Post Filing Considerations With Respect To Patents and Pending Patent Applications

1. Post Filing Considerations With Respect To Patents and Pending Patent Applications Richard Michaud Esq. Michaud-Kinney Group LLP (860)-632-7200 www.mkgip.com

2. Recent Supreme Court Decision Bilski • Case centered around the patentability of Business Methods • A business method patent grants to its holder exclusive rights to a particular way of doing business • Means For Carrying Out A System Of Doing Conducting Or Transacting Business (c) Richard R. Michaud, Esq. 2010.

3. Recent Supreme Court Decision Bilski • Prior to 1998 U.S. Courts consistently stated that business methods were not patentable. • Prior to the Supreme Court decision in Bilski, a business method had to comprise useful concrete and tangible subject matter. • Bilski wiped out the useful concrete and tangible subject matter test. (c) Richard R. Michaud, Esq. 2010.

4. Recent Supreme Court Decision Bilski • Algorithms and Purely Mental Processes are not patentable. • Software remains patentable. • USPTO will continue to use the machine or transformation test. (c) Richard R. Michaud, Esq. 2010.

5. Prefiling Considerations • Proper and Judicious use of Provisional Patent Applications. • Requires an enabling description and must be best mode. • File prior to any public disclosure of your invention. • May need to file more than one provisional application as invention is developed. (c) Richard R. Michaud, Esq. 2010.

6. Prefiling Considerations • Bars to Patentability • Don’t Sell or Tell • Consequences of Disclosure • One year clock in the United States • Destruction of Foreign rights (c) Richard R. Michaud, Esq. 2010.

7. Provisional Patent Applications • One year life span. • Much cheaper to prepare and file than a non-provisional patent application. • Allows for the exploration of your market. • Provides for economical evaluation of the worth of your patent. (c) Richard R. Michaud, Esq. 2010.

8. A patented invention does not have to be better than what already exists, just different.Know the needs of your market and you competition.There are many patents that are never practiced. This means a lot of money was wasted. (c) Richard R. Michaud, Esq. 2010.

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13. Provisional Applications • Can be used to prevent your design solutions from being shopped. • Can be sold. • Can be Licensed (c) Richard R. Michaud, Esq. 2010.

14. Never Underestimate The Value Of A Search • French Fries (c) Richard R. Michaud, Esq. 2010.

15. Patentability Search (c) Richard R. Michaud, Esq. 2010.

16. Patentability Search (c) Richard R. Michaud, Esq. 2010.

17. Patentability Search (c) Richard R. Michaud, Esq. 2010.

18. You Can Surround Your Tech Area • Competitive industries often have tech. niches carved out for themselves. • They have one or more seminal patents and then create a mine field of “smaller” improvement or related patents. • One will stay away from the tech area for fear of getting entangled in an infringement situation. (c) Richard R. Michaud, Esq. 2010.

19. Brainstorming Sessions • Often done in collaboration with other of the same or different companies. • Joint Development projects • Vendor Meetings • Why are these dangerous? Inventorship (c) Richard R. Michaud, Esq. 2010.

20. WHO IS AN INVENTOR? (c) Richard R. Michaud, Esq. 2010.

21. Inventorship • Anyone that materially contributes to at least one claim in a patent. (c) Richard R. Michaud, Esq. 2010.

22. WHAT ARE THE CONSEQUENCES OF NOT HAVING INVENTORSHIP CORRECT? (c) Richard R. Michaud, Esq. 2010.

23. INVALIDITY OF ONE OR MORE CLAIMS IN THE PATENT!!!! (c) Richard R. Michaud, Esq. 2010.

24. IF FOUR PEOPLE ARE LISTED AS INVENTORS ON A PATENT; WHAT IS THE OWNERSHIP INTEREST OF EACH INVENTOR? (c) Richard R. Michaud, Esq. 2010.

25. ABSENT AN ASSIGNMENT, EACH INVENTOR OWNS A 100% UNDIVIDED INTEREST IN THE PATENT AND CAN DO WITH IT AS THEY PLEASE! (c) Richard R. Michaud, Esq. 2010.

26. SO WHAT MAKES A BRAINSTORMING SESSION DANGEROUS, AND A PATENT ATTORNEY’S NIGHTMARE? (c) Richard R. Michaud, Esq. 2010.

27. BY THE END, EVERYONE IN THE ROOM THINKS THEY INVENTED EVERYTHING! (c) Richard R. Michaud, Esq. 2010.

28. FILE PROVISIONAL PATENT APPLICATIONS PRIOR TO BRAINSTORMING SESSIONS. THIS WAY NO ONE CAN SAY THEY CAME UP WITH YOUR IDEA. (c) Richard R. Michaud, Esq. 2010.

29. DON’T UNDERSTIMATE THE VALUE OF PROPERLY DRAFTED DESIGN PATENTS! (c) Richard R. Michaud, Esq. 2010.

30. Design Patents Design patents -- directed to the aesthetic or ornamental aspects of an object. (c) Richard R. Michaud, Esq. 2010.

31. (c) Richard R. Michaud, Esq. 2010.

32. Design Patents (c) Richard R. Michaud, Esq. 2010.

33. Design Patents When is imitation not the greatest form of flattery? (c) Richard R. Michaud, Esq. 2010.

34. Design Patents Competition (c) Richard R. Michaud, Esq. 2010.

35. Design Patents Client (c) Richard R. Michaud, Esq. 2010.

36. Design Patents (c) Richard R. Michaud, Esq. 2010.

37. Non Disclosure Agreements • Use them if you can. • They can toll the bars to patentability. • Still better to file a patent application before disclosure. • Use them even if you have filed for patent. • Patents held in secrecy until they publish. • Cannot enforce patent rights until the patent issues. • Can sue immediately for breach of an NDA. • Bi-Lateral versus Unilateral NDA’s. (c) Richard R. Michaud, Esq. 2010.

38. Non Disclosure Agreements • Read them carefully, both those you are asked to sign and those you want signed. • Boiler plate can be dangerous. Watch the terms and duration of the agreement. • More on these later. (c) Richard R. Michaud, Esq. 2010.

39. Foreign Filing Considerations • Reserving your right to file in foreign countries can prove very valuable to those interested in your invention. • Foreign filing should be done within 12 months of your earliest filing date to preserve that date. • Foreign patent protection can afford investors the opportunity for a vastly larger protectable market. (c) Richard R. Michaud, Esq. 2010.

40. Foreign Filing Considerations • Depending on the countries you wish to file in, and how many, foreign filing can be very expensive. • Particularly where translations are required. • Use the PCT. (c) Richard R. Michaud, Esq. 2010.

41. PCT Contracting States (c) Richard R. Michaud, Esq. 2010.

42. International Patent Protection • Remember Patent Life is 20 Years. • Countries that have enforcement problems now, may not in the future. • Limit the number of claims in foreign patent applications. • Foreign patents and often applications are generally subject to yearly taxes. (c) Richard R. Michaud, Esq. 2010.

43. Scope of US Vs. Foreign Patents • United States – Literal Claim interpretation • The claims in a patent determine the patents scope. • Literal element-by-element examination. • Patent rights are exclusionary. (c) Richard R. Michaud, Esq. 2010.

44. Scope of US Vs. Foreign Patents • Most foreign countries conduct a gist of the invention examination. • Accordingly, the same claims could have different scopes in the US and foreign countries. (c) Richard R. Michaud, Esq. 2010.

45. What Do You Want To Do With Your Patent/Application? • Sell it? • License it? • Make it? (c) Richard R. Michaud, Esq. 2010.

46. Selling Your Patent/Application • Be realistic with your expectations. • Recognize that in general, whoever buys your patent or application will likely have to make large up front investments. • Make sure that all of the inventors have assigned their rights or are in agreement with the sale. • Employment agreements are important. • Many potential purchasers will not accept unsolicited ideas. Perservere! (c) Richard R. Michaud, Esq. 2010.

47. Selling Your Patent/Application • They may refuse to sign an NDA in the evaluation stage of you invention. • Important to have all of your inventions and improvements embodied in one or more patent applications. • They may ask you to sign their agreement. • Typically states that they may be working on something similar, they will not maintain any confidentiality, and you agree that your only rights are those you have in patent. • As long as your patents are filed. If they are a substantial potential, sign it. (c) Richard R. Michaud, Esq. 2010.

48. Selling Your Patent/Application I have seen many inventors blow lucrative deals because they were greedy, had an over inflated sense of what their invention was worth, or tried to attach too many other conditions (consulting services, timelines, milestones) to the sale! Be Realistic with your expectations! (c) Richard R. Michaud, Esq. 2010.

49. Who Are You Selling To • A large company – They may simply want to buy your patent and be done with you. • They may buy your patent and shelve it because it competes with another of their products. • They may modify it from your original vision. • They may demand that any improvements made to or related to the patent/application they have purchased, be assigned to them. • You may be able to get $ for foregoing further sales efforts while a company evals. your invention. They have to be very interested for this. (c) Richard R. Michaud, Esq. 2010.

50. Who Are You Selling To • Venture Capitalists – If you are running or starting a business around your patents and you want VC funding, understand that they will, in addition to giving you $, want equity. • They may also want to put their own management team in place. Unseating the inventor as CEO or President. • Know your strengths and play to them, having someone else (more experienced) may be a good thing. • You can hold out for a better deal with another investor (sometimes you should) but remember owning 100% of nothing is still nothing. (c) Richard R. Michaud, Esq. 2010.