A Guidebook to Patent Law for Student Inventors Copyright 2013, Mariah Trisch, Drexel University

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1 A Guidebook to Patent Law for Student Inventors Copyright 2013, Mariah Trisch, Drexel University This resource should be used by all student inventors at Drexel to answer their questions about patent law and Drexel s policies on invention. After reading this resource, you should be confident enough to file for your own patents without needing to consult an attorney. First, a brief explanation of the protections afforded by a patent will be given. Then, policies surrounding Drexel s guidelines on student inventions will be explained. Next, the steps that must be taken in filing for a patent application will be discussed. Finally, options for inventors once the patent is received will be reviewed. Introduction: What is a patent? In the simplest sense, a patent is complete exclusivity to any profits gained through commercialization of the object patented, granted by the government to the inventor of a product or design. i The concept of patents and patent law dates back to the founding of the nation and the writing of Article One Section Eight of the US Constitution which states, The Congress shall have the 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. George Washington himself signed the Act of April 10, 1790 that creates the modern patent system, and Secretary of State Thomas Jefferson was the first to grant a utility patent to an inventor in July of the same year. ii The reason for the creation of the American patent system was twofold. Prior to patents, the rights of inventors depended upon the wills of the monarch or legislature of the country. iii If an inventor knew his or her design or concept could be reverse engineered as soon as it was sold and produced by competitors, there would be no incentive to invent anything new. By providing the inventor the exclusive right to produce and distribute a product over a period of time, patents

2 guarantee inventors rights and thus, spur innovation. The second reason for establishing a patent system is to create transparency and full disclosure of products and designs. In applying for patent protection, an inventor must submit all design concepts, ideas and data. The patent examiner reviews all detailed descriptions and sketches. In essence, the inventor discloses to the public exactly how to reproduce the invention in exchange for an exclusivity period of 20 years. Once that time frame expires, anyone who has the capacity to produce the product can do so. This system deters inventors from keeping what otherwise would be trade secrets and provides the general public with information about the product they purchase and use. Patents are granted based upon the novelty, the usefulness, and the subject matter. Patents cannot be granted twice, so the invention must not have already been patented. The invention must have a, specific, substantial and credible use in order to be granted a utility patent. iv Pertaining to subject matter, patent applications must fall into one of four categories: process, machine, manufacture, or composition of matter. v An additional criterion for patents is that they must be non-obvious. This means that the invention cannot have been apparent to someone skilled in the particular field to which the invention pertains. vi All utility patents have a lifespan of 20 years from the date of first filing. This is important, because even if you do not plan to immediately commercialize your invention, if you believe that your invention meets all the criteria for patentability, you should seriously consider obtaining a patent.

3 Why are patents important for the student inventor? As a student inventor, you may not be thinking about starting your own business based upon your research. However, it is important that you file for a patent to protect your invention as soon as possible. A recent change in patent policies within the United States called the Leahy- Smith America Invents Act (AIA) grants patent rights to the first inventor to file and application with the United States Patent and Trademark Office (USPTO). This means that in order to claim the rights to your invention, you must file a patent quickly, before another inventor. Below is a brief description of the AIA and its implications for patents in academia. History behind AIA The AIA has been characterized as some of the most revolutionary changes to United States patent laws since vii The largest component of the AIA switches the United States from a first-to-invent country to a first-to-file country. This essentially means that if two competitors invent a product on a particular day, the inventor who first files the patent with the USPTO will be granted patent protection. No longer will investigators have to comb through lab notebooks to determine at what exact moment the product was invented; now the only time stamp that matters is when the first person reaches the patent office. The history behind this Act is unique in that it demonstrates rare Congressional agreement and rapid movement through the branches of government. Senator Patrick Leahy of Vermont introduced the bill in the Senate on January 25, 2011 and it passed with an overwhelming 95-5 majority on March 8, viii In the House of Representatives, House Judiciary Committee Chairman Lamar Smith of Texas introduced the bill on March 30, 2011, and it passed June 23, 2011 with a vote of ix President Barak Obama signed the final bill

4 into law on September 16, Thus, within nine months this sweeping patent reform bill solidly passed both branches of government necessary for it to become law. One of the reasons this was the case is because the AIA was the first major patent reform in nearly 60 years and our elected officials felt as if it were time for a change. x Provision The most substantial change the AIA creates is a first to file system in the United States. This means that patent applicants will no longer have to prove that their inventions were created prior to inventions from any challengers. During patent litigation, this saves all parties both time and money throughout the discovery process because priority for a patent will go to the entity that had their paperwork in order. xi Additionally, inventors do not have to wait until the day the final product is finished to establish patent rights. The US Code allows inventors to file provisional patent applications; that is, a shorter version of a patent that includes only a description of the invention, the manner and process of making and using it, and a drawing. xii Under the AIA, this provisional application can count as providing the inventor with patent rights under the first to file system and former Attorney General calls this both constitutional and wise. xiii Currently, all nations on the globe operate under a first to file system, and the United States was the last one to adopt this methodology. xiv The first to file system essentially places the ball in the hands of the inventor and says if he wants to score a patent he must pass to the USPTO as quickly as possible. This demonstrates the power of the patent system in the United States.

5 Effects of AIA on Academic Patents The AIA has a great effect on students who create a patentable concept through their research ventures. Now, more than ever academics should file for patents as soon as possible. As David Malakoff observes, typically, universities often wait to file a full application until they have found an investor willing to pay patenting costs, which can reach tens of thousands of dollars. xv However, under the AIA s first-to-file provision, a patent application is now the only way an inventor will receive patent rights. Carl Gulbrandsen, who works to commercialize inventions from the University of Wisconsin, has criticized the AIA saying that the law will, increase the costs of obtaining, maintaining, and enforcing patents for universities and individual inventors. xvi Gulbrandsen and critics like him have claimed that the AIA favors companies with large bank accounts, and will lead to less scientific cooperation. Lobbyists even tried to add provisions to the AIA, protecting the interests of universities. xvii However, President Obama was convinced the bill will increase patent protection given to academics, and while he signed the bill into law at Thomas Jefferson High School of Science and Technology (a school filled with aspiring inventors) stated, [The AIA] will help start-ups and small business owners turn their ideas into products three times faster than they can today. And it will improve quality and give entrepreneurs the protection and the confidence they need to attract investment to grow their businesses and hire more workers. xviii Since the first-inventor-to file provision just went into effect this past year, it is too early to tell whether the AIA helps or hinders student inventors. xix However, one thing is for certain: If you want to eventually commercialize your invention, it is imperative to file for a patent as soon as possible.

6 Who owns your patent? Now that we have established that it is a good idea to obtain a patent on your ideas as quickly as possible, we must consider another factor, that as a Drexel student, you are bound by the University s policies regarding intellectual property. So who really owns your invention? To establish this we must examine Drexel s intellectual property policies. The Office of the Provost has published a patent policy that clearly states, Inventions which the inventor can demonstrate result from research or other work conducted on the inventor's own time without use of Drexel University resources such as University funds, space, personnel or facilities, are the property of the inventor. xx This means that if you do not use university property to develop your invention, then you own the rights to your ideas. However, what if you do use university property to create your invention, perhaps through a senior design project or a research venture? The policy states, patent rights resulting from research carried on by a student in fulfillment of requirements for an academic degree, including the preparation of a thesis or dissertation, are construed as making use of University resources and are subject to the Patent Policy however, it goes on to say that, Undergraduate students of the University are not subject to this portion of the Patent policy. xxi This is good news for undergraduate students working on senior design project or research, because, due to this loophole in the clause, they may be able to file for their own patent rights, without having to assign the rights to Drexel. Drexel s office of technology commercialization has resources available to students to help them assess the patentability of their inventions and possibly assist them in obtaining patents, but what if you choose to file a patent on your own accord? How do you file for a patent?

7 How do you file for a patent? Patents have notoriously been labeled as expensive. However, if we break down the costs associated with obtaining a patent, we can see that this is not necessarily the case. The initial cost for a utility patent application is only $280. xxii But, most inventors hire patent attorneys to draft complicated patent applications. Attorney fees are expensive, ranging in price from $5,000 to over $15,000 per patent application. xxiii Student inventors and academics do not have the financial resources available to hire patent attorneys. If inventors learn to file patent applications on their own, without the help of an attorney, then they would be able to save money. Instead of costly attorney fees, academics resources could be dedicated toward additional research projects, thus creating a more productive environment. So if you decide to file your own patent, what do you do? There are plenty of free resources available online you can reference for detailed guidance in the application process including the USPTO s own website. The process is fairly straightforward. First, you must conduct a prior art search to determine if your invention has been patented previously in the United States. You need, to determine if your invention has been publicly disclosed and thus is not patentable. xxiv Therefore, in addition to searching already granted United States patent you must also conduct a thorough search of foreign patent and publications. xxv If you discover inventions that are similar, but not exactly the same to what you plan to patent, then you can continue with the patent application process. Be sure to note these patents, however because when drafting your claims it will be important to distinguish your ideas from potential prior art. There are free databases of patents you can search to find prior art including and the Patent and Trademark Resource Center. Although

8 patent searching is considered a skilled art, it is completely possible to draft your own patent application based upon your own prior art searching. After you determine that you can distinguish your invention from any potential prior art that exists, the next step will be to draft an actual patent application. The application has four main components: the abstract, specification, any relevant drawings, and the claims. The abstract is just how it sounds; it can be very similar to a scientific research abstract and just summarize what you did to create your invention. The specification is similar to the body of a research report. It is, a written description of the invention and of the manner and process of making and using the invention that concludes with the claims to the invention and it, must be in clear, full, concise, and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use the same. xxvi Ideally, the specification will contain headings such as: Title of Invention, Background of Invention, Brief Summary of Invention, Detailed Description of Invention, etc. xxvii Drawings should be included in the application, if drawings are necessary to understand the subject matter to be patented and, most patent applications contain drawings. xxviii The specific requirements for the size and type of the drawings are outlined on the USPTO s website. The most important requirement of the patent application is the claims section because whether or not your patent will be granted is largely determined by the claims. The claims must, point out and distinctly claim the subject matter which the inventor or inventors regard as the invention. xxix The claims must be specific enough to distinguish your invention from other prior art that may exist, but broad enough to protect your invention completely. Prior to writing your claims, read some other patents and become familiar with the structure and terminology used to create claims. This will be helpful in allowing you to write the strongest claims possible.

9 Once you have all these main components of your application, you are ready to go ahead and submit it. You can actually submit the patent application online through the USPTO s website through a system called EFS-Web. xxx This is the easiest and most straightforward way to submit both the application and the payment. Once you file the patent application, you then must wait for action by the USPTO, which is essentially notification of an acceptance or rejection. What do you do after filing? If you file a patent application for the first time, you shouldn t expect acceptance of your application. In fact, in most cases, the USPTO s patent examiner will find prior art for your invention that you were unable to uncover during your independent patent search. If this is the case however, and you application is rejected, you should not give up entirely. If your patent is out rightly rejected through adverse action you have a six month time period to write to the USPTO and get them to reconsider. xxxi You must point out what aspects of your invention you specifically believe to be patentable, and counter every reason the examiner gave for rejecting your patent. If specific claims about your invention are rejected, you may have a chance to amend your claims to make your invention patentable. xxxii You can also try to contact the specific patent examiner who handled your application to find out why your patent was rejected. If you revise your claims, resubmit your application, and receive a final rejection from the USPTO, you can take action to appeal to the United States Patent Trial and Appeal Board. xxxiii There will be many costs associated with appealing, however so you should definitely think twice before deciding whether to appeal your case.

10 What should you know? This guidebook should have informed you about policies regarding the patent application process. You should now understand why it is important to protect your inventions and research. Now that you are aware of Drexel s patent policies, you know that you may be able to claim rights to your senior design projects or research. You know that filing for a patent without the help of a patent agent or attorney is possible and much less expensive. Hopefully, you will now be inspired to use this knowledge to commercialize your own inventions and research and encourage other students to do the same.

11 Resources i What is a Patent? Intellectual Property & Science. Thomson Reuters, Web. 8 May ii Hernandez, Maria V. The U.S. Patent System Celebrates 212 Years. The United States Patent and Trademark Office. USPTO, 9 April Web. 20 Nov iii Ament, Phil. "U.S. Patent History - Creation of the U.S. Patent System." The Great Idea Finder. The Great Idea Finder, Mar Web. 20 Nov iv "2104 Patentable Subject Matter [R- 9]." The United States Patent and Trademark Office. USPTO, 13 Sept Web. 20 November v "2104 Patentable Subject Matter [R- 9]." The United States Patent and Trademark Office. USPTO, 13 Sept Web. 20 Nov vi "2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 [R- 9]." The United States Patent and Trademark Office. USPTO, 13 Sept Web. 20 Nov vii "Next Wave of AIA on Patent Exam Starting Oct. 2, 2012." Patent Law Practice Center. Practising Law Institute, 20 July Web. 22 Nov viii "Bill Summary & Status 112th Congress ( ) S.23." The Library of Congress. THOMAS, Web. 22 Nov ix "Bill Summary & Status 112th Congress ( ) H.R.1249." The Library of Congress. THOMAS, Web. 22 Nov x "America Invents Act of 2011." United States House of Representatives Committee on the Judiciary. US House of Representatives Committee on the Judiciary, Web. 22 Nov xi H.R. 1249, America Invents Act. United States House of Representatives Committee on the Judiciary. US House of Representatives Committee on the Judiciary, Web. 22 Nov xii "35 USC Application." Legal Information Institute. Cornell University Law School, n.d. Web. 22 Nov xiii H.R. 1249, America Invents Act. United States House of Representatives Committee on the Judiciary. US House of Representatives Committee on the Judiciary, Web. 22 Nov xiv White, James E. "First to Invent." Idea Rights. James E. White & Assoc., Web 22 Nov xv Malakoff, David. "New Patent Law Could Change How Academics Commercialize Discoveries." Science Insider. American Association for the Advancement of Science, 9 Sept Web. 30 Nov xvi Malakoff, David. "New Patent Law Could Change How Academics Commercialize Discoveries." Science Insider. American Association for the Advancement of Science, 9 Sept Web. 30 Nov xvii Malakoff, David. "New Patent Law Could Change How Academics Commercialize Discoveries." Science Insider. American Association for the Advancement of Science, 9 Sept Web. 30 Nov xviii Quinn, Renee C. "The Bill Is Signed: President Obama Signs America Invents Act." IP Watchdog. IPWatchdog, Inc., 17 Sept Web. 30 Nov xix "Implementation Status." The United States Patent and Trademark Office. USPTO, 2 Apr Web. 30 Nov xx "Patent Policy (re: Intellectual Property)." Drexel University Office of the Provost. Drexel University, 16 Sep Web. 30 Nov xxi Patent Policy (re: Intellectual Property)." Drexel University Office of the Provost. Drexel University, 16 Sep Web. 30 Nov xxii "United States Patent and Trademark Office Revised Fee Schedule." The United States Patent and Trademark Office. USPTO, Web. 1 Dec xxiii Quinn, Gene. "The Cost of Obtaining a Patent in the US." IP Watchdog. IPWatchdog, Inc., 28 Jan Web. 2 Dec xxiv "Patents." The United States Patent and Trademark Office. USPTO, 31 July Web. 1 Dec xxv "Patents." The United States Patent and Trademark Office. USPTO, 31 July Web. 1 Dec xxvi "Nonprovisional (Utility) Patent Application Filing Guide." The United States Patent and Trademark Office. USPTO, 24 Jan Web. 2 Dec xxvii "Nonprovisional (Utility) Patent Application Filing Guide." The United States Patent and Trademark Office. USPTO, 24 Jan Web. 2 Dec

12 xxviii "Nonprovisional (Utility) Patent Application Filing Guide." The United States Patent and Trademark Office. USPTO, 24 Jan Web. 2 Dec xxix "Nonprovisional (Utility) Patent Application Filing Guide." The United States Patent and Trademark Office. USPTO, 24 Jan Web. 2 Dec xxx "Nonprovisional (Utility) Patent Application Filing Guide." The United States Patent and Trademark Office. USPTO, 24 Jan Web. 2 Dec xxxi Bellis, Mary. "Guide To Patenting And USPTO Patent Applications." Inventors. About.com, Web. 2 Dec xxxii Bellis, Mary. "Making Amendments to a Patent Application." Inventors. About.com, Web. 2 Dec xxxiii Bellis, Mary. "Guide To Patenting And USPTO Patent Applications." Inventors. About.com, Web. 2 Dec