Introduction to Patents. Angela Lyon, MSc, Registered Patent Agent (US & CA)

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1 Introduction to Patents Angela Lyon, MSc, Registered Patent Agent (US & CA)

2 What is a Patent Agent? Patent Attorney? Scientific Education and Good Writing Skills Bachelor of Science & Law degrees; and Passed the Canadian Patent Agent Exam OR Graduate studies (M.Sc. and/or Ph.D.); Year(s) of Training in the intellectual property field;& Passed the Canadian Patent Agent Exam

3 Famous Canadian Inventions Telephone Basketball Insulin Zipper Light bulb Blackberry Birth Control Pills Goalie Mask

4 Edison did NOT invent the lightbulb? Thomas Edison improved upon a 50-year old idea. He purchased the rights to a patent for an incandescent lightbulb from inventors Henry Woodward and Matthew Evan who could not raise the financing to commercialize their invention. (Edison used lower current and an improved vaccuum inside the globe.)

5 PARTEQ s Structure Not-for-profit organization with: 2 registered patent agents 3 commercialization managers 3 administration & support staff portfolio of 200+ technologies

6 Intellectual Property protection in Canada Patents -- for inventions, i.e., new technology Copyrights -- for literary, artistic, dramatic & musical works Trade-marks -- words, symbols, pictures, etc. used to distinguish goods and services Industrial Design Registrations -- for the shape, pattern or ornamentation of industrially produced objects Integrated Circuit Topographies -- for the 3-D configurations of electronic circuits Plant Breeders Rights -- for certain new plant varieties

7 I ve made a discovery! Now what? Has anyone else thought of this before? If so, is there still an invention? Try google and free patent sites & Have you told anyone about this? Public disclosure limits protection to US and Canada one year grace period Does anyone care? What is the product or service? Will people pay $$ for it? Neat doesn t always equate to Need

8 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. s. 101, U.S.C.

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10 What is a patent? An exclusive monopoly to make, use or sell a claimed invention for a limited period of time in a specific country.

11 Why should you patent your invention? Right to exclude: Without the exclusive monopoly of a patent, others are free to make, use, and sell your invention. Investment: It will be difficult if not impossible to attract investors without a patent. Public benefit: The public is more likely to benefit from the invention if it is patented, because of the possibility for commercial activity that results from the patent.

12 No. 1 misconception about patents Having a patent gives you the right to do something Actually, the patent only gives you the right to EXCLUDE others from doing (i.e., making, using or selling) something Similarly, some other patent-holder could exclude YOU from doing the very thing you have patented!

13 Can you patent your invention? Patentable Subject Matter invention means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter [s. 2, Canadian Patent Act] An invention must produce an essentially economic result in relation to trade, industry, or commerce Do you (or your employer) hold the rights to your inventions?

14 An invention MUST be: Novel Unobvious Useful

15 How novel is it? One year grace period after invention is first made available to the public by the inventor (U.S.A., Canada, Philippines) Absolute novelty (Rest of world)

16 Paris Convention (1887) Signed by most developed countries in the world Provides one year priority period to citizens and nationals of signatory countries

17 Criteria for patentability of an invention: Subject Matter Definiteness Novelty Non- Obviousness Utility Claims must recite patentable subject matter Claims must be supported by the disclosure Claims must make sense Claimed invention cannot be previously known or available to the public Absolute novelty vs. grace period (U.S., Canada) References cannot be combined to destroy novelty Claimed invention must not be obvious to a person of ordinary skill in the art at the time the invention was made References may be combined to demonstrate obviousness The invention must be useful

18 What is in a patent? Abstract Description of the Invention Written description, with examples, data, figures, etc., as appropriate Enablement Best known mode (as of filing date) Claims One-sentence statements that define the subject matter protected.

19 Critical tips for effective patent drafting Make sure: The commercial product/service is covered by the claims The claims will catch an infringer The application teaches the best mode known to the inventor(s) The application teaches the FULL scope of the claimed invention

20 File first patent application (e.g., US) Publish File further applications e.g.,patent Cooperation Treaty (WIPO--international) Patent Application is published Patent issues ~ months

21 U.S. provisional application Informal, unexamined application Expires automatically after 1 year

22 Patent Cooperation Treaty (PCT) Single international application International search Optional international examination National/Regional Phase entry Over 100 signatories Paris Convention applies

23 Misconception about patents Describing something in the patent application automatically means that it is protected by the patent Actually, ONLY the final claim scope defines the scope of protection

24 Genus claim 1. A method for effecting neuroprotection in a subject, comprising administering to the subject an effective amount of a nitrate ester having the formula O E-F-G N O O wherein E, F, G are organic radicals which may contain inorganic counterions.

25 Species claim 1. A method for effecting neuroprotection in a subject, comprising administering to the subject an effective amount of a nitrate ester having the formula N O 2 NO S.

26 Inventorship Incorrect inventorship can invalidate an eventual patent.

27 Steps of the process of invention (U.S. law) Conception Reduction to practice Actual Constructive Inventor must contribute to conception, not necessarily reduction to practice.

28 Who has patent rights? First to file: (Canada, most of the rest of the world, USA as of March 16, 2013) First to invent: (U.S.A.----until March 16, 2013) Having kept organized, dated, and validated lab notes was critical in overcoming an attack on your patent by a competitor claiming to have made the invention first.

29 Ballpark Costs for a U.S. Patent Application Patentability search: ~$2 000 Preparation and filing: ~$8 000-$ Prosecution (very unpredictable): ~$3 000-$6 000 per office action (before any extension of time fees) Issue: ~$1 500

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38 Tell your agent WHAT What is your invention? Product? Composition? Process? More than one of these? What kind of process? Method of making? Method of using? Both? What works? What features or elements are critical? What can be skipped? What can be substituted? What is a bonus add-on? What is a special case? What did you do? What did you make?

39 Tell your agent WHY Why is your invention different, better, faster, cheaper than what came before? Why is there an advantage? Why was there a problem with the old way? Why was there a need for something new? Why did you try this approach? Why was this not suggested by, or obvious in view of, what came before?

40 Tell your agent HOW How does your invention work? How does it work best? How would you move your advance still farther? How can your invention be applied in different contexts? How would a competitor design around your invention?

41 Tell your agent WHO Who came up with the core concept? Who added to the inventive concept, however small the contribution? Who did the hands-on work (reduced the invention to practice)? Who else is working in this field, or on this problem? Who has related patents, publications, products? Who has rights in the invention under an agreement (e.g., an employment contract, a license, a research agreement)?

42 Tell your agent WHEN When did you come up with the invention? (Provide a signed, dated labbook!) When do you plan to submit your manuscript, abstract, poster, grant proposal, thesis? When will it be posted on the web? When will the journal be mailed from the publisher? When will the book of abstracts be given to the conference attendees? When will the poster go up? When will you give your talk? When will the thesis defense take place? When will the invention be offered for sale? OR -- When WAS it made public?! When WAS it offered for sale?!

43 Some Useful Resources United States Patent & Trademark Office (USPTO) Canadian Intellectual Property Office (CIPO) European Patent Office (EPO) World Intellectual Property Office (WIPO) Patent Lens Database (

44 Workshop We have an article that looks like a loop of rope within some clear tubing. If you made replicas of it you would be infringing its patent. The inventor s surname is Rayne. Find the patent online. What is this article s use?

45 Workshop Angela Lyon is an inventor on a U.S. Patent. What is the predominant U.S. classification number on her patent?

46 Workshop Queen s University has an international patent application called Lift Assist Device and Method. Go to and search using title AND owner (a) Using the Documents tab, locate its International Preliminary Report on Patentability (b) Using the National Phase tab, which countries has this application gone national in?

47 Workshop We have a back support article. What type of protection does it have?

48 Workshop We have an article that looks like a yellow circular shape with cut-outs. Written on it is its U.S. patent number D445,980. What is this article s use? Who owns this IP?

49 Workshop There are on-line patent tutorials that are available through the Queen s University at Kingston library website. BONUS QUESTION: What is the name of the Queen s librarian who writes the following blog

50 Thank you!