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[Music] our speaker today is Katherine White of Enterprise Partners which is Southern California's largest Venture firm investing in early stage firms Katherine has a electrical engineering degree from Virginia Tech and a law degree from the University of San Diego she's also taken graduate classes and communication Theory here at UC San Diego her experience experience consists of five years as an engineer at Qualcomm followed by five years in qualcomm's legal department interestingly enough Katherine has seven issued patents in her name and has written more than 100 patent applications she helps portfolio companies of Enterprise Partners describe and defend their intellectual property rights and as part of this she educates engineers and scientists employed by Enterprises portfolio companies about how to review a patent application Enterprise has done at least four deals with UCSD professors and our technology transfer organization so it's my pleasure to introduce to this audience today Katherine White good morning it's a pleasure to be here today to talk to you all about one of my favorite topics which is how to review a patent application uh before we get started I want to thank Joe and Abby from the van Le big Center for inviting me here as well as Barry from Tech tips it's a really an honor to be able to present a prestigious crowd like this one um our topic today is very narrow how to review a patent application um and this is a very important topic it but it's also very intricate and we're going to break it down into three main areas first all we're going to talk about what you as the inventor need to know about the patent law to be able to review your application we're also going to talk about um what an inventor can do before his application is filed to keep his idea patentable and then finally we're going to SLO through a three-step process of how to review a patent application when you end up with a document in your hands so what is a patent a patent is uh is the right to exclude others from making using or selling your claimed invention in the country that issues you the patent the social theory behind it is that you reveal your invention to the world and in exchange the government gives you a limited um right of exclusivity for a limited amount of time well if the society already knows about your invention then you have nothing to exchange and also the limited period of time for which excl exclusivity is granted is measured from the date you file your patent so Society needs to encourage early filing and of course they do this using a law as Society always does which says that you need to file your patent application with within one year of making your idea public or offering your uh an invention embodying your um or offering a product embodying your invention for sale if foreign rights are important to you um you need to be very careful um about those uh about making your invention public because although the um the standard varies from country to country as to what kind of activity is going to raise that patentability bar almost no foreign country gives you the one-year grace period so if you if you publish your idea you must have already filed your patent application you cannot file your patent application even one day after your idea is published if you're interested in foreign rights so what does a patent application look like if you came here today you should get a copy of Jay Walker's reverse auction over the Internet patent um this is a document it's written by a patent attorney it's filed with the patent office and it issued as a patent so let's take a look at what that looks like um the the cover sheet on the front here was actually created by the patent noice at the time that the patent issued so it wasn't there when Jay Walker got this patent the rest of this document is basically looks the same as it would have when Jay got it um it has 20 sheets of drawings and then it has some text some pros which we call the detailed description and then if we flip over to column 32 about halfway down you'll see it's got the claims which are the hard part to read and we're going to spend a lot of time on on how to read those and the importance of those today um but before we jump into looking at a claim I want you to get an idea of what this invention is so that you can see how the claim language mirrors that invention so if we take a quick look at at uh figure one it shows a block diagram um of an embody of of an environment in which one might execute a reverse auction over the Internet um if you flip over to figure five you'll see a flowchart which shows the steps one would take to um Implement a reverse auction over the Internet so let's take a look at what that claim looks like if we look at a column 32 about halfway down you'll see claim one I have it marked on the copies that you have here um and it's broken into pieces and we're going to talk about these various pieces very rarely where this first top piece that's in Black here the Preamble that very first paragraph almost never has any legal significance very odd that that would have legal significance so we're going to ignore that for today but each one of the paragraphs which we call Elements has a tremendous amount of legal significance and that's where we're going to focus today so uh let's take a look at this one uh to understand what claims look look like the element one number one here says um in putting into the computer a conditional purchase offer so this is when I sit down on my computer and say I'll pay $200 for a ticket to Pittsburgh on Tuesday um the second element says inputting into the pay into the computer a payment identifier that's when I put in my credit card or my password in there to let them know how um I'm going to pay for this ticket to Pittsburgh next it says outputting the conditional purchase offer to a poity of sellers that's when my my conditional purchase offer goes out to American Air lines and Southwest Airlines and United Airlines um El element number four says inputting in the computer and acceptance and that's when Southwest Airline says sure I'll sell her a ticket to Pittsburgh on Tuesday for $200 and following the last element is when my payment information is sent to the seller so how does the patent process work well the first thing that happens is you invent something and then you disclose it to a patent attorney the patent attorney writes a patent application like the one that we have in front of us that's going to cost between 8 and2 $25,000 um out of your pocket if the university has some deals so they get a little bit cheaper but if you're paying for this on your own it's going to be between 8 and $225,000 depending on how intricate your idea is patent application is then filed with the patent office and this is the filing date this is the date we're talking about today um the review process that you do takes place before that filing date so it takes place um between those those this the third and the the third and the fourth bullet point there 18 months after you file your invent your patent application becomes publicly available it's electronically um Cate categorized and you can go on the US PTO website and search on it by inventor name um and by several key keyword searching that they have there at some point um a government a federal employee was called a patent exam will pick up your patent application that you filed with the patent office and he will go and attempt to find prior art um prior art is what we call looking for someone who did The Invention before you filed your patent application um he always finds something that he thinks uh invalidates your uh claim so he will write a letter which we call an office action to your patent attorney that says um all of your claims are invalid in due in view of this prior art that he found that happens 80% of the time 80% of the time they will invalidate all your claims with the first office action that's okay um you can argue that so what happens is your patent attorney has two options at that point when he gets that letter he can either change the scope of the claims he can't change anything else in the application but the claims but he can change the scope of the claims um or he can argue back to the examiner why that reference he found is not analogous to what is in your claims and that process can go back and forth several times and at some point your patent issues and that's the issue date that's another date we'll be talking about today that's typically going to be about three to five years after you file your patent application and from that point forward measured from 20 days from the filing date you have the right to exclude others from making using or selling the claimed invest vention so what happens if you want foreign rights the process for the first few steps is basically the same the application that's filed with the United States looks the same whether you're going to pursue foreign filing later or not um about nine months after you file your pent attorney will come and ask you do you want to pursue foreign rights there's a group of 118 countries around the world um that have formed what is called the patent cooperation treaty the PCT um and they will allow you to file a single application um at a at at about $4,000 for that application to preserve your filing date for about another year and a half from there um in the countries that you designate if you published your idea after your us filing date um you're okay because when you file that PCT application those foreign countries will pretend like you filed your US patent application or or file the patent application in their country on the same day that you filed within the United States however if you published your application May made it public before you filed your us case less than a year before you filed your us case your us case is fine um but pursuing PCT filing is not going to get you very far because when you fall out of the PCT process into the individual countries most of those countries are not going to let you pursue further protection because your publication date was earlier than your us filing date so what's a provisional application um provisional applications are dangerous things um I I like to call them um the the sole inventor idea um accidental idea suicide applications um or the startups guide to dedicating their ideas to the public while still paying big legal fees the idea behind a provisional application that is is that it's going to be a placeholder for you in the United States for one year until you get your act together and file a regular application the patent office doesn't look at it it doesn't have to have any claims and it doesn't have to have all the other assignment documents and things that we're not talking about today the collateral junk they don't have to have that um um but the problem with provisionals is that they require the same level um of disclosure as a regular application and we're going to talk about what that level is later um but there's no reduced requirement as far as the detailed descriptions in the figures um therefore the idea that you're going to file um you know an abstract and and um an unlabeled figure and preserve a filing date for you is is legal myth that doesn't work that way so let's just we'll take an example here of what can happen to you if you find an inadequate provisional first thing that happens is you invent um and then in this case we're going to say you offer your product for sale and we know from earlier that you have one year to file your regular Us application but you don't have the money right now so you file a provisional and you try pretty hard so you actually take the the mechanical drawings from from your device and you file those with five or six pages of text that talk about various things in those figures so it's not just an abstract and a and a and a figure it's it's actually a little bit of meat to it eventually you talk to a patent attorney and your patent attorney files a follow-up case but it's been more than a year since you're offered for sale by the time he files that follow-up case well you go through the patent office in the same process as we just described um and no one at the patent office ever looks at your provisional they don't look at it at all um and in the meantime you're off investing millions of dollars and your Blood Sweat and Tears into making a company out of this product and eventually the patent office issues you a patent it's like yay so but then of course you're making lots of money so the evil infringer comes along and says heyy you know I can make that much cheaper than he does because I don't have the development cost so I'm going to copy that thing and start making it um so you try to get him to pay you a license fee and you try to sign a class license agreement with him and he won't take any of that So eventually you have to sue him and now we're talking it's been five years since you filed your provisional application well for the very first time somebody the evil infringer is going to look at that provisional application to see whether it is adequate and of course here we've assumed that it is not and at that point he can file something with the judge that says hey look he's got these claims they're not supported by the provisional but they were in that offer for sale therefore he's not entitled to a patent and the judge will agree with that at that point you will be patent less and and the evil infringer will be free to copy this actually happened that's not a hypothetical in the in the rail head um case which if you're here today I passed out a handout with that highlighted so you can see some of the Court's reasoning there so as we move forward here and we talk about filing a regular application um I know through the university you guys do a lot of provisionals to save money well these same principles we're talking about today use them on your provisional pretend like it's a regular filing do the same things you would do with a regular filing with that provisional filing so Mr Raad couldn't do anything with his patent because it was invalid so what can you do with your valid patent well if somebody infringes it there's a lot of things you can do with it you can get them to pay you a licensing fee you can sell your pen for for big bucks to to somebody else who would like the power to exclude others from doing that you can sign clost licensing agreements in some cases you can even shut down a factory if no one infringes it there's not a lot you can do with your valid patent so that begs the question as to what does infringement mean u in order for a product to infringe a patent it has to infringe a claim so everything we're going to be talking about today is going to be comparing a product to a claim if a product has each each and every one of the elements remember we looked at those elements before those paragraphs has each and every one of the elements of a claim then it infringes that claim if it is missing one of those elements then it does not infringe or if one of the elements is different than the way the element is described in the claim then it does not infringe it can have more elements and still infringe but if it has less it does not infringe so let's take an example let's say you invented the chair and you and you got this claim which has a um a flat area um legs to hold the flat area off the ground and it back well does this purple device infringe that claim oh yeah it does because it has all three of those elements oh what about this white product does it infringe that claim no it doesn't because it doesn't have a back so if someone starts so the evil infringer started making this bar stool you would have no power over him with that claim and he is free to make that bar stool without uh risk of infringement so what about this um orange device the rocking chair does that one infringe yeah it does I mean it's it's got rockers on it which is not one of the elements of your claims but but it can have more CL more elements than your um claim and still infringe um so this um orange device does infringe that claim and we're going to take a real quick aside here to talk about something else which is can you file a patent on an idea which is not what we're talking about today um notice that this the guy who came up with this orange device here did Advance the art and and he can file a patent and get a patent on the rocking chair notwithstanding your valid patent to the chair every application that's filed in the patent office is an extension of the prior art an extension of what was out there before um so when you're getting ready to file your application don't take these principles we're talking about today and say I can't file my patent application because I know someone else has a patent in that area that is not the right thought so this guy who invented the orange device here yeah he infringes the claim to the patent if he sells one of these devices but he can get his own claim um his own patent to the rocking chair okay so now we're getting ready to jump into the meat of how to review a patent application so what is your role here your role is not to write the application yourself your role is to help your patent attorney create a valid patent that's likely to be infringed so there's a couple things that we're assuming have already been done before we get to this stage first of all um we're assuming that um it's done before you file after you file you cannot change the figures or the pros the detail description part of your patent application you can change the claims but not that part we're also assuming that your um patent attorney understands what your invention is so there may be a few of your few drafts that go back and forth between you and the patent attorney where he's sending you black diagrams going is this right is this right you know have I got it right and we're not talking about those drafts we're talking about when he's got a a product two that looks um pretty much final so here's a three-stop process I recommend the reasoning behind this is that um reading a patent application is is pure drudgery and it can take many hours and so what you don't want to do is ever get put yourself in the position where you have to read it two or three times so we are going to start from the most important part the claims and we're going to work our way back forward um to the detailed description and and if at any point you get where you get to the point where you say you know these claims are wrong or these figures are wrong WR then you can stop your process call your patent attorney give him your input he can run an update and give it back to you for for you to review okay so the first thing you have to do is re re read the claims and and this is definitely the worst part if you can get through this it gets easy from here they're they're found at the end of the application and they're numbered so as we've talked about this morning your patent covers only what is claimed so we had this little hypothetical early where U where you've invented the chair well if you invented the chair and the table at the same time and you took them both to your patent attorney and he wrote a detailed description which described both the table and the chair as well as showed them in the figures but he only filed that one claim to the chair then anybody can make a table and they do not infringe your patent so your patent should have three types of claims each one of them has a different legal scope and they cover different infringing activity and different devices um so they look the same to you they are not the same so you wanted to have all three kinds even if some of them are awkward so just to show you an example of this we're going to go back to the jaywalker reverse oxen over the Internet patent so we looked earlier um at claim one which we can tell is a method claim for two reasons first of all the second word of the claim is Method um and also each one of the elements begins with a jiren which is a verb ending in ing so you can tell this looks like a flowchart I mean you could take this and make a flowchart out of it that's a no-brainer um this is an apparatus claim from the reverse auction over the Internet um the reverse auction over the Internet it really is a method kind of thing um at Essence so they had to work pretty hard to get this into an apparatus claim but they did do it so they have a storage device and then they have a processor and they have a program um for controlling the processor and then they kind of fall back down into a method kind of thing where they're using verbs in their elements again um what Jay Walker didn't have apparently was access to um in a presentation like this because he didn't ask for any means for claims in his patent application so I had to make these up for him they're very easy to make up they're easy to do you just take your um method claim and you stick means for in front of each one of the jirens so that you turn your method claim into an apparatus claim now this looks really broad but it's really not as broad as you might think and we're going to talk about how you can make that as broad as possible later so we talked a little bit about defenses to infringement already um so if I slap you with a of infringement um there's there's a couple of uh defenses that you have um the first one we talked about it is non-infringement which means my device is missing one of the elements in your claim the second one is invalidity which means the patent office made a mistake when they gave you that patent um for example earlier we looked at the Railhead case where it was a mistake for the patent office to give uh Mr Railhead his patent because um he filed it too late with respect to his own actions but you can also get your have your patent up your patent your issued patent found invalid because there was some prior art out there that the patent office didn't find but the evil infringer did later and this is actually probably the most the most common way patents are found invalid when the patent office goes to look for prior art you'll have a a a a federal employee who spends about an hour with limited resources looking for prior art he'll do the best job he can they do a great job um but he just doesn't have too much time to do that when when you SU slap the evil infringer with a with a lawsuit and it and he's making millions and millions of dollars a year copying your invention he's going to spend millions and millions of dollars using experts to go out and find prior art so this is a very very common scenario where um the prior art is found during litigation and not during U the process of getting the patent with the patent office so we're going to go back to our um our hypothetical where we've invented this seating device here now let's say I initially I I the inventor of the chair but when I invented it um I invented that rocking chair this is how I invented it in my mind and I thought wow that thing is really cool so I I took it to my patent attorney and he was sitting cross leing on the floor at the time and he looked at it and said wow do you realize that you've also invented the chair at the same time and I said wow you know I hadn't realized that but you're right you know you could take the Rockers off of that thing and it would be a lot more stable so he filed me this claim up here which is the one we've been looking at earlier and it issued and I'm happy um and then the evil infringer comes along and I sue the evil infringer and the evil infringer scour the prior art and and finds this device down here that that invalidates my claim so I really wish that I had gone for a much more narrow claim well the well the patent offic allows you to do that to hedge your bets to go for more narrow claims through a process known as uh independent and dependent claims so here we we have up here um again my same claim to the chair and then we have a dependent claim there which adds a new element so after the word comprising that's the new element starting there it says rockers couble to the leg so now I have um and now we have the same scenario where um where this purple prior art was unknown to me it comes in and it invalidates claim one however I'm really lucky because the evil infringer is is making this uh bright white device down here that actually rocks um so he is infringing uh not only he's infringing claim two he was also infringing claim one but it's invalid now so I don't care but he's infringing claim two because his device has each and every element of claim one plus the added elements of claim too this is what a dependent claim is going to do for you it's going to um provide a meaningful narrowing of the independent claim so that if the independent claim is found invalid the dependent claim will stay valid and infringed okay so now we're going to look at a VIN diagram of what we're talking about here the green oval up there represents the independent claim it covers the the broadest scope so it is the most likely to be in fringed it's also the most likely to be found invalid the yellow dependent claim there the smaller oval represents the claim to the rocking chair rather than the chair so the purple X is the prior art that purple device that came along and invalidated the independent claim it falls outside of the scope um of the dependent claim to the rocking chair however and the and the white X dare represents the the evil infringers device and since he infringes um that good dependent claim he infringes the patent okay so what you really want is not just one dependent claim you want a whole bunch of dependent claims and dependent claims Can Depend from one another so you can have multiple dependent claims um depending back and forth from one another so now here's an example um now we've really Advanced the art and I've I not only invented the chair but I've inventing the floating chair which which Southwest Airline loves because they can now put even twice as many people inside that same little Tube before they stick you up in the air and I've got a little Smarter with my claiming so I I don't claim the back anymore so I've got my I've got the legs and I've got a seating area and then I've got a FL rotation mechanism now let's talk about what kind of dependent claims I can add to that I can either add a new element like we did with the Rockers or I can go back and I can further modify one of the elements that's already there so over on the left we see um the first uh box there says um adding a level leveling mechanism um and then down underneath that I modify the leveling mechanism to say well here's some claims to the manual version and here's some claims the automatic version over here to the right I take the flotation mechanism and I talk and I modif that I one is an anti-gravity field and the other has rock rocket thrust thrusters on it so this is a very important part of of your duty as an inventor um your patent attorney um will be I'm sure a very smart person um but last week they were writing um patent applications and software this week they're doing your Optical networking device and next week they're going to be writing semiconductor equipment patents so they have absolutely no idea um what the state of the art is and where your invention starts and where your invention stops um so it's your job to help them do that but one common mistake I see um that I see uh all the time um is that you end up with a whole bunch of worthless dependent claims so if your dependent claim here and you can see the yellow oval has completely obscured um the green oval behind it if your dependent claims have the same scope as your independent claims they're worthless because the the X the purple X there that represents the priority is going to come along and invalidate both your independent and your dependent claims and the yex which is the evil infringers device is going to have nothing valid left to infringe so we're going to take some examples here of what would be useless dependent claims um and here I have a claim that says uh we're talking about the floating chair again um and we're going to say uh the dependent claim there is where the legs where the plurality of legs includes more than three legs so we're talking some that's got four or more legs well if somebody's made a floating chair before you did I mean the probability of them making it with more than three legs is fairly high so that doesn't provide you um any protection and you're narrowing with that depended claim um what I find I see a lot when I'm reading patent applications written by outside council is that um they will pick one element that they understand because they know if they give you a patent application that has three independent claims and two dependent claims you're not going to like it so they'll pick one element of your invention that they understand and they will just add dependent claims you know to hear and back while ignoring um all of the other aspects of your claims so it is your job if you got this patent to to call patent application to call your patent attorney and say you know the legs aren't the important part of this it it's really the flotation device and we need to talk about the flotation device and narrow the flotation device um not the legs so when you get your claims you need to subdivide your invention into as many pieces as possible so if you uh invent a new um Communication System you should have one independent claim to the receiver and one to the transmitter you also want to remember always in the claims less is more so this is a very typical thing I see too um with outside Council say I've invented um a coupling mechanism which uses Bubblegum and Sho string um to allow a single video card to drive more than 50 video screens well this is a very typical claim that you would get back from a pan attorney which says I have a I have a computer and I have a video card within the computer and I have a coupling mechanism that's made from the bubblegum and Sho string and is driving at least 50 video screens well realize that if your competitor opens a website and the only thing that he sells is that coupling mechanism he doesn't infringe this claim because what he sells doesn't have a computer it doesn't have a video card and it doesn't have 50 video screens so what you want to do is you want to get all that gunk out of there and you want to tell your patent ATT dirty I've invented the coupling mechanism and all the rest of that stuff can come out of here all right now it gets easy from here once you got the claims the way that you want them then you're going to compare compare the claims to the figures and this is easy you take your apparatus claims and you compare them to the block diagrams and every one every one of those elements every one of those paragraphs in your claim should be represented by by something on a block diagram or a mechanical drawing somewhere same with the method claims except for you're going to compare to the flowchart every one of those elements should be a separate box in a flowchart somewhere once you got all that in order now you're ready to read the whole application there's a couple things we talked slide number two we talked about that um The Exchange the the um the society's exchange for a patent is that you have to reveal your invention to the world well you have to reveal your invention to the world so you need to describe your invention in your patent application with enough detail so that someone of your skill can make or do your invention without undo experimentation you also need to describe the best way that you know how to um do your invention so you can't um hold back a piece of your invention as a trade secret classic example here is say I invented Velcro so I've got the I've got the prickly hook side and I've got the I've got the soft um Loop side um but I look at that and I think somehow I'm going to keep the the soft Loop side as a trade secret so I'm just going to disclose the hook side and then I'm going to disclose sticking that to um to to uh velvet which it will stick tube not very well but it will stick to Velvet um well well that patent if it issued could be found invalid because I did not disclose the best way I know how to practice the invention which is through the loops so in your patent application in the detail description as opposed to the text more is more putting more stuff in the detailed description does not narrow your patent application in any way in fact it gives you um it helps you satisfy the best mode um and the uh and the um enablement requirements um and it allows you gives you some fallback positions if you find prior art later on um that you were unaware of so if you put more detail in there you can fall back and get um more narrow claims but at least you can get some you also want to include as many alternative embodiments as possible we're going to talk here about how the how including alternative embodiments increases the scope of your means plus function claims but it's actually just good practice you want to look at your invention and say which of these elements could be replaced by another element which of these um ideas could be implemented in another way so although the means plus function language looks very broad is actually construed to cover only um the structure materials and acts that you put in the detailed description so let's let's take an example I've invented this this cooking means here and I have a means for measuring salt the means for measuring sugar the means for measuring flour and a means for mixing the sugar and salt together let's say that in the patent application I disclose that these are mixed together using a spoon and that's the only thing I describe this patent issues I sue the evil infringer a a judge picks up that patent and says what does it mean he looks at this and says means for measuring the means for mixing the measured flour sugar and salt together that sounds really broad but it's not it means spoon because I said you mix them together using in a spoon well it means spoon's an equivalent so if the evil infringer is using a fork he might say spoon fork well okay they infringe but if the evil infringer is using a whisk um or the or a blender or what if he's putting all the ingredients together in a bag and and stepping on them on the floor that is not going to be equivalent to a spoon and even though it looks like an evil infringer is infringing that claim he is not so what you want to do is is you want to take the sentence that you wanted to say so you wanted to say the ingredients are mixed together using a spoon but instead you say in one embodiment the ingredients are mixed together using a spoon and then you say in another embodiment and then you start spitting out every way you can think of um to mix those ingredients together and you can even fall down into some functional language here um like I did that says um or any um way in which uh which combines ingredients together with enough physical Force to create a batter with uniform consistency and then you've got some chance of saying oh that when he's putting those ingredients in the bag and stepping them on the floor that your means for mixing because it's defined this way encompasses that stepping on the bag on the floor okay um one last point is that um your patent application is not a piece of literature um you know pan attorneys tend to write in passive voice they tend to be a little repetitious if you want to go through and pull out stuff out of there you can but remember it's a tool and it's not a piece of literature um but that's all you need to need to know to review a patent application and I'd be glad to take any questions that you guys have the question has to do with when you have a number of people involved in the process by which the invention was created how do you decide who actually becomes in a sense signatory to the the patent itself is it everyone who was involved or was it just the inventor themselves directly who is it that that's an excellent question um uh first of all uh getting the inventor's right is very important so we talked about one of those defenses to infringement one of the defenses to infringement is that um you committed fraud on the patent office because you listed the wrong inventor so getting the inventors right is very important um to to figure out who is an inventor you look at the scope of the claims and you say who invented one of one of those elements in the claim who added um to to my invention those elements so it has to be someone who came up with the idea so typically um uh your technician or someone who's implementing it's not an inventor um but if you have a grad student working with you um or or a particularly sharp technician who helps you with one or two of the dependent claims then he is an inventor the question I hope this is getting picked up the question is uh to the extent that if you didn't disclose the best mode for doing the invention and you it wasn't that it was a conscious thing on your part you just didn't know that the best way of doing it does that invalidate The Invention itself and and and the answer is no it's it's a state of mind thing you have to disclose the best way that you know how to practice the invention and so uh very often you're you're wrong and that there actually is a better way to do it and and um but that's okay so long as on the day that you filed it that was the best way that you know how to do it then you've satisfied that requirement the question again is back to if there's multiple people involved in the invention how do you sort of allocate ownership or allocate responsibility for the thing that was in the in the context of the patent okay I'll two answers to that one one is what what does the patent office think um the patent office wants anybody who invented to be listed as an inventor and there's no there's no categories of like bigger inventors and smaller inventors um you you if you if you if you invented even one dependent claim um then you should be on the patent as an inventor patent office doesn't matter doesn't care who's big and who's small um from a legal standpoint U most of us who are inventing owe our rights to to to some entity um if you're inventing at home in your garage for something that's not related to what you're doing at the University or for your employer um and you file that patent application that doesn't need to be assigned to an to someone else then everyone who's an inventor owns that equally so there's no bigger or smaller for that way too now you can set up an agreement on the side that says you know I own it all or you own it all or you own half and I own half but if if they're in the absence of an agreement everybody who's listed as an inventor has an equal access to the patent application each of them could start their own individual company and implement the patent the idea that again how do you how do you separate the things you're creating as part of your job from the things you create because it's something that you happen to do at home so separating the two and who owns what so so there's two ways um and now this now we're talking about California state law and before we were talking about Federal patent law so right now we're going to talk about California employment law for just a minute um there are two ways that what you do ends up belonging to your employer um the first is if you do it using company time money paper telephones you know air oxygen if if you do it using resources of your company it belongs to your company okay um the the second way is is if it has to do with your job function so um if and software is too broad in California they're really pro- individual inventor so if it's your job to write security software for routers at work and you go home and and and write security software for routers at home they're going to say that it belongs to your employer that that idea belongs to your employer but if you're at home writing game software that's going to belong to you the question has to do with the patent duration does it change depending on the domain Life Sciences it other domains the short answer to that is no there's just one type of patent and it's measured from the day that you file your regular application in the US as it turns out there's a whole bunch of things that happen to Pharmaceuticals where they'll they can give you a year or two on the end of it but but um those those are very Arcane and don't happen real often so so in general you take your filing date and you get protection um from that date 20 years forward after IT issues so that first part gets cut off so it doesn't change across any domains at all it doesn't change across domains the followup was does it if you actually start using it at the very end of what would have been the life the patent does that change anything in the answer was yeah and it's really when if somebody else starts using it the last last year of your Pat I you can still sue them in that 19th year the question has to do to the extent that you know you're going to go out and talk to venture capitalist rather Finance should you how should you sort of handle the process should you get your patents figured out first or should you enter into discussions with financiers before you've got that worked out okay uh you know um okay got answer that two ways from a practical standpoint yeah that'd be really great you you should file your patent application the day after you've invented using the best patent attorney in town um but from a practical standpoint most of us just can't do that um so in general if you've documented what you're doing you're using lab notebooks I know there's some handouts in the back about how to do that just to show that something belongs to you um you're you know fairly safe going out and talking about it um you're you're very safe from from an ability to still file your patent later um and and when we talk about making uh raising those bars about making your idea public going out and talking to a venture capitalist about your idea um is not going to be putting your idea in the public domain um offering uh equity in your company um is not offering your invention for sale so typically those conversations with ventor capist or or um Angels um or your your your father who's got the cash those are not going to raise patent ability problems for you so you're okay filing later but sooner is always better the question had to do with the duration of patents but there's been a lot of talk about you know reviews of patents and the length of patents so is that likely to change is the duration likely to change is policy changing in this area policy did change in this area um it used to be that when you filed a patent um that uh you the the your patent was enforced from the day that it issued rather than the day that you filed for 17 years from that date of issue on okay but but that that didn't conform with with the way the rest of the world um did their patent terms which was that they were measured from the filing date for 20 years so I I think it was about 1999 or so the US conformed their practice with the rest of the world as part of you know everybody's part of the PCT that's the way we're going to do it and then they jury riged a couple little things in there to try and make things a little bit better for us patent attorneys that are pretty us inventors which are pretty arcane and don't come up real often that we were referring to before um so in general um it's going to be you know measured from 20 years from the filing date that's how long your patent's going to be enforce and I'm going to be really surprised if they start monkeying around with that in the next few years because they just conformed themselves to the the rest of the world and to go back and Decon form themselves to the rest of the world would be very odd at this point just maybe I throw in a question of my own we haven't talked about cost and in sometimes in University context obviously someone else is maybe paying the bill but what about the cost issue and if you don't necessarily have the funds to pay for it how does that get handled in terms of if you want to go through with the patent and you're worried about how you're going to pay for the process yeah we talked about a little bit about the cost during the presentation the biggest cost is what you pay the patent attorney to draft the patent application um and so that's like I said was between about $8 and $25,000 really depends on how complex your your invention is the filing fee with the government for an individual or a startup or a university nonprofit it is is about $500 it's going to be completely swamped out by the cost that you pay the patent attorney and and there's no real good way to get around that I mean it's not really um you know see Pat attorney's doing a lot of pro bono work for for sole inventors um so there there's not a real good way around that you kind of just got to Fork up the cash be careful yeah be careful into Theo okay the question has to do with the different types of claims you know apparatus methods and means claims and you know how well do they how well do these broad claims stand up in a court of law so I I should tell you that there are treatises that are literally this long written on how to interpret a claim um so I'm I'll tell give you a little bit right now but it's not something that comes up with an easy answer um because typically what they do is they come up one case at a time and the and the the there's a federal circuit that does reviews all of the patent cases and they they look at the claim they say well in this case these three elements made us do it this way and then we have one data point and then of course nobody's at another data point ever lines up exactly with a data point that the that the court has already given so you're always in between two or three things so you're you're you just kind of interpolate and kind of guess what what the scope of a claim is when when I talked about that means for language um if the guy was was um mixing his ingredients together with a bag jumping on the bag I'm much better off if I have that functional language in there than if I don't am I going to win you know I hope so if I don't have the language in there I'm I've lost so um it would it would come down to looking at um how uh what was there before um and how obvious what was there before is uh with respect to your invention so um I can't really think of anything that's going to be less than a 15minute example here um but but the the more you can put in there the broader that they'll be to the extent that it's is it you know is it non obvious then maybe we can sort of work around how broad the claim is but and and getting back to the point where uh we got to make sure we're talking about the same thing because if we're talking about um what can he get a patent because this is non obvious because that's what that's what non obvious is usually say can I get a patent so that's back to say you know I've got the patent on the chair can you get a patent on the rocking chair darn toon you know can you build one without paying me a license FEI no way so um so if we're talking about you know can he get a patent on what he's doing Visa my patent when I've got my means for function no language in there um that's a different question um but uh but yeah I mean you the more detail you have behind that means for language the broader it's going to be the question has to do with uh you know the what constitutes disclosure really I mean because you've got this ongoing stream of research what qualifies as having disclosed The Invention if perhaps even prematurely um there there are actually seven categories of prior art and so we we kind of glossed over that today because that could be a whole 45 minute presentation in unto itself um as as you a public ation has to be made public and it has to be cataloged some way um so um if if you uh had your invention and you taped some pictures of it on the wall here you know that is that is that a publication probably not um but if it's in a magazine the day that that magazine becomes publicly available that's the publication date okay as far as your um continuing development um if you publish part of your idea like the chair okay then um what one year and you continue to develop that so you can make the rocking chair and the and the floating chair later on um one year after that publication um becomes public okay when that trade Journal hits everybody's mailbox um you one year after that um you can no longer file on the chair okay but if you're making advancements okay you can now file on the rocking chair and your chair is prior art to you but you say I've Advanced over the chair which was my own prior art um and therefore I can get a claim but it's going to look like that pended claim number two it's going to have the Rockers on it you can't get a claim to The Chair by itself at that point does this first disclosure even if it's not comprehensive does that constitute disclosure of the invention and again okay that this is not science so that this is this is uh you know man trying to make up their own Lots um so there's if you described it exactly okay um then it would then uh that publication would definitely be a bar to you um if you said I invented something to sit on but I'm not going to tell you what it is probably okay okay and then as you sort of take that meter and you move it from you know I well I put a figure in there well I described a little bit you're going to be moving closer and closer to the point that you're invalidating yourself can I articulate away here as to know when that meter's gone one way or the other I don't think so it depends on depends on the technology and how complex it is and how much you know if I say I invented something to sit on I mean once you say hey we could sit on something I mean I think the idea of a chair is going to come to you pretty quickly um but but a more complicated idea to say you know hey I've invented the floating chair it there there there's not much disclosure just by saying those few words having filed and got the P how much has it Con to actually defend these nasty things it's it's it's it's awful it's ugly um it's it's ugly uh patent a patent lawsuit is typically the most expensive um form of litigation there is outside of some antitrust stuff um and some really bad divorces but uh it's it's you you if you slap a lawsuit on someone you can just start saying I'm going to be paying $100,000 a month of legal fees for the next year and a half or until this thing is resolved and if you actually go to court you might those numbers are going to be bigger it's it's not a little boy's game I mean hopefully hopefully you don't you don't um you don't slap someone with a lawsuit I mean hopefully you take your patent and you sign get them to pay a license fee or you sign a cross license agreement or you you do something that's Kinder and gentler than than uh slapping lawsuits what are and I think you touched on this a little bit what are some of the more common mistakes you see people making in terms of patent filing and reviewing the patents I mean you sort of touched on them in a broad sense but are there any others that you would sort of point to as mistakes people make in putting together patent applications um from an inventor standpoint yeah from a ventor standpoint um one of the probably the easiest mistake that that can be fixed that I see is people um work with uh with patent attorneys who don't have the right technical background because they go find someone that they know personally or that has a very cheap rate and that's great if the person has the right technical background to help you out with what you're doing but if you've invented an optical thing and you're trying to describe it to a biotech guy he comes up with something that means nothing and that's so AR so weird you can't read it and then then you file these things that are completely worthless so I would say you know find call the pan attorney you know and chat with him about what your black diagram is going to look like and see whether he understands you know what you're talking about and if he doesn't find a new one so if you file a provisional can you then file within you don't file later oh and you don't file later okay can you then file within a year okay okay so if you file a provisional application you have one year to file your regular you application now she's saying what happens if you don't okay um unlike a regular filing if you don't file a followup your provisional application remain secret it just goes away so no one can associate you no one gets to see that idea or at least they don't see it through the patent office then you're back to asking yourself the same questions can you file again and have you raised any of those bars that the answer is no you know I didn't raise any of those bars then you can file you can file again you won't get the benefit of the day that you filed your provisional you'll get the benefit of your new filing date so having made a provisional application what kinds of changes or additions can you make in the drawings when you make a full application later on you you can make changes to your regular application so you file your provisional you can file a different regular um application um but to the extent that that that those differences are not in your provisional application you don't get that provisional application filing date okay so if you invented the chair and you filed a beautiful provisional but for whatever reason you filed this provisional um to the chair okay um and then later during the year you invented the rocking chair you can write one big regular application to the rocking chair and your claims to the chair will have the priority date of your provisional date and your claims to the rocking chair are going to have the the priority date of your regular filing the question has to do with how do you once you decide you're going to have to have patents that are applicable in more countries than this one how do you decide where do you go and obviously the costs begin to mount um the PCT process will allow you to file one application for $4,000 within that one year of your us filing about a year and a half later um it's going to fall out of that process and some stuff happens in there that's also going to cost you money um and at that point you have to pick which countries you want to file into but when you file that PCT application um about one year after us filing date you can say designate all PCT countries and that will allow you to file um that 18 months later um in any one of those countries um now so the $4,000 check is easy to write those checks for the individual countries are very difficult to write so you're paying filing fees in every single country Plus in some of them you have to translate it plus you have to pay you know and then you have to pay an attorney um that's that's in country there to talk to your attorney who's here and so I mean it it really adds up so what you want to do is is remember what a patent um provides for you which is the right to exclude others from making using or selling so you want to sit down and say where are people going to be making you know building my devices where are they going to be using them and of course where are they going to be selling them which is typically the same thing as where they're using them um and then you go get protection in those countries um it'd be nice to have protection around the world but I me you're talking if you went into every country I mean you're talking Millions so typically you pick four or five countries and um that have the big biggest business value to you and you file in those countries anyone else okay um let's stop here then I hope you join me in thanking Katherine I think it's been wonderfully informative so thanks to be here [Music]