Patents 101 and Patent Prosecution Larry Baratta Partner and Patent Attorney, Electrical Practice Group Admitted in NC and GA, USPTO registered 1901 Roxborough Rd., Suite 250 Charlotte, NC 28211 www.worldpatents.com 704.790.3600 lbaratta@worldpatents.com

About Clements Bernard PLLC Charlotte, NC based Intellectual Property Boutique Specializing in Electrical, Networking, Software, Mechanical, Chemical, and Biotech Fields Focus Patent and Trademark Prosecution and Licensing, Opinions, Transactional matters Intellectual Property Litigation (Patents, Trademarks, Copyrights, and Trade Secrets) Representative Clients Publicly-traded companies Numerous venture funded start-ups U.S. Government Agencies Entrepreneurial Individuals Value to Clients Reasonable, Fixed Fees offering clients deterministic, fixed-fee pricing Individual focus from seasoned attorneys Business minded Experience - Former Patent Office Examiners in-house & Attorneys with in-house engineering industry experience www.worldpatents.com

What is Intellectual Property (IP) Intangible Property Rights including, for example, ideas, inventions and other innovations, expression, indications of origin and confidential information Patent Copyright Trademark Trade Secret (protected by State law) Almost all aspects of technology, innovation, and/or works of authorship (including software) or art are addressable as IP IP rights arises from Operation of Law In U.S., Constitutional Basis Article I, Section 8, Clause 8: 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

Patents, Copyrights and Trademarks Inventions Machines, methods, composition of matter, improvements Any name, symbol, device or combination that -identifies source -distinguishes goods and services from another Original expression Fixed in tangible medium Not novel, obvious, not useful (no utility) Functional Does not exclusively identify Descriptive Ideas, Facts, Methods and systems (patents) Idea expression is protected, not idea When patent issues From use; Protection can last forever and can also disappear since protection is tied to use From time fixed in a tangible medium Fall within scope of a patent claim Likelihood of confusion Copying with Access and Substantial Similarity Patents Trademarks Copyrights Type Not Protected When Protected Infringement

What is a Patent? In the U.S., Granted by the U.S. Patent & Trademark Office (USPTO) Part of the Commerce Department Protects: Manufactured items, Equipment, Processes, Compositions and Improvements to the above Rights: Right to exclude others from making, using, offering for sale, selling and/or importing what is claimed A negative right of exclusion only Term: 20 Years From Filing or priority date extensions available based on PTO delay Territory: United States and its territories Rights Arise: Upon issuance of a patent, arising from a patent application filed prior to public use, disclosure or sale

Sample Patent U.S. Patent No. 6,469 to Abraham Lincoln, 1849 The 16th President is the only President to receive a U.S. Patent

Patent Claims Section in the patent or application that defines the legal scope of protection granted by the patent Parts Preamble recites the class of the invention and optionally primary purpose; e.g. A system, A method, A network for providing Transitional phrases "comprising", "containing" and "including" are most often used to mean "having at least the following elements..." and are therefore open (inclusive) and do not exclude additional limitation "consisting of" and "consisting essentially of" are more limiting, as they mean "having all and only" or "virtually only" and are therefore closed (exclusive) Elements and/or Steps Defines the invention and includes interaction between the elements. A system, comprising: X, Y, and Z X, Y, and Z are elements A method, comprising: A, B, and C A, B, and C are steps Limitations Clauses that define, i.e. limit, the elements and/or steps wherein X is communicatively coupled to Y and Z for control thereof

Patentable Subjects Systems, Devices & Other Manufactured Items Such as manufactured equipment, e.g., electronic devices or circuits, semiconductors, systems configured to perform a function, networks, components, etc. Processes or Methods Such as manufacturing processes or methods of doing somethingmay be implemented as software or as a business method Materials/Composition of Matter Chemical, Genetics, drugs, compounds, etc.

Patentability Requirements Novelty Does not exist in the prior art; Not previously disclosed OK if Modification of an existing product/process, or use of something old in new/different way Usefulness Utility - Performs a useful function, does it work? An easy requirement to meet in mechanical and electrical arts. Sometimes difficult in chemical and life sciences I have a new compound, I just dont know what it does yet therefore, no utility Non-obviousness A knowledgeable but relatively unimaginative person working in your field would not have been led directly to the invention in light of the available information at the time of invention. This is difficult to describe in general, as lawyers the focus on non-obviousness is generally based on prior case law for guidance. Is there a suggestion/motivation/teaching to combine existing knowledge (i.e., one or more existing pieces of art) to solve the problem your invention solves? This is the current legal test, and it allows the Patent Office to reject an invention as obvious if the elements and limitations of the invention can be found in one or more references, and if there is a reason, i.e. suggestion, to combine them. A rejection under obviousness generally involves combining one or more references to meet all of the limitations and elements of the claimed invention

Patentability Requirements Novelty (35 U.S.C. 102) Generally applies to all technology areas Utility (35 U.S.C. 101) Typically an issue in chemical, biological, and pharmaceutical arts I have this new compound, I just dont know what it does yet i.e. must have a practical application for patentability Non-Obviousness (35 U.S.C. 103) This is a typical rejection in the Electrical/Software/Mechanical arts Two or more separate references combined show all elements of the invention Must show distinction over these references or why these references cannot be combined in light of the claimed invention Subject Matter (35 U.S.C. 101) An issue in the Software arts In light of court precedent, software-related inventions must be tied to a particular machine or perform a physical transformation of a physical device

Inventor The person(s) who first conceived the invention Joint inventors - Each inventor must have contributed to the subject matter of at least one claim Non-Inventors: Persons who implement the ideas of others Persons who have obtained the entire idea of an invention from another are not inventors Persons who suggest concepts without contributing to the means for carrying out the suggestion (Wouldnt it be nice if.)

When to file a Patent Application You Develop, Improve, or Do, Something New or Different!! You solved a problem or developed something new and useful Your solution for the problem is not the same as anothers solution for the same problem **Note that use of something known in a new, non-obvious, and different way or to solve another problem can be patentable!!!**

What to Disclose General Has this invention been discussed with others: Inside or outside of your company? With Whom? When? Was there a Non-Disclosure Agreement in place? Have you done a search? Key Words for Database Searching Is this Invention relevant to a Standards activity? Describe the Invention Tell a Story - start at high level, then work down into details, including: What is the Invention about? What Problem does it solve? What other Solutions have been tried or exist, and what were their shortcomings? What are the Specific Elements or Steps that solved the problem? What are the values of the Invention Disclosure Submission Form

Patentability Search Search of U.S. and Foreign patent applications and issued patents and non-patent literature (journals, white papers, etc.) Objectives To ascertain whether the invention has been patented or disclosed previously and, thus, would be unpatentable; To avoid filing a patent application and having it summarily rejected by the Patent Office because of an identical or substantially similar invention which would render your invention not new or not non- obvious; and To draft a better patent application by emphasizing those features of the invention not turned up in the search. Duty to Disclose known references which predate your application to the Patent Office However, no affirmative duty to perform a search Provide known closely related references with invention disclosure

Filing Process 1 Attorney prepares a draft Application Inventor Reviews & Comments Application is Finalized Inventor Reviews & Signs (declaration/POA and maybe an Assignment) Application is Filed Inventors Help Sought In Responding to Office Actions During Prosecution To Issuance Foreign Filing? Invention Disclosure to Attorney 2 3 4 5 6 7 8 Disclosure Conference with Inventors and Attorney

Application Process at the Patent Office Application Amendments RCE/Appeals Examination Allowance Office Action Issue Rejection of one or more claimsAllowance of all claims Amendment of Claims to overcome rejections Arguments to counter rejections RCE if the Office Action was Final to continue examination Potential Appeal to the BPAI after a Final Office Action if desired 1st Office Action time can significantly vary on the order of 1-5 years Pay Issue Fees

Provisional Patent Application A provisional application is a simplified filing whose purpose is to preserve ones right to file a utility patent within one year of the filing of the provisional application A provisional application requires the filing only of a specification adequately describing the invention, and drawings where necessary for the understanding of the invention. It is important that a provisional application describe the invention fully, as the provisional filing date is only effective for subject matter disclosed in the provisional application. A provisional application cannot mature into a patent, it is not examined and it cannot claim priority in an earlier application. A provisional application is kept in confidence by the Patent Office. A provisional application is, however, a regular national filing that starts the Paris Convention priority year (discussed below). A provisional application will automatically go abandoned by law one year after filing. The provisional application has several important benefits. It places domestic applicants on an even footing with foreign applicants because the filing of a provisional application does not trigger the start of the 20-year patent term. It has minimal legal and formal requirements. The provisional application provides a mechanism whereby applicants can quickly and relatively inexpensively establish an early effective filing date in a patent application which establishes a constructive reduction to practice for any invention described in the provisional application. The filing of a provisional application also provides up to twelve months to further develop the invention, determine marketability, acquire funding or capital, seek licensing or seek manufacturing.

Patent Lifecycle and Costs End of Patent Term Invention Disclosure Submission $4-6K $1.2K $1.5K $1.2K $0.9K* $0.5K* $1.3K* $2.0K* Patent Application Preparation and Filing Patent Application Prosecution Patent Issue Fee Patent Maintenance Fee Patent Maintenance Fee Patent Maintenance Fee ~$15.0K Approximate fees * Small Entity Fees (