From Idea to Patent Pending: Writing a Good Provisional

Von Liebig – OIC Entrepreneurism “VOICE” SeriesNovember 4, 2016

Greg Einhorn – Greer, Burns & CrainVictoria Cajipe – UC San Diego OIC

Disclaimer: The materials presented herein are for informational purposes only and not for the purpose of providing legal advice.

FIRST INVENTOR TO FILE REGIMEEffective March 16, 2013

America Invents Act (AIA) Modernizing U.S. Patent Law

The Innovation & Commercialization Loop

Disclose to OIC before publishing

LaunchStartupIf advantageous

License, develop, monitor diligence, support startups

Pursue patent strategy in sync with

merits & market

OIC will work closely with UCSD researcher through all phases of the cycle

Commercialize, reap economic & social benefit, fuel new

research

Seek commercialopportunities

Patenting Process Timeline

http://www.research.ucla.edu/tech/patent_timeline.pdf

Outline

Patent basicsProvisional: what, why, when, how

Examples/ExercisesQ & A

What is a Patent?

form of intellectual property exclusive rights granted by state to inventor (or assignee) for limited time period in exchange for disclosing invention to the public NOT the right to make, use, offer for sale, sell or import, but the right to EXCLUDE OTHERS from making, using, offering for sale, selling or importing the invention

Qualcomm – over 14,000 US Patents•“Patent Wall”: right to exclude others• But including others can be lucrative: License patent rights -> royalty stream ($B profit)

http://www.politico.com/story/2011/03/small-businesses-make-a-big-impact-051512

Types of Patents

Utility Patents Term: 20 years from filing of application 90% of USPTO patents

Design Patents14 years from grant

Plant Patents20 years from filing

Utility Patent

New Non-obvious Useful Subject matterComposition of matterProcess MachineArticle of manufactureImprovement

• Novelty Not previously patented, published or

known to public In US, 1-year grace period between public

disclosure and filing Avoid public disclosure with confidentiality

agreement• Non-obviousness or Inventive Step Not obvious to one with ordinary skill in art

• Utility Has useful purpose and will perform

Anatomy of a Patent(or Patent Application)

Front page

Anatomy of a Patent (continued)

Formal Drawings Show every feature of invention given in claims

Specification Background, Summary, Description, Examples Support every feature given in claims In Description: explain invention, process of

making and using invention in full, clear, concise, exact terms so person of ordinary skill in art can make and use invention without extensive experimentation -> teach the invention

Anatomy of a Patent (continued)

Claim(s) Point out and distinctly claim that which is regarded

as the invention (composition, process/method, machine/device, manufacture/product) Construct and word carefully Stake out invention’s boundariesWhat is examined/allowed by USPTO*What is protected, what others are excluded from

making, using, selling …

Hire/consult a patent attorney/agent!*United States Patent and Trademark Office

What is a provisional application?

Legal document describing invention filed with USPTO Establishes early filing “priority” date Does not mature into issued patent no examination of claims

Unless applicant files regular non-provisional patent application within one year

What is a provisional application? (continued)

Not published officially But becomes publicly available if pursue regular patent application (when regular publishes) USPTO PAIR (Patent Application Information Retrieval)http://portal.uspto.gov/pair/PublicPair

WIPO* Patentscopehttps://patentscope.wipo.int/search/en/advancedSearch.jsf

*World Intellectual Property Organization

Why file a provisional?

Inexpensive Helps ensure “first inventor to file” status Puts invention in “patent pending” state Gives applicant time to further develop, market and assess commercial potential of invention

Good strategy for universities (high volume) & startups/independent inventors (low cash)

When to file a provisional?

Before public disclosure (or, if published, before 1-year from publication, to preserve US patent rights)

Invention is sufficiently “enabled” (you are in possession of invention) Can describe how to make and use Preferably, reduced to practice & works

Balance “first to file” with need/ability to develop during 1-year provisional term

A good provisional? Much like a patent or non-provisional patent application (ideally, not just an already existing document attached to provisional cover sheet) Specification should be as complete, clear and exact as possibleInclude everything you have/know about inventionTry to be prophetic, broaden invention scope Priority date only for what provisional discloses

Even if not examined, provide some claimsElucidates invention & what to include in spec

Provisional writing - preparation

Answer questions:What is your invention (composition, process, machine, article of manufacture)?What is unique about it?What is existing art? compare with invention? How does invention work? Possible applications?

Provisional writing – preparation (continued)

Find patents for similar, related inventionsPatent landscape clarifies novelty, non-obviousness,

potential of your inventionUse as model for content, language, claims

Databases:USPTO https://www.uspto.gov/patents-application-process/search-patents

WIPO Patentscope https://patentscope.wipo.int/search/en/search.jsf

EPO Espacenet https://worldwide.espacenet.com/

Google Patents https://www.google.com/patents

Free Patents Online http://www.freepatentsonline.com/search.html

Provisional application proper• Title: short, precise, specific• List of Inventors• Government Support Statement• Technical Field• Background: context, other approaches, “prior art” (patent, publications, other public information)

• Brief Summary of the Invention: problem addressed, novel solution provided

• Brief Description of the Drawings

Provisional application proper (continued)

• Detailed Description of the Invention• References• Claims• Abstract• Drawings: marked up figures, photos OK• Appendices or Attachments: for completeness

Provisional writing tips Description: specific and broad at same timeDescribe best mode; detailed parts, connections,

properties - enough so can reproduce inventionUse quantitative bounds and rangesAvoid restrictive language (e.g., “must”, “essential”)Discuss variations, extensions

Explain why your invention is not obvious Give example(s) of intended use Claims: preliminaryFocus on main featuresGive details but do not limit

Provisional filing preparation Make PDF of written description documentTitle...Detailed Description…Claims, Abstractspecification.pdf

Make PDF of drawingsdrawings.pdf

Make PDF of attachments, if anyattachments.pdf

Fill in and save PDF provisional cover sheethttps://www.uspto.gov/sites/default/files/forms/sb0016.pdftransmittal.pdf

Provisional filing onlineGo to https://www.uspto.gov/patent

Provisional filing online (continued)

Or, EFS-Web Unregistered eFiler

for basic initial filing of new patent applicationshttps://efs.uspto.gov/EFSWebUIUnregistered/EFSWebUnregistered

http://patentfile.org/filing-provisional-patent-at-uspto/

• Attach PDF files; choose Document Description• Press Upload & Validate, if No errors, Continue• Next screen, Calculate Fees

Small/micro entity (independent inventor, small company, non-profit) Select Provisional Input number of pages (including drawings) Press Calculate

• Review• Pay

USPTO Receipt = Patent Pending! Provisional Application Number Filing Date 12 month clock

• Provisional Application filing fee = $260 • Small entities = $130• Micro entitiy = $65 USPTO-defined small entity Not > 4 previously filed applications Gross income not > 3X median household income in

previous year No obligation to assign, grant, or convey to another

entity not meeting inventor’s income requirements

Pay filing fee

Provisional writing web resourcesHow to Patent an Idea in 3-Steps with a Provisional Applicationhttp://patentfile.org/how-to-patent-an-idea/http://patentfile.org/category/provisional-patent-applications-how-to-file/Nolo’s Guide to Provisional Patent Applicationshttp://nolonow.nolo.com/noe/popup/provisional_patent_application_guide.pdf Free Provisional Templateshttp://patentfile.org/free-provisional-patent-template/http://www.noreklaw.com/forms/Provisional-Template.docLegal Zoom: How to Write a Provisional Patent Applicationhttp://info.legalzoom.com/write-provisional-patent-application-20204.htmlTips For Drafting Provisional Patent Applicationshttp://www.kb-ip.com/articles/tips-drafting-provisional-patent-applicationsWriting Provisional Software Patent Applicationshttp://www.pckip.com/patent-strategy/writing-provisional-software-patent-applicationsIP Watchdog Do It Yourself Patents: Patent Filing Made Easy – Just $99http://www.ipwatchdog.com/patent/invent-patent-system/

USPTO: Provisional Application for Patenthttps://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent

Google “provisional patent videos”

Examples / Exercises

http://rpsec.usca.edu/campinvention/camp-invention-lightbulb2.png

Example #1

Problem: Misplacing eyeglasses

Idea!• What is it?• Novel, non-obvious, useful?• How to make, how to use?• Draft claims ?

http://www.piercedglasses.com/company.html

US 7066592 Frameless glassesattaching to body https://www.google.com/patents/US7066592

US 7066592 Frameless glasses attaching to body https://www.google.com/patents/US7066592

CLAIMS[…]5. In combination with a body piercing nose bridge stud, an improvement comprising; a first stud anchored on an inbound portion of a left eyeglass member; a second stud anchored on an inbound portion of a right eyeglass member; wherein each stud mounts to a respective left or right of the nose bridge stud for support.

6. The improvement of claim 5, wherein the left and the right eyeglass members each have a nose rest.

7. An eyeglass support comprising: an eyeglass member; connector means for holding an eyeglass member to a body piercing member, said connector means functioning to removably attach the eyeglass member to the body piercing member; and anchor means for removably connecting the connector means to the eyeglass member.

Example #2Problem: Cancer

Example #2: Solution: Synthetic Hollow Enzyme Loaded Shells

Nano Shark Cages and CancerInanc Ortac, UC San Diego ECE PhD, 2013

https://www.youtube.com/watch?v=BgjuVAU-5to

Synthetic Hollow Enzyme Loaded Shells (SHELS)

• Circumstances at time of provisional 2011 Research Expo poster presentation imminent Available: draft manuscript, group meeting &

qualifying exam presentations, poster

• How to do the provisional? What to include? What type claims?

Provisional 61/475,649 Multifunctional Nanoparticle Designs & Applications• Incorporated all material• Claims: techniques and structures, including: 1. Method of fabricating nanoparticles with hollow core, porous surface and resealable holes, the method comprising: using a varying efficiency of colloidal templating reactions on surfaces with different chemical and physical properties. […]6. Material as described and shown herein and in appendix.7. Apparatus as described and shown herein and in appendix.8. A system as described and shown herein and in appendix.

International PCT/US2012/033853 US Application US 14/111,713

Claims: methods of fabricating, nanoparticle devices 1. Method of fabricating a particle, comprising: combining a core particle with one or more masking particles to form a template, wherein one or more masking particles bind to core particle and cover one or more regions of the core particle surface […]19. Nanoparticle device for carrying a load, comprising: shell structure including at least two layers […] wherein shell structure contains a substance within hollow interior region […]

1. A nanoparticle for carrying a payload substance, comprising: a shell structure including at least two layers including an internal layer and an external layer;wherein the internal layer encloses a hollow interior region comprising a payload substance in the hollow interior region;wherein the internal layer includes one or more holes penetrating said internal layer;wherein the external layer is attached to the internal layer and formed around the internal layer;wherein the payload substance is capable of passing through the one or more holes of the internal layer;and wherein the payload substance is incapable of passing through the external layer.

http://invent.ucsd.edu/invent/portfolio/devacell/

http://devacell.com/

Example #3Problem: Control stem cell differentiationIdea• Guide, induce stem cell differentiation• Use nanostructured cell culture substrates• Dimensions/geometric cues of surface nanotubes augmented human mesenchymal stem cell (hMSC) adhesion specific differentiation of hMSCs into osteoblasts

Published before provisional filing, only US rightsStem cell fate dictated solely by altered nanotube dimensionProc Natl Acad Sci U S A. 2009 Feb 17;106(7):2130-5. http://www.pnas.org/content/106/7/2130.abstract

2 startup licensees!

Example #3 exercise:Compare PNAS paper & provisional or full application

• Full US patent application 12/900,249 “Articles comprising nano-materials for geometry-guided stem cell differentiation and enhanced bone growth” https://www.google.com/patents/US20110085968

• Find provisional in USPTO PAIR http://portal.uspto.gov/pair/PublicPair

Title and Inventors vs Authors

PNAS 2009 Feb 17;106(7) 61/251,135 & 12/900,249

Stem cell fate dictated solely by altered nanotube dimension

Articles comprising nano-materials for geometry-guided stem cell differentiation and enhanced bone growth

Oh S, Brammer KS, Li YS, Teng D, Engler AJ, Chien S, Jin S.

Sungho Jin, Seunghan Oh, Karla Brammer

Compare AbstractsPNAS 2009 Feb 17;106(7) 61/251,135 & 12/900,249

Two important goals in stem cell research are to control the cell proliferation without differentiation and to direct the differentiation into a specific cell lineage when desired. Here, we demonstrate such paths by controlling only the nanotopography of culture substrates. Altering the dimensions of nanotubular-shaped titanium oxide surface structures independently allowed either augmented human mesenchymal stem cell (hMSC) adhesion or a specific differentiation of hMSCs into osteoblasts by using only the geometric cues, absent of osteogenic inducing media. hMSCbehavior in response to defined nanotube sizes revealed a very dramatic change in hMSCbehavior in a relatively narrow range of nanotube dimensions. […]

The present invention provides articles of manufacture comprising biocompatible nanostructures comprising significantly increased surface area for, e.g., organ, tissue and/or cell growth, e.g., for bone, tooth, kidney or liver growth, and uses thereof, e.g., for in vitro testing of drugs, chemicals or toxins, or as in vivo implants, including their use in making and using artificial tissues and organs, and related, diagnostic, screening, research and development and therapeutic uses, e.g., as drug delivery devices. The present invention provides biocompatible nanostructures with significantly increased surface area, such as with nanotube and nanopore array on the surface of metallic, ceramic, or polymer materials for enhanced cell and bone growth, for in vitro and in vivo testing, cleansing reaction, implants and therapeutics. […]

Compare Abstracts (continued)

PNAS 2009 Feb 17;106(7) 61/251,135 & 12/900,249

[…] Small (approximately 30-nm diameter) nanotubes promoted adhesion without noticeable differentiation, whereas larger (approximately 70- to 100-nm diameter) nanotubes elicited a dramatic stem cell elongation (approximately 10-fold increased), which induced cytoskeletal stress and selective differentiation into osteoblast-like cells, offering a promising nanotechnology-based route for unique orthopedics-related hMSC treatments.

[…] The present invention provides optically transparent or translucent cell-culturing substrates. The present invention provides biocompatible and cell-growth-enhancing culture substrates comprising elastically compliant protruding nanostructure substrates coated with Ti, TiO2 or related metal and metal oxide films.

Compare other parts (homework)• Map sections between paper & patent application• Compare contents

Example #4Problem: Keep airway open in anesthetized patient

US Patent Application 14/401,517 “Combined bite block/oral airway/tongue depressor appliance” Two provisionals: design evolved (61/647,055 & 61/784,097) No publication Licensed at provisional stage

Other examples (for home study)Prof. Yuhwa Lo: US 13/254,851; US9134221 Fluidic flow cytometry devices and particle sensing based on signal-encodinghttps://www.google.com/patents/US20120078531• Provisional 61/262,787 and 61/158,969 accessible via USPTO PAIR• Journal articles:

Microfluidic cell sorter with integrated piezoelectric actuator Lab-on-a-chip flow cytometer employing color-space-time coding Optofluidic Waveguides in Teflon AF-Coated PDMS Microfluidic Channels

http

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nano

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om/ Nominated for 2016 CONNECT

Most Innovative New Product AwardLife Science Diagnostics/Research Tools

Other examples (continued)

Prof. Adah Almutairi: PCT/US2013/040219; US9333258 & US 9333259Fine spatiotemporal control of thermolysis and lipolysis using NIR light https://patentscope.wipo.int/search/en/detail.jsf?docId=WO2013169955Provisional US 61/644,328 accessible via Patentscope

http://invent.ucsd.edu/invent/portfolio/elux-medical/

Thank You!http://innovation.ucsd.edu/

http://invent.ucsd.edu/

Room #013, Powell-Focht Bioengineering Hall