Introduction to Patents
Angela Lyon, MSc,
Registered Patent Agent (US & CA)
What is a Patent Agent? Patent Attorney?
Scientific Education and Good Writing Skills
• Bachelor of Science & Law degrees; and
Passed the Canadian Patent Agent Exam OR
• Graduate studies (M.Sc. and/or Ph.D.);
Year(s) of Training in the intellectual property field;&
Passed the Canadian Patent Agent Exam
Famous Canadian Inventions
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Telephone
Basketball
Insulin
Zipper
Light bulb
Blackberry
Birth Control Pills
Goalie Mask
Edison did NOT invent the lightbulb?
Thomas Edison improved upon a 50-year old idea.
He purchased the rights to a patent for an
incandescent lightbulb from
inventors
Henry Woodward and Matthew Evan who could not
raise the financing to commercialize their
invention. (Edison used lower current and an
improved vaccuum inside the globe.)
PARTEQ’s Structure
• Not-for-profit organization with:
• 2 registered patent agents
• 3 commercialization managers
• 3 administration & support staff
• portfolio of 200+ technologies
Intellectual Property protection in Canada
• Patents -- for inventions, i.e., new technology
• Copyrights -- for literary, artistic, dramatic & musical works
• Trade-marks -- words, symbols, pictures, etc. used to distinguish
goods and services
• Industrial Design Registrations -- for the shape, pattern
or ornamentation of industrially produced objects
• Integrated Circuit Topographies -- for the 3-D
configurations of electronic circuits
• Plant Breeders’ Rights -- for certain new plant varieties
I’ve made a discovery! …Now what?
• Has anyone else thought of this before? If so, is there
still an invention?
• Try google and free patent sites
www.patentlens.net & www.freepatentsonline.com
• Have you told anyone about this?
• Public disclosure limits protection to US and
Canada – one year grace period
• Does anyone care?
• What is the product or service? Will people pay $$
for it? “Neat” doesn’t always equate to “Need”
“Whoever invents or discovers any new and
useful process, machine, manufacture, or
composition of matter, or any new and useful
improvement thereof, may obtain a patent
therefor, subject to the conditions and
requirements of this title.”
s. 101, U.S.C.
What is a patent?
An exclusive monopoly to make, use
or sell a claimed invention for a
limited period of time in a specific
country.
Why should you patent your
invention?
Right to exclude: Without the exclusive monopoly of a
patent, others are free to make, use, and sell your
invention.
Investment: It will be difficult if not impossible to
attract investors without a patent.
Public benefit: The public is more likely to benefit
from the invention if it is patented, because of the
possibility for commercial activity that results from
the patent.
No. 1 misconception about patents
 Having a patent gives you the right to do something
Actually, the patent only gives you the right to EXCLUDE
others from doing (i.e., making, using or selling)
something
Similarly, some other patent-holder could exclude YOU
from doing the very thing you have patented!
Can you patent your invention?
Patentable Subject Matter
• “ “invention” means any new and useful art,
process, machine, manufacture or composition of
matter, or any new and useful improvement in any
art, process, machine, manufacture or composition
of matter” [s. 2, Canadian Patent Act]
• An invention must produce an essentially economic
result in relation to trade, industry, or commerce
• Do you (or your employer) hold the rights to your
inventions?
An invention MUST be:
Novel
Unobvious
Useful
How novel is it?
One year grace period after invention is first made
available to the public by the inventor
(U.S.A., Canada, Philippines)
Absolute novelty
(Rest of world)
Paris Convention (1887)
Signed by most developed countries in the world
Provides one year “priority” period to citizens and
nationals of signatory countries
Criteria for patentability of an invention:
Subject Matter
Definiteness
• Claims must recite patentable subject matter
• Claims must be supported by the disclosure
• Claims must make sense
• Claimed invention cannot be previously known or available
to the public
Novelty
• Absolute novelty vs. grace period (U.S., Canada)
• References cannot be combined to destroy novelty
NonObviousness
Utility
• Claimed invention must not be obvious to a person of
ordinary skill in the art at the time the invention was made
• References may be combined to demonstrate obviousness
• The invention must be useful
What is in a patent?
Abstract
Description of the Invention
• Written description, with examples, data, figures,
etc., as appropriate
• Enablement
• Best known mode (as of filing date)
Claims
• One-sentence statements that define the subject
matter protected.
Critical tips for effective patent drafting
Make sure:
• The commercial product/service is covered by the
claims
• The claims will catch an infringer
• The application teaches the “best mode” known to the
inventor(s)
• The application teaches the FULL scope of the claimed
invention
File first patent
application
(e.g., US)
File further applications
e.g.,Patent Cooperation
Treaty (WIPO--international)
Patent Application
is published
Publish
0 months
12
18
Patent issues
~24-36+
U.S. provisional application
Informal, unexamined application
Expires automatically after 1 year
Patent Cooperation Treaty (PCT)
Single international application
International search
Optional international examination
National/Regional Phase entry
Over 100 signatories
Paris Convention applies
Misconception about patents
Describing something in the patent application automatically
means that it is protected by the patent
Actually, ONLY the final claim scope defines the scope of
protection
Genus claim
1. A method for effecting neuroprotection in a
subject, comprising administering to the subject
an effective amount of a nitrate ester having the
formula
O
E-F-G
N
O
O
wherein E, F, G are organic radicals which
may contain inorganic counterions.
Species claim
1. A method for effecting neuroprotection in a subject,
comprising administering to the subject an effective
amount of a nitrate ester having the formula
N
O2NO
S
.
Inventorship
Incorrect inventorship can invalidate an eventual patent.
Steps of the process of invention (U.S. law)
• Conception
• Reduction to practice
• Actual
• Constructive
“Inventor” must contribute to conception, not
necessarily reduction to practice.
Who has patent rights?
• First to file: (Canada, most of the rest of the world,
USA as of March 16, 2013)
• First to invent: (U.S.A.----until March 16, 2013)
Having kept organized, dated, and validated lab
notes was critical in overcoming an attack on your
patent by a competitor claiming to have made the
invention first.
Ballpark Costs for a U.S. Patent Application
• Patentability search: ~$2 000
• Preparation and filing: ~$8 000-$25 000
• Prosecution (very unpredictable): ~$3 000-$6 000
per office action (before any extension of time
fees)
• Issue: ~$1 500
Tell your agent WHAT
•
What is your invention? Product? Composition? Process?
More than one of these?
•
What kind of process? Method of making? Method of using?
Both?
•
What works? What features or elements are critical? What can be
skipped? What can be substituted? What is a bonus add-on?
What is a special case?
•
What did you do?
•
What did you make?
Tell your agent WHY
• Why is your invention different, better, faster, cheaper
than what came before? Why is there an advantage?
• Why was there a problem with the old way? Why was
there a need for something new?
• Why did you try this approach? Why was this not
suggested by, or obvious in view of, what came before?
Tell your agent HOW
• How does your invention work?
• How does it work best?
• How would you move your advance still farther?
• How can your invention be applied in different contexts?
• How would a competitor design around your invention?
Tell your agent WHO
•
Who came up with the core concept?
•
Who added to the inventive concept, however small the
contribution?
•
Who did the hands-on work (reduced the invention to practice)?
•
Who else is working in this field, or on this problem? Who has
related patents, publications, products?
•
Who has rights in the invention under an agreement (e.g., an
employment contract, a license, a research agreement)?
Tell your agent WHEN
•
When did you come up with the invention? (Provide a signed, dated labbook!)
•
When do you plan to submit your manuscript, abstract, poster, grant
proposal, thesis?
•
When will it be posted on the web? When will the journal be mailed from
the publisher? When will the book of abstracts be given to the conference
attendees? When will the poster go up?
•
When will you give your talk? When will the thesis defense take place?
•
When will the invention be offered for sale?
•
OR -- When WAS it made public?! When WAS it offered for sale?!
Some Useful Resources
• United States Patent & Trademark Office (USPTO)
• Canadian Intellectual Property Office (CIPO)
• European Patent Office (EPO)
• World Intellectual Property Office (WIPO)
• Patent Lens Database (www.PatentLens.net)
Workshop
We have an article that looks like a
loop of rope within some clear tubing.
If you made replicas of it you would be
infringing its patent. The inventor’s
surname is Rayne. Find the patent online. What is this article’s use?
Workshop
Angela Lyon is an inventor on a
U.S. Patent. What is the
predominant U.S. classification
number on her patent?
Workshop
Queen’s University has an international patent application
called Lift Assist Device and Method. Go to
www.wipo.int/pctdb/en/ and search using title AND
owner
(a) Using the Documents tab, locate its International
Preliminary Report on Patentability
(b) Using the National Phase tab, which countries has this
application gone national in?
Workshop
We have a back support article.
What type of protection does it
have?
Workshop
We have an article that looks like a
yellow circular shape with cut-outs.
Written on it is its U.S. patent
number “D445,980”. What is this
article’s use? Who owns this IP?
Workshop
There are on-line patent tutorials that are available
through the Queen’s University at Kingston library
website.
BONUS QUESTION: What is the name of the Queen’s
librarian who writes the following
blog http://patentlibrarian.blogspt.com/
?
Thank you!