets regardProper to personal and created new technology for personal computers. But he was wildly The Patent War to Winany new technology at all. He just had a marketing idea that offered successful for Game—Playing many years without Patent Law-From Bicycles to Biotech consumers a safe, no-risk way to buy a computer. Inside the Minds—The Art & Science of Patent Law

Patents—How the System Works

Getting a patent does not necessarily give you value. Getting a patent gives you a license to go to a courthouse and file a lawsuit, which is a potentially expensive proposition. If you’re going to be in the Patents—Knowing the Value, Working the System position of coming up with new technology and protecting it with patents, you ultimately have to have financial resources behind you to use the system. That you have the patent doesn’t necessarily mean you will be successful in the business. Reflections on the Practice of Patent Law

For example, coming up with a new idea for a personal computer does not mean you should be in the personal computer business. It may very well be that the best way for you to get value from a new idea for a personal computer invention is to sell it to someone who is already in the business, like IBM, HP, or Dell – companies that already have marketing networks and manufacturing facilities. Some inventors want to do everything themselves. They come up with an innovation, and they want to start a business, hire people, build a factory, and sign up sales reps. People who are inventors often do not know how to run a business, and do they do not know how to hire the right people to run businesses, so they fail because they try to do everything. It is a frequently recurring theme among inventors that they want to do everything themselves. Some of them should take their ideas to people who are already in business and either sell out or get into a partnership in which they share the risk and the reward. By and large this country has succeeded in part because of its natural resources – but I think, more than that, because of innovation. The entire innovation system is driven by our patent laws, and the rewards are fostered by our patent system. Yet we are a country that does not emphasize science in our education. I believe we will pay in the long run because we are resting on our laurels to a great extent, and not emphasizing with sufficient vigor science for students. We are a great country, with tremendous industry and a lot of innovation. But when we look at our science curriculum and the extent to which we require science in our elementary and secondary schools, we see it is not heavily emphasized. Our economy thrives on technical innovation. A hundred years ago the economy was driven by a manufacturing industry. Today it is driven largely by the information industry. Life has changed, and yet our education system does not require nearly as much math and science as many other countries do. I think we will regret in the long term not now requiring more science and math training all of the way through our educational system. Having that kind of training prepares people to be innovators. I do not know whether we have been lucky or good. Obviously, we enjoy the highest standard of living of any people in the world, and in considering continuing that standard for our children, I think we are shortsighted for not doing more for them in terms of requiring them to take more math and science courses.

William L. LaFuze practices in substantially all areas of intellectual property law as a partner at Vinson & Elkins LLP, with an emphasis on electronics, oilfield equipment, and computer-related litigation. He the Minds: The Art & Science of Patent Law at Vinson & Elkins. His is also co-chair ofInside the Intellectual Property/Technical Litigation Practice ISBN:1587623463 Inside has the Minds Staffrepresenting companies computer-relatedby practice included in patent infringement, trade secret, Aspatore Books © 2004 (245 and other intellectual property litigation. Hepages) also has represented software developers, original This text isvalue-added an authoritative, insider’s on the lawsin counseling, contract equipment manufacturers, resellers, andperspective financial institutions govern patents, characteristics of preparation, and which litigation involving the the purchase and saleand of capabilities computer software and hardware. the successful practitioner and the future of patent regulation,

on a global scale. involved in counseling startup, small, and established companies in Mr. LaFuze has been substantially the electronics andencoding="ISO-8859-1"?> healthcare industries. He also serves as a mediator and arbitrator for litigants, and
Mr. LaFuze received his JD from the University of Texas School of Law, having earned his MS in applied science (systems engineering) from Southern Methodist University and his BS in physics from Getting It Right the First Time—The Biomedical Patent Process the University of Texas. Of Better Mousetraps and Beaten Paths

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