Recent Changes in the US Patent System Affecting Engineers

1. Recent Changes in the US Patent System Affecting Engineers Peter D. Mlynek, MBA, PhD, Esq. 2012 May 1

2. Overview of this presentation • Overview of patent system • Overview of the new patent law • How it effects you

3. New Patent Law:America Invents Act • Biggest change to the Patent Law since 1952 • Signed into law on September 16, 2011 • Rolling out over 18 months • Many different changes • This presentation concentrates on the most relevant to this audience, and not necessarily the most legally important changes

4. Given Reasons for America Invents Act • Improve quality of patents • Harmonization with other patent systems • Increase certainty in litigation • Update in view of court holdings, technology

5. What is a Patent? Full Disclosure of an Invention Exclusive Right

6. Exclusive Right to… Competitors

7. What is a Patent? Monopolistic Tool Capital Raising Tool Marketing Tool Cross Licensing Tool A tool to make money

8. How Much to Get a U.S. Patent?

9. Process of Getting a Patent Draft Reduction to Practice Application Conception Licensing PTO Prosecution

10. Why so much to get a patent?

11. How Can We Get a Patent Cheaper? Pay less to the USPTO Pay less for patent lawyer

12. How Can We Get a Patent Cheaper? Pay less for the Patent Lawyer • • Reality: There are no economies of scale! • - A patent for a small company costs just as much as for a large company • • Have all necessary information for lawyer ready • - Business plan, marketing, etc. • - Experimental data, procedures, etc. • • Smaller law firm – big firms charge big bucks • • Flat fee

13. How Can We Get a Patent Cheaper? Introduced by AIA Discounts at the US Patent Office + Individual Inventors AND Universities “Micro Entity” Big Businesses Small Businesses “Small Entity” Regular Price for USPTO fees –75% –50%

14. Speaking of Patent Office Fees… Introduced by AIA Historically $ PTO can set their fees as it sees fit! PTO Recently Result: DRASTIC fee price increases …, but the Congress sets the fees

15. Requirements to Obtain a Patent Useful Described Not Obvious New

16. Requirements to Obtain a Patent Useful Generally, a low hurdle to overcome in cases of electrical engineering and computer hardware inventions. • Questions about patentability with respect to usefulness come up in • Biological technology • Computer programs • - Finance AIA: Tax strategies are no longer patentable; Human organism is not patentable

17. Requirements to Obtain a Patent Described • The patent applicant must describe the invention in order to get rights to it • Description • Enablement • Best Mode Still need to put Best Mode into the application. Unique to the US AIA: Best mode needs to be in the patent, but if it is not there, the patent is still OK

18. Requirements to Obtain a Patent If it is not new, then it is not patentable. If some else has a patent on it, then it is not patentable. The AIA rewrote the entire law on this requirement. New

19. Requirements to Obtain a Patent • Is the invention obvious over what is known? • The MOST difficult of the 4 requirements • 60-80% of attorney’s time during prosecution • Mostly unchanged by AIA Not Obvious

20. Comparison of Patent Systems First to File Patent Office Cancelled by AIA First inventor Whoever invents first, generally wins the patent

21. Treatment of Disclosures Publications Publications prior to filing are held against the filer First to File Publications by others prior to filing, and own publications > 1yr before filing, are held against the filer First Inventor to File NEW Publications > 1yr before filing are held against the filer First inventor OLD

22. Treatment of Disclosures Scenario 1 Disclosure of Invention Application Filed 5/2013 5/2014 Disclosure is prior art, no patent Disclosure is prior art, no patent NEW Disclosure is prior art, no patent OLD

23. Treatment of Disclosures Scenario 2 Disclosure by Filer Application Filed 5/2013 5/2014 Disclosure is prior art, no patent Disclosure is not prior art NEW Disclosure is not prior art OLD

24. Treatment of Disclosures Scenario 3 Application Filed 5/2013 Disclosure by Another 5/2014 Disclosure is prior art, no patent NEW Disclosure is prior art, no patent Disclosure is not prior art OLD

25. Treatment of Disclosures Scenario 4 Disclosure by Filer Application Filed 5/2013 Disclosure by Another 5/2014 Disclosure is prior art, no patent Disclosure is not prior art NEW Disclosure is not prior art OLD

26. Treatment of Competing Filings Scenario 5 A files an application B files an application A wins But not everything is lost for B! 3 strategies for B A wins NEW First inventor wins OLD

27. Treatment of Competing Filings Scenario 5 A files an application B files an application B A wins A A wins NEW First inventor wins OLD

28. Treatment of Competing Filings Scenario 5 A files an application B files an application B wins if A derived the invention from B NEW First inventor wins OLD

29. Treatment of Competing Filings Scenario 5 Afiles an application 5/2013 5/2014 Disclosure by B B files an application Disclosure is prior art, no patent for anyone B wins NEW First inventor wins OLD

30. Recommendations • File a patent application before any public disclosure to prevent loss of rights outside US • Publish frequently and often if non-US rights are not important • Keep track of competitors • File patent applications early and often

31. Additional Changes • Changes in Third Party submissions during pendency of the application • New: Supplemental Examination by the patent owner • New: Post Grant Review Patent pending Patent in force Federal Courts More $$$ Within the PTO

32. Additional Changes • Changes in Third Party submissions during pendency of the application • New: Supplemental Examination by the patent owner • New: Post Grant Review Patent pending Patent in force Federal Courts More $$$ Within the PTO Recommendation: Keep track of competitor’s applications and patents in view of disclosures.

33. Additional Changes: Patent Markings US Pat. US Pat. Competitors

34. Additional Changes: Patent Markings Unlawful restriction of trade if products are marked as patented, but there is no valid patent US Pat. US Pat. Deceptive, anti-competitive Competitors

35. Additional Changes: Patent Markings • Old law: Anyone can sue ($500/mismarked item) and split it 1:1 with the government $$$ US Pat. US Pat. Deceptive, anti-competitive

36. Additional Changes: Patent Markings Restricted by AIA • Old law: Anyone can sue ($500/mismarked item) and split it 1:1 with the government • AIA: only those who are hurt can sue for compensatory damages, plus U.S. gov’t US Pat. $ 10,800,000,000,000.00

37. Additional Changes:Virtual Patent Markings • Old: “Pat.” and numbers • Dozens or hundreds may be listed • New: “Pat.” and URL

38. Filings by Assignee • An employer now can easier file a patent application on behalf of an employee inventor, or an ex-employee inventor

39. Peter D. Mlynek, Ph.D., MBA, Esq. peter@mlyneklaw.com 856-787-0880