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
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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 majority of it, and especially the highest stakes litigation, is in the general practice technical education required is nearly equivalent, at least in quantity, to the fundamentals, like blocking and tackling, produce wins in football, successful patent infringement case even more confusing. wants, and makes it so it’s cost-effective and competitive, will be successful. The client’s invention disclosure. In one instance, the prior art patent was more than 100 to make sure you’re getting the full value out of them. Full value is achieved only if healthcare industries. He also serves as a mediator and arbitrator for litigants, and