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William Durfee Department of Mechanical Engineering

University of Minnesota Minneapolis, USA

Patents

What the Med Tech Innovator Needs to Know

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Session Goals

• Understand why patents are important to innovators

• Understand what a patent is

• Learn how to read a patent

• Learn how to find patents

• Understand what a patent costs

• Understand the IP policies at UMN

Are Patents Important?

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589,410 U.S. Utility Patent Applications in 2015

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298,407 patents granted in 2015

About 50% foreign applicants

41 patents granted in 1800

2.9 m patent apps worldwide in 2015

1.1 m filed in China Source WIPO

Source: USPTO

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We regularly sear h pu lished patents to see where our

o petitors are goi g.

VP Research and Business Development, Medtronic, 2014

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IP Protection is Critical

• Value of company is in its intellectual property and the ability of staff to generate IP, not in the products

• Investors look at people and IP ownership more than the concept

What is a Patent?

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Intellectual property

Product of the mind: idea, invention, artistic expression, name, business process, chemical formula, ...

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A patent is a government-brokered deal between inventor and society

• 20 years from filing date

• Not based on commercial value of invention

• Gives inventor right to exclude others from “make, use or sell”

Inventor gets

limited term

monopoly Society gets

disclosure of

invention

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U.S. Constitution Article I, Section 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;”

To receive a patent your invention must be

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• Can be reduced to practice (made)

• Is not a perpetual motion machine

New Useful

Nonobvious

Types of IP Activity

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Technology Disclosure

Provisional Patent

Application

Patent Application

Published Patent

Application

Issued Patent

How many months to get a patent ?

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Source: USPTO, Oct. 2016

Avoid Disclosure

• A publicly disclosed idea cannot be patented

• Ways that you can disclose • Publishing in a journal or conference article

• Describing in a presentation at a scientific meeting

• Posting a YouTube animation

• Including on a website

• Demonstrating at a trade show

• Discussing with colleagues

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Be aware when writing about or taking about your idea.

Learning From Patents

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US 6,682,544

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How To Read a Patent

• Front matter

•Drawings

•Specification

•Claims

•To learn

•To disclose

•To protect

•To avoid infringing

How to Read a Patent

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What is claimed is:

1. An ultrasonic instrument comprising: an outer tube

defining a longitudinal axis and having a proximal end and a

distal end; an actuation member positioned within the outer

tube; a vibration coupler positioned within the outer tube,

the vibration coupler having a distal end and a proximal end;

a jaw member extending from the distal end of the vibration

coupler; a clamp pivotally mounted adjacent the distal end of

the outer tube, the clamp being movable in relation to the

jaw member between open and clamped positions, the clamp

including a camming member which operatively engages the

actuation member such that movement of the actuation

member pivots the clamp between the open and clamped

positions.

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1. An ultrasonic instrument comprising:

an outer tube defining a longitudinal axis and having a proximal

end and a distal end;

an actuation member positioned within the outer tube;

a vibration coupler positioned within the outer tube, the

vibration coupler having a distal end and a proximal end;

a jaw member extending from the distal end of the vibration

coupler;

a clamp pivotally mounted adjacent the distal end of the outer

tube, the clamp being movable in relation to the jaw member

between open and clamped positions, the clamp including a

camming member which operatively engages the actuation

member such that movement of the actuation member pivots

the clamp between the open and clamped positions.

Patent Search

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Freedom to Operate

Does my idea

infringe?

Patentability

Can I get a patent for my idea?

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Patent Searching

1. Key word

2. Class & sub-class

3. Forward and reverse citations

Issued & published applications

Search Tools

• Uspto.com • U.S. issued and

published • Most up to date

• Google.com/patents • U.S. and European • Prior art feature

• Freepatentsonline.com

• See tutorial at freepatentsonline.com

• Frequent changes in features

USPTO, http://patft.uspto.gov/

Google, http://www.google.com/patents 37

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Search by Class

www.uspto.gov/go/classification/

606 / 169: Surgery / Cutter having vibratory drive means

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Search by Forward and Reverse Citations

What Does a Patent Cost?

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Filing Fees, USPTO (US$)

What Fee Small Entity Fee

Micro Entity Fee

Provisional 260 130 65

Utility filing+search+exam 1,600 730 400

Each indep claim > 3 420 210 105

Issue fee 960 480 240

Maintenance, 3.5 yrs 1,600 800 400

Maintenance, 7.5 yrs 3,600 1,800 900

Maintenance, 11.5 yrs 7,400 3,700 1,850

Source: USPTO

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Attorney Patent Preparation Fees

What Fee (US$)

Provisional application 1,500

Utility, simple (paper clip) 6,000

Utility, minimal (umbrella) 8,000

Utility, complex (MRI) 15,000 +

Source: ipwatchdog.com

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Provisional Patent Application

• Establishes early filing date • Can disclose invention after filing • Effectively gives 21 year protection

• Can market “patent pending” • Easy

• Describe the invention, inventors, best mode • No claims • $130 filing fee

• Must describe claimed invention • Is not reviewed for patentability • Must be prepared to file patent application within 12

months • Claims must depend on invention described in provisional

• “Patent Pending in 24 Hours”, Nolo Press

Summary

• Without IP your med tech innovation has little value

• Your invention must be new and nonobvious

• Hire a patent attorney to write your patent

• Search the patent database early and often

• Avoid unintentional disclosure

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