Basic Patent Law Refresher & Prosecution Overview

Transcription

1 Basic Patent Law Refresher & Prosecution Overview Jacob N. (Jesse) Erlich, Partner Burns & Levinson LLP Kathleen (Kathy) Chapman, Assistant Counsel Naval Research Laboratory Rockville, Maryland April 21, 2014

2 Jacob N. (Jesse) Erlich Partner at Burns & Levinson LLP, Boston, Mass. Specializes in intellectual property law and technology transfer issues Has been recognized as one of Best Lawyers in America and Massachusetts Super Lawyer FLC Patent and Licensing Advisor Former Chief Patent Advisor for the U.S. Air Force Co-author of Technology Development and Transfer: The Transactional and Legal Environmentand numerous papers on intellectual property and technology transfer Received FLC Outstanding Service Award Taught numerous courses in intellectual property law Active in numerous technology transfer, patent, and licensing organizations Registered to practice before U.S. Patent & Trademark Office (USPTO) and Canadian Patent Office 2

3 Kathleen (Kathy) Chapman Patent Attorney & IP Counsel for U.S. Navy Office of General Counsel, Naval Research Laboratory Former private practice patent attorney Former adjunct professor of law, patent prosecution, University of New Hampshire, Franklin Pierce Center for Intellectual Property J.D., University of New Hampshire Law School, Franklin Pierce Center for Intellectual Property; M.S., Meteorology, Pennsylvania State University; B.S., Meteorology, Florida State University Prior to becoming a lawyer, worked for Digital Equipment Corporation, Computer Sciences Corporation, the Johns Hopkins Applied Physics Laboratory, and the National Hurricane and Experimental Meteorology Laboratory as a research meteorologist, computer scientist, and principal engineer Co-author of Achieving Patent Protection for Software Inventions, The Computer and Internet Lawyer, and several other papers Registered to practice before the USPTO; licensed Engineer-in-Training 3

4 INTELLECTUAL PROPERTY PROTECTION 4

5 Intellectual Property Formal definition Intellectual property is an intangible or proprietary asset such as a patent, copyright, trademark or trade secret My definition Intellectual property is a protectable development of the mind 5

6 Examples of Intellectual Property Protection Trade secrets Patents Copyrights Trademarks 6

7 Steps to Protect IP Identify your IP Make sure that you and your employees are not inadvertently disclosing your IP Evaluate your IP for an appropriate level of protection: Trade Secret, Patent, Trademark, Copyright 7

8 Value of IP Protect the product or process being sold Protect name or goodwill of company License or sell IP to others Blocking competitors from entering marketplace Enhance value of company for investors or sale 8

9 Trade Secrets Used to protect important business information that a business does not want to disclose to the public Effective only if kept confidential Do not release trade secrets without a nondisclosure agreement Always place appropriate marking on trade secret information (e.g., Proprietary Information, Not for Public Release) Last indefinitely as long as they are kept secret 9

10 What Is a U.S. Patent? Grant by the government to provide individuals with legal protection for their discoveries (inventions) Article 1, Section 8, of the U.S. Constitution states that Congress is empowered to "...promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries" Covered by federal law (Title 35 of U.S. Code) 10

11 Term and Exclusionary Right of a Utility Patent Patent applications filed after June 8, years from effective filing date plus possible additional time due to delays at the PTO Patent applications actually filed before June 8, 1995 orpatents in effect on June 8, 1995 The longer of either 20 years from the effective filing date or 17 years from the issue date Patent owner given the right to prevent others from making, using, offering for sale, selling, or importing the claimed invention within the U.S. Process patent owners also given the right to prevent others from importing a product obtained from patented process 11

12 Example Term: 20 years calculated from the date of filing the patent application Example: Application filed 1 April 2002; term expires 1 April 2022, but patent not awarded until 1 April 2008 Effective patent term is 14 years beginning 1 April

13 1 3 PATENT PROTECTION

14 Patent Life Cycle Invention Review by an invention board Application preparation Filing Prosecution Issuance Licensing and enforcement Maintenance 14

15 Who Is Entitled to a Patent? Must invent something that is new, useful, and unobvious To obtain a patent, individual(s) must be an inventor (and, under the America Invents Act [AIA], must be the first to file) Invention must be conceived Invention must be reduced to practice (actual or constructive) Must file a patent application 15

16 Before the AIA... For applications filed before March 16, 2013, U.S. was a first-to-invent system To determine first inventor Date of conception Date of reduction to practice Reasonable diligence from the time of conception to the filing of the application Process is called an interference 16

17 Invention Two-step process: (1) Conception of the idea or subject matter of the patent claims; and (2) Reduction of the idea to practice two ways to reduce to practice: Constructivereduction to practice i.e., filing of a patent application Actualreduction to practice i.e., making a working example of the claimed invention 17

18 Conception Conception is the formation in the mind of the inventor of a definite and permanentidea of the complete and operative invention, as it is thereafter to be applied in practice and claimed An inventor need not know that the invention will work for conception to be complete; discovering that the invention works is part of the reduction to practice Definite and permanent means only that ordinary skill would be necessary to reduce the invention to practice, or make a working example of the invention, without extensive research or experimentation Claimed means that inventorship focuses on the invention as claimed and not merely described in a patent. Once the exact subject matter of the patent claims has been determined, who conceived each of the claims can be identified 18

19 Reduction to Practice (RTP) Actual RTP occurs when the invention is actually made and is the complete & operable invention recited in the claims The inventor does not have to perform every step himself; he may direct others to carry out his instructions Constructive RTP mayoccur when an application is filed 19

20 Inventor An inventor is anyone who invents a process, machine, manufacture, composition of matter, or a new and useful improvement thereof that is the subject matter of at least one claimof the patent 20

21 Joint Inventors Two or more persons who collaborate to produce the invention through aggregate efforts (1)they don t have to physically work together or at the same time (2)they don t have to make the same type or amount of contribution, or (3)they don t have to make a contribution to the subject matter of every claim of the patent They must be aware of each other s work 21

22 Inventorship Authorship Inventorship Contributions deemed equal A legal determination Errors correctable if no deceptive intent No true inventor named Nonjoinder: Not listed & should have been Misjoinder: Erroneously listed 22

23 Not an Inventor RTP by exercising ordinary skill in the art A technician who simply performs experiments or assembles the invention Supervisors or department managers (without more) Contributing an obvious element to the invention or general knowledge Only contribution is participation in consultations about the invention before or after conception of the invention 23

24 Still Not an Inventor Thinking of the result to be obtained but not the details of how to achieve it Supplying a known component or starting material Suggestions or improvement, but doesn t work to fit the suggestion or improvement into the invention A second inventor who didn t collaborate with a first inventor (for applications filed before the AIA) 24

25 Laboratory Notebooks Recorded in Lab Notebook Describe Invention Dates of Conception Date of Reduction to Practice Evidence of Diligence Sign & Date Entries Witnesses Attest to Operability of Invention Make Frequent Entries as Work Progresses Still of use even under AIA 25

26 Invention Disclosure Describe new product/process, elements & operation in words, drawings, photos, flow charts, etc. Describe problem being solved Differentiate from prior art Identify the core elements; at least one element has to be new or different from what came before 26

27 Invention Disclosure (Cont.) Include copies of manuscripts, publications, handouts, presentations, posters, user s manuals, excerpts from lab notebooks, flow charts, screenshots, gels, micrographs, relevant websites, etc. 27

28 Application Preparation Prior Art Search Patentability Analysis Assigning a Patent Attorney/Agent Inventor Participation 28

29 Prior Art Search Patents, published patent applications, articles, websites, brochures, everything! everywhere! For patentability & infringement clearance Databases USPTO, WIPO, commercial Other foreign patent office web databases 29

30 U.S. Patentability Searches Use search engine (e.g., Google patents) to start a search Use the results to do a keyword search of U.S. Patent & Trademark Office website at Fine-tune or expand the results of the search engine and keyword searches with a classification search at 30

31 Application Filing Type of application Domestic Utility (+ Provisional), Design, or Plant Foreign Fees Attorney costs 31

32 Two Types of Utility Applications Provisional Not examined Expires 1 year from filing To obtain a priority date and first-to-file date under the AIA Use with caution must be enabling for claims later filed in nonprovisional application Nonprovisional (Regular) Full examination Potential to issue into a patent 32

33 Provisional Patent Applications Effect of an Inadequate Provisional Application NEW RAILHEAD MANUFACTURING, L.L.C. Plaintiff-Appellant v. VERMEER MANUFACTURING COMPANY Defendant-Appellee and EARTH TOOL COMPANY, L.L.C. 33

34 Utility Patent Application Types Original (Parent) Continuation: Subject matter is same as original application Continuation-in-part: New matter has been added Divisional (Child): Two or more separate inventions identified in original application 34

35 Patent Application Parts Title Statement of government interest Cross-reference to priority applications Background of the invention Brief summary of the invention Detailed description of the invention Claims Drawings 35

36 Claim Construction Claims Special language & formatting Broad, intermediate & narrow Independent & dependent New Case Law & Impact KSR (obviousness) In re Bilski (business methods) Mayo (treatment methods) Myriad (DNA) 36

37 Patent Application Filing Application Data Sheet priority docs listing required Oath/declaration Substitute statement First action request 3 independent claims, 20 claims or fewer Specification/claims priority doc listing ignored Drawings BW vs. Color POA can t be combined with declaration Assignment Stanford v. Roche wording Missing parts deadline extended for some parts IDS 37

38 Patent Application Examination Filing of patent application in USPTO Examination and search of patent application Examiner s independent search of prior art Office action(s) by U.S. patent examiner 2nd or final office action by U.S. patent examiner After final practice Interview(s) with U.S. patent examiner Allowance of U.S. patent application Appeal of non-allowed application 38

39 Timelines Publication 18 months from priority Certification of Non-Publication Examination Approximately 1-2 years Petition to make special Based on Patent Cooperation Treaty search Issuance Approximately 3-5 years (if application is made special, much sooner) Filing Foreign Application 1 year from priority date for priority 39

40 Applications Published About 18 months after filing date or filing date of the priority application, whichever is earliest Becomes prior art that can be used against all applications not claiming priority to the published application Possible to request nonpublication if not filing foreign 40

41 Prior Art Information Disclosure Statement should include office actions from related cases You may submit prior art into another s application 3 or fewer publications can be submitted for free within certain time limits 41

42 Actions and Responses Office Actions Restriction Requirements Objections Missing Parts Deadlines/Extensions Rejections Responses Amendments, Additions, Cancellations Appeals & Declarations 42

43 Restriction Requirement When Examiner believes claims directed to more than one independent and distinct invention Response accept or traverse, but mustelect a group of claims to have examined even if restriction is contested Non-elected claims can be examined in a continuation or divisional application filed later, but while parent application still pending 43

44 Declarations Written personal statement setting forth facts Used to point to facts not evident from the application or cited in the prior art Used to overcome rejections by removing references from the prior art Called swearing behind under 37 C.F.R in applications filed before March 16,

45 Rejections Usually made on basis of 35 U.S.C. Sections 101 (utility), 102 (novelty) and 103 (nonobvious), but also on Section 112 (specification), prior art and case law pertaining to interpretation of those sections Section 112 pertains to written description of invention and manner and process of making and using it, best mode for carrying out the invention, and means for claims 45

46 Rejections 35 U.S.C. 101 Patentable Subject Matter 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 Recent case law and the AIA have clarified patentable subject matter with respect to business methods therapeutic methods DNA software 46

47 35 U.S.C. 102 (pre-aia) Novelty A person shall be entitled to a patent unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b)the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or (c) he has abandoned the invention, or (d)the invention was first patented or caused to be patented, or was the subject of an inventor s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor s certificate filed more than twelve months before the filing of the application in the United States, or 47

48 Pre-AIA 35 U.S.C. 102 Novelty (Cont.) (e) the invention was described in (1)an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent ; or (2)a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent ; or (f) he did not himself invent the subject matter sought to be patented, or (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it 48

49 First-to-File Under the AIA Date of Enactment: March 16, 2013 Hybrid First-to-File One-Year Grace Period File Early Provisional Application Foreign Practice has First-to-File 49

50 AIA 35 U.S.C. 102 Novelty 35 U.S.C. 102(a)(1) precludes a patent if a claimed invention was, before the effective filing date of the claimed invention: patented; described in a printed publication; in public use; on sale; or otherwise available to the public 50

51 AIA 35 U.S.C. 102 Novelty (Cont.) Does not include pre-aia geographic limitation Use or sale may occur anywhere in the world Does not include pre-aia treatment of secret sale as prior art Sale activity must have been available to the public 51

52 AIA 35 U.S.C. 102 Novelty Exceptions 102(b)(1)(A): A grace period (one year or less before the filing date) disclosure of the inventor s work (i.e., inventor, joint inventor, or someone who obtained the subject matter from the inventor) is not prior art to the inventor 102(b)(1)(B): A disclosure of the inventor s work shields the inventor from the prior art effect of a third party s subsequent grace period disclosure 52

53 Pre-AIA 35 U.S.C. 103 Nonobviousness (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made (b) (1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if (A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and (B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person 53

54 Pre-AIA 35 U.S.C. 103 Non-obviousness (Cont.) (3) For purposes of paragraph (1), the term biotechnological process means (A) a process of genetically altering or otherwise inducing a single-or multi-celled organism to (i) express an exogenous nucleotide sequence, (ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or (iii) express a specific physiological characteristic not naturally associated with said organism; (B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and (C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B) (c) Subject matter developed by another person, which qualifies as prior art only under one or more subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person 54

55 Pre-AIA 35 U.S.C. 103 Non-obviousness Standard The invention must not be obvious to one of ordinary skill in the art To establish a prima facie case of obviousness There must be some suggestion or motivation to modify or combine the prior art (KSR-Examiner s Guidelines) There must be a reasonable expectation of success The prior art must teach or suggest all the claim limitations 55

56 AIA 35 U.S.C. 103 Non-obviousness Can t obtain a patent if: The differences between claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains 56

57 35 U.S.C. 112 Specification Patent application must include a full and complete detailed written description of the claimed invention sufficient to enable one of ordinary skill in the art to make, use and practice the claimed invention Without undue experimentation, but not a recipe or howto manual Describe in detail every part, feature, advantage and function of the invention State preferences for size, range, material, shape or arrangement of parts, then include alternatives and variations 57

58 35 U.S.C. 112 Best Mode Under AIA Failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable Lack of best mode disclosure is no longer a defense for infringement (for suits filed after 9/16/11) Best mode disclosure still required 58

59 AIA Transitional Applications Nonprovisional applications that are: filed on or after March 16, 2013; and claim foreign priority or domestic benefit of an application filed before March 16, 2013, are called transitional applications 59

60 Office Actions (OAs) Two bites at the apple usually a 1 st OA on the merits and a final OA on the merits Rejection of claims Examiners rely on the statutes and case law to reject claims on the merits Objection to specification and/or claims Examiner objects to formalities Can get an extra bite at the apple by requesting pre-action interview (pilot program) Can possibly get an extra bite at the apple by requesting an after-final review (pilot program) 60

61 Responses to OAs Interview examiner Amend claims Add claims as long as no new matter Added claims must find support in the specification as of filing date of the application Cancel claims Argue claims no conclusory arguments Prepare declarations from experts Appeal 61

62 Final Office Actions If an application is not allowed after responding to Final OA, application will go abandoned unless Request for Continued Examination is filed, or A continuation is filed, or An appeal to the USPTO Patent Trial and Appeal Board (PTAB) is filed An after final interview is requested 62

63 Appeals An applicant can appeal after any one or more claims have been rejected twice, even if the second rejection is not a Final OA The appeal is to Administrative Patent Judges on the USPTO Patent Trial and Appeal Board An appeal brief is required that contains legal and factual argument 63

64 Patent Issuance Receive a Notice of Allowance Check patent term adjustment Pay fees Receive a Patent Certificate The patent is printed & publicly available 64

65 65 FOREIGN PATENT PROTECTION

66 Foreign Patents Patentability based on absolute novelty Applicant need not be inventor Foreign applications must be filed within 1 year of U.S. provisional/patent application filing date to receive priority date Type of protection Bundle of rights may be different from U.S. patents 66

67 Foreign Applications Filing Options Individual Countries Regional Treaties International PCT National Stage Deadlines 30 months after filing date of priority application Cost Entering national stage in PCT Annual payment while pending Depends on search authority chosen 67

68 Patent Prosecution Highway and the PCT U.S. application can benefit International Search under PCT U.S. application can be allowed if Applicant requests accelerated examination Must have positive search report At least one claim must have been found novel, have inventive step and industrial applicability Request must be filed before substantive examination Must file request for participation in PCT-Patent Prosecution Highway Pilot Program 68

69 Foreign Patent Office Databases Patents and patent applications WIPO international patent applications European patents and patent applications Japanese patents Canadian patents Australian patents 69

70 70 POST-ISSUE

71 Further USPTO Procedures Supplemental examination (only for patents enforceable after 9/15/12) Post-grant review (only for apps filed after 3/15/13) Covered Business Method challenge (only for certain business method patents) Reissue (all issued patents) Inter-partes review (all issued patents) Derivation proceedings (only for apps filed after 3/15/13 Reexamination (all issued patents) Litigation (all issued patents) 71

72 Challenge to Patent After Issuance Post-Grant Review 72 Effective date September 16, 2012, only after cases filed after March 16, 2013 Within 9 months of patent issuance by third party Standard for initiation Whether information presented is more likely than not to show a claim is unpatentable; or Raises a novel or unsettled legal question that is important to other patents or patent applications Grounds for challenge, such as patents, printed publications, prior use, prior sale, publically available, lack of written description, lack of enablement, etc. Requester is stopped from later challenging validity of claim or claims on any ground raised or reasonably should have been raised

73 Challenge to Patent After Issuance (Cont.) Ex Parte Reexamination (not a challenge) Patent owner or third party Patent or printed publication raises new question of patentability 73

74 Challenge to Patent After Issuance (Cont.) Inter Partes Reexamination until Sept. 15, 2012 Replaced with Inter Partes Review Requested by other than patent owner Based on patent or printed publication Information in request shows there is a reasonable likelihood that requestor would prevail on at least one claim Business Method Review 74 Party charged with Infringement For AIA, the review may only begin nine months after issuance of patent For pre-aia, the review can begin right after patent grant For AIA, review can be on any grounds Pre-AIA, limited prior art shall apply

75 Other Important Considerations Litigation Non-practicing entities or others cannot sue multiple defendants on same patent unless connection between defendants Best mode False markings Inventor s oath Micro-entities Prior user rights 75

76 Recommendations File Early and Often 1 st provisional Before publication at 18 months second provisional with follow-on material If US only another follow-on provisional before 30 months 76

77 Patent Maintenance Patent Certificate of Correction Maintenance Fees Due 3.5 Years After Issuance 7.5 Years After Issuance 11.5 Years After Issuance Criteria for Payment: Licensed/Not Licensed Agency Regulations 77

78 Inequitable Conduct Can inoculate a patent against Inequitable Conduct by use of supplemental exam Requires clear & convincing evidence of at least a threshold level of evidence that applicant both: (1) made affirmative misrepresentation of material fact, failed to disclose material information or submitted false material information; and (2) act was intended to deceive the PTO 78

79 Patent Opinions Freedom to Operate/Infringement Opinions Disclose known related patents Search prior unexpired patents related to product/process made based on licensed patents 79

80 Patent Opinions (Cont.) Freedom to Operate (Cont.) Construe all limitations of independent claims of most relevant patents from above based on extrinsic evidence Claims Specification File Wrapper Recent Court Decisions 80

81 Patent Opinions (Cont.) Freedom to Operate (Cont.) Compare elements of product and/or steps of process to be manufactured/used by licensee to most relevant patent claims Cost Literal construction Doctrine of Equivalents Approximately $15-25K depending on number of products/processes of licensee, complexity of technology, extent of search, number of relevant patents 81

82 Patent Opinions (Cont.) Validity study needed if infringement appears plausible Extensive search of all related PA with respect to possible infringed patents Cost of patent search approximately $3-10K Cost of non-patent search approximately $3-15K Includes statutory bars & other relevant info such as government contracts, inequitable conduct 82

83 Patent Opinions (Cont.) Validity Study (Cont.) If infringement appears plausible Analysis of PA & relevant material with respect to possible infringed patents Base on claim construction Other info to render patent unenforceable Ownership & inventorship issues Cost approximately $5-10K Formal written opinion if requested Cost approximately $3-6K 83

84 Awards & Incentives Agency award programs Licensing royalties 20% to inventor, up to $150K First $2000 immediately to inventor No conflict for inventor to accept under 18 U.S.C

85 85 TRADEMARK

86 Trademark Types Word mark Logo Service mark Trade name Trade dress 86

87 Trademarks Provide protection for words or symbols or combination used by manufacturer or merchant to identify source of goods Become effective when used on goods in commerce Federal registration interstate commerce State registration intrastate commerce Protection lasts indefinitely If properly used If renewed 87

88 Service Marks/Trade Names Service Marks Service marks provide protection for words or symbols, or combination thereof identifying services rendered by a business Service marks covered by trademark laws Service marks become effective when used to advertise service use in commerce not required Trade Names Trade names are used to identify name under which an organization does business Trade names not federally registered 88

89 Trademark Search USPTO trademark files (uspto.gov) Search engine SEC files (EDGAR) Search beyond exact match, e.g., cognates Begin or narrow by searching description of good/service USPTO logo search available Search thoroughly and BEFORE putting up website or other web presence 89

90 Trademark Federal Registration Description of goods/services offered Date of first use in commerce Date of first use in interstate commerce Nondescriptive mark Use of Trademark Office canned descriptions for reduced registration fees Automated way to get the signature of the person who has knowledge of the trademark s use in commerce 90

91 Trademark Examination Confusingly similar? Descriptive of underlying good/service? Consent decree required? Disclaimer required? 91

92 Trademark Use To avoid genericism: always use trademark as an adjective Must police trademark use to avoid trademark dilution Must consider international presence when deciding where to seek protection and where to enforce Use to notice the public that a trademark is being reserved for use Use when federal trademark registration is complete 92

93 Trademark State Registration Provides protection in-state only State search can be limited Filing requirements specific to state 93

94 94 COPYRIGHT

95 Copyright Provides individuals and companies with legal protection for a wide variety of works of authorship Literary Musical Dramatic Pantomimes Choreographic Pictorial, graphic and sculptural Audiovisual Sound recording Computer databases and software 95

96 Copyright (Cont.) 96 Copyright protection Occurs upon creation Lasts for the life of the author plus 70 years For work for hire, lasts 95 years from publication or 120 years from creation, whichever expires first No copyright protection available for works created by federal government employees performing federal government work Copyright registration Not required Beneficial when taking infringement action Copyright ownership resides with Author Employer when work for hire

97 Copyright Not Available for... Titles, names, short phrases, and slogans Familiar symbols or designs Mere variations of typographic ornamentation, lettering, or coloring Mere listing of ingredients/contents Ideas, procedures, methods... (patent subject matter) Works consisting entirely of information that is common property, not original authorship 97

98 Copyright Available for... Original works of authorship fixed in a tangible form of expression Literary works Musical works Dramatic works Pantomimes/choreographs Pictorial, graphic, and sculptural works Motion pictures and other AV works Sound recordings Architectural works 98

99 Copyright Search No need to search before registration Search before use 99

100 Copyright Registration Fix material in tangible form, publish, notice Copyright is secured automatically when a work is created Copyright is secured on the date the work is published or registered in unpublished form Copyright registration is necessary to gain additional benefits damages, evidence of CR, import protection Works created by government employees in the course of business are not eligible for copyright protection No examination Can be registered in groups 100

101 Mandatory Deposit Required for works published in the U.S. Within three months of publication in the U.S. Certain works are exempt, including online only works and works that create an undue burden on the author 101

102 RIGHTS IN GOVERNMENT INVENTIONS 102

103 Ownership Ownership follows inventorship Unless: An agreement states otherwise Cooperative Research & Development Agreement (CRADA) Law states otherwise FAR Part 27, Bayh-Dole Act, Executive Order 10096, patent law 103

104 Key Definitions Invention Any invention or discovery which is or may be patentable or otherwise protectable under Title 35 of the United States Code Subject Invention Any invention of the contractor made in the performance of work under [the] contract Made (1) When used in relation to any invention other than a plant variety, means the conception or first actual reduction to practice of the invention; or (2) when used in relation to a plant variety, means that the contractor has at least tentatively determined that the variety has been reproduced with recognized characteristics 104

105 Contractor s Patent Rights Under FAR and DFARS Contractor may retain the entire right, title, and interest throughout the world to each subject invention; with respect to any subject invention in which the contractor retains title, the federal government shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world 105

106 Contractor s Patent Rights Under FAR and DFARS (Cont.) With respect to any subject invention which the government takes title, the contractor shall retain a revocable, nonexclusive, royalty-free license throughout the world, except if the contractor fails to disclose the subject invention to the Contracting Officer within the specified time Contractor s license may be revoked or modified to extent necessary to achieve practical application of subject invention -requires written notice -contractor allowed 30 days to show cause why license should not be revoked 106

107 Action Contractor Must Take to Protect Government s Interest Execute or have executed all instruments necessary for government to obtain title or obtain patent protection Require, by written agreement, its technical employees to disclose promptly in writing all subject inventions Notify federal agency of any decision not to continue patent prosecution, pay maintenance fees, or defend reexamination 30 days prior to expiration of response period Include within specification of U.S. patent application on subject invention the following statement: This invention was made with Government support under (identify contract) awarded by (identify federal agency). The Government has certain rights in this invention 107

108 Timeline -FAR Within 2 months Inventor discloses subject invention Contractor discloses subject invention to Contracting Officer Within 2 years or at least 60 days prior to end of statutory bar period Contractor elects to retain title Within 1 year or prior to end of statutory bar period Contractor files U.S. patent application Within 10 months or 6 months from date permission granted in cases under secrecy order Contractor files foreign patent application 108

109 Timeline -DFARS Inventor discloses subject invention Within 2 months Contractor discloses subject invention to Contracting Officer Within 8 months or at least 60 days prior to end of statutory bar period Contractor elects to retain title Within 1 year or prior to end of statutory bar period Contractor files U.S. patent application Within 10 months or 6 months from date permission granted in cases under secrecy order Contractor files foreign patent application 109

110 What If? Contractor fails to timely disclose subject invention Contractor fails to timely elect to retain title to subject invention Contractor elects not to retain title to subject invention Within 60 days of learning thereof, government may, upon written request, obtain title to subject invention Contractor fails to timely file patent Government may, upon written request, obtain title to subject invention 110

111 Subcontracts Subcontractor shall retain all rights as if subcontractor were contractor Contractor shall not, as part of consideration for awarding subcontract, obtain rights in subcontractor s inventions 111

112 Preference for U.S. Industry Contractor agrees that neither it, nor any assignee, will grant any person exclusive right to use or sell subject invention unless such person agrees to manufacture substantially in U.S. waivers may be obtained 112

113 March-in Rights Federal agency has right to require contractor, an assignee or exclusive licensee to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to responsible applicants if Contractor or assignee has not achieved practical application of invention Health & safety needs not satisfied by contractor or assignee Public use specified by public regulations is not satisfied by contractor or assignee 113

114 Data Rights Definitions in DFAR : Rights in Technical Data--Noncommercial Items (June 2013) Technical data --Recorded information of a scientific or technical nature (including computer software documentation) -- Does not include computer software or financial/management products Government purpose rights Right to (i) Use, modify, reproduce, release, perform, display, or disclose technical data within the Government without restriction; and (ii) Release or disclose technical data outside the Government and authorize persons to whom release or disclosure has been made to use, modify, reproduce, release, perform, display, or disclose that data for United States government purposes 114

115 Data Rights(Cont.) Limited rights --Right to use, modify, reproduce, release, perform, display, or disclose technical data, in whole or in part, within the Government --Government may not, without the written permission of the party asserting limited rights, release or disclose the technical data outside the Government, use the technical data for manufacture, or authorize the technical data to be used by another party, with certain exceptions Unlimited rights --Right to use, modify, reproduce, perform, display, release, or disclose technical data in whole or in part, in any manner, and for any purpose whatsoever, and to have or authorize others to do so 115

116 Data Rights Exceptions for SBIR- STTR Program Small business concern retains rights to data in performance of award for not less than four years Agencies are required to protect SBIR data rights developed from Phases I, II, and III, including rights of subcontractors Agencies cannot condition Phase III award on giving up SBIR data rights negotiations after award, by separate agreement, without pressure is permissible 116

117 Data Rights Exceptions for SBIR-STTR Program (Cont.) SBIR data rights continue to be protected from date of delivery of last deliverable under award Any SBIR data protected and referenced under a subsequent SBIR award remain protected under protection period of subsequent award 117

118 Current Contract Export Control Provisions No additional contract provisions covering current Export Administration Regulations (EAR) and International Traffic Arms Regulations (ITAR) Contractors and subcontractors must abide by existing EAR and ITAR 118

119 Proposed Contract Export Control Provisions by Department of Defense Impose specific requirements upon government and contractor to identify and prevent unauthorized disclosure of information and technology controlled under EAR and ITAR Compliance program Training Periodic assessment to ensure compliance Currently under review by DAR Editor 119

120 120 PRACTICE TIPS

121 Things That Make Your Patent Attorney Crazy Nomenclature Invention disclosure patent application Patent application patent Incomplete invention disclosures 1 paragraph wonders Not answering the questions asked Receiving data & docs piecemeal Not using the docket number 121

122 Things... (Cont.) Inventors not reporting inventions Because the CRADA partner, the contractor, or the other government agency is taking care of it Government inventors executing assignments to other entities Confusing statements of intent to assign with assignments, declarations, & powers of attorney 122

123 Things... (Cont.) Inventors wanting to add supervisors and funders as listed inventors Inventors wanting to rearrange list of contributors on invention disclosures, applications or patents Inventors disclose features but not how the invention works 123

124 How You Can Help Be proactive Educate and inform Refer your inventor to the patent attorney as soon as possible Monitor the IDs; check for completeness Get your inventors to do preliminary searches 124

125 Call the Patent Attorney! IF, before a patent application is filed, your inventor is: Presenting or publishing Disclosing the invention at a trade show or other public meeting Transferring materials or collaborating without a written agreement Generating an RFP or contract 125

126 Contact Information Jacob N. (Jesse) Erlich, Partner Burns & Levinson LLP Boston, Massachusetts Tel: (617) Kathleen (Kathy) Chapman, Assistant Counsel U.S. Navy Office of Naval Research, Naval Research Laboratory Stennis Space Center, Mississippi Tel: (228)

127 Thank you. You deserve a pat on the back! 127