# Presentation: 264492

## ARE YOU PROTECTED?SOME BASICS OF PATENTS

- Mark J. Nuell, Ph.D.
- Partner
- Birch, Stewart, Kolasch & Birch, LLP
- September 2003

## Patents are one form of “intellectual property”.

- Some other familiar forms of intellectual property are:
-  trade secrets
-  trademarks
-  copyrights

## Slide 3

## The Patent System Has a Constitutional Basis In Article I, Section VIII

- The Congress shall have power ...
- 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;

## Some Important Ideas:

- A Patent is a “deed” to an invention.
- A Patent claim is a property right and 	thus is a right to _exclude_ others from 	practicing the invention.

##  A patent right is NOT ...

-  a right to perform the invention 	or
-  a monopoly in the marketplace.

## A Patent is not a monopoly because the mere right to exclude someone from practicing the invention does not necessarily give the patentee the market power to price his product above the equilibrium price.  

-  Substitutes
-  Improvements (which may be separately       	patentable!)
-  Advertising
-  Manufacturing capability

## What Can Be Patented

-  Process or Method
-  Machine or Apparatus
-  Article of Manufacture
-  Composition of Matter
-  Chemical Compounds
-  Physical Mixtures
-  Improvements of Any of the Above

## What Can Be Patented

*Diamond v. Chakrabarty*, 447 U.S. 303, 206 U.S.P.Q. 193 (1980)
- The U.S. Supreme Court established the rule that compositions of matter that are made by  man, i.e. that are “not nature’s handiwork, but [the inventor’s] own”, are patentable subject matter.

## What Can Be Patented

*AT & T Corp. v. Excel Communications Inc.,*
- 50 USPQ2d 1447 (Fed. Cir. 1999),
- addressed patentability of computer algorithms.

## AT&T vs. Excel

- Is the claimed subject matter as a whole a disembodied mathematical concept representing nothing more than a "law of nature" or an "abstract idea," or has the mathematical concept been reduced to some practical application  rendering it "useful?
**If the algorithm as a whole produces a useful, concrete and tangible result, and therefore is more than an abstract idea, then it is patentable subject matter**.

## Slide 12

## Patent Claims

- The “Claims” of a patent define the scope of the invention.  In the U.S., peripheral claiming is used.  That is, the claim language defines the “edge” of the property right.

## What is claimed is: 

- In a water gun having a housing, a barrel, at least one pressurizable air/water storage tank, a pressurizing mechanism, a channel of release for shooting water, and a release mechanism, the improvement which comprises:
- 	a controlled flow, bursting water gun release mechanism, including:
-  	(a) a valve located within said channel of release and having a first, closed position which prevents flow of water out of said channel of release and having a second, opened position which permits flow of water out of said channel of release;
- 	(b) a first spring connected to said valve and biasing said valve to its first, closed position;

## 	(c) a trigger connected to said housing, and having a portion extending from the housing to permit manual activation thereof; 

- 	(d) linkage connected to said trigger and to said valve such that activation of said trigger moves said linkage so as to move said valve from said first, closed position to said second, opened position and release of said trigger permits said first spring to bias said valve back to its first, closed position;
- 	(e) a delay  spring functioning as part of said linkage and located on said linkage between said valve and said trigger whereby when said trigger is 	activated, the force of the delay spring must be overcome before said  valve will open causing a bursting of water to exit said water gun.

## United States Patents Related to Bioinformatics

- Method for Determining Protein Tertiary Structure
- Method for Prediction of Binding Targets and the Design of  Ligands
- Computer  System and Method for Determining a Number of Primary Targets of a Drug
- Neutral Network System with N-Gram Term Weighting Method for Molecular Sequence Classification and Motif  Identification

- 	5,600,571
- 	US 2001/0000807 A1 (Publication  No)
- 	6,300,078 B1
- 	5,845,049

## Automated DNA Sequencing Comparing Predicted and Actual Measurements
DNA Sequence Assembly System
Methods, Software and Apparati for Identifying Genomic Regions Harboring a Gene Associated with a Detectable Trait
Methods for Using Co-Regulated Genesets to Enhance Detection and Classification of Gene Expression Patterns

- DNA Sequence Assembly System
- Methods, Software and Apparati for Identifying Genomic Regions Harboring a Gene Associated with a Detectable Trait
- Methods for Using Co-Regulated Genesets to Enhance Detection and Classification of Gene Expression Patterns

- 6,090,550
- US 6,223,128 B1
- US 6,291,182 B1
- US 6,203,987 B1

- _United States Patents Related to Bioinformatics_

## 5,312,734   

- 5,707,829

- _United States Patents Related to Biotechnology Inventions_

- A eukaryotic cell line that has been made to transport dopamine by the introduction of DNA into its genome
- ... an isolated polynucleotide ...(a) ... comprising the nucleotide sequence of SEQ ID NO:1 ...; and
- (b) ... encoding a protein comprising ...

## United States Patents Related to Biotechnology Inventions

- A monoclonal antibody specifically binding to a particular protein
- A purified culture of a microorganism
- A transgenic mouse expressing human beta-interferon

- 4,487,829
- 4,593,005
- 5,175,385

## Infringement

- “Infringement” of a patent occurs when a competitor makes, uses, sells, offers to sell or imports an embodiment of the invention without the permission of the patent owner.

## Infringement

- claim

- Non-infringing embodiment

- Infringing embodiment

## Infringement

- The typical remedies for infringement are:
-   Damages ($$$)
-   Injunction (stop use by infringer)

## A Common Misperception...

**Patents inhibit free exchange of information****.**

## TO THE CONTRARY...

-      The patent laws _require_ **DISCLOSURE **of the structure of the invention, how to make and use it and the best mode of the invention.  (35 U.S.C. § 112, first paragraph.)
-      Patent applications are typically P**UBLISHED** 18 months after filing and in any event upon issue.
-      An applicant is free to **DISCLOSE **the invention any time after the application is filed without jeopardizing patentability.

## The Requirements for Patentability of an Invention are set out in 35 U.S.C. § 101...

## 35 USC § 101 

**35 USC § 101 **
- Whoever invents ...any *new* and *useful* process, machine,manufacture, or composition of matter, or any new and usefulimprovement thereof, may obtain a patent therefor, ...

## 35 U.S.C. § 112, first paragraph tells what description must be provided to support the scope of a claim...

## Structure of the Invention

- How to Make the Invention
- How to Use the Invention
- Best Mode

## PRIOR ART LIMITS THE SCOPE OF PATENT CLAIMS

- The requirement for novelty of 35 USC §102 means that a patent claim cannot include what is already in the prior art.

## Working With Your Patent Attorney

- Inform attorney of what you know about the state of the art.
- What are the differences between your invention and the state of the art?
- What parts of the structure of the invention can be changed without affecting the way the invention is used?

## Working With Your Patent Attorney

- What changes can be made in the materials and methods for making the invention without affecting the structure?
- What are the key structural features that produce the result of the invention?

## Documenting Inventions

- Keep a notebook!
- Keep the pages sequential and clearly dated.

## Documenting Inventions

- Write down your experiments! (especially the ones showing structure of the invention and how to make the invention) = “reduction to practice”
- Also write down significant ideas! (ditto!) = “conception”

## Documenting Inventions

- U.S. is the only “first to invent” country
- Everyone else is “first to file”
- An “interference” is a proceeding to determine who is first to invent
- Evidence of invention date is usually from inventor’s notebook

## Documenting Inventions

- Periodically show your notebook to someone else in the lab who is _not_ an inventor (but who has an obligation of confidentiality and can understand what you are telling them).
- Have that witness sign and date the pages and indicate that they have “read and understood”the content.

## CONTACT:

- Mark Nuell
- drn@bskb.com
- 703-205-8043