Intro to Patents

Patent Basics

  • Global Patent System: No international patent exists, patents must be separated and obtained in each territory (e.g., US, Mexico, Japan).

  • PCT Application: The Patent Cooperation Treaty (PCT) allows for an international patent application, providing effects akin to filing a national application in 153 member countries.

    • Filing a PCT application grants an 18-month period to decide on entering the national stage in desired countries.

Patent Rights

  • Active Right: Patents allow inventors to exclude others from making, using, or selling their inventions but do not guarantee the right to practice the invention, depending on existing patents.

    • Example: Inventor of Chair No. 2 holds a patent for its features; another inventor creating Chair No. 3 cannot produce it without licensing Chair No. 2's patent.

Patent Lifespan

  • Duration:

    • Utility Patent: 20 years from filing date.

    • Design Patent: 15 years from issue date.

    • Patents are not perpetual; rights expire after set periods.

Contractual Nature of Patents

  • Government Contract: A patent is viewed as a contract between the inventor and the government, with the inventor receiving a time-limited monopoly in exchange for public disclosure of the invention.

    • Written Description Requirement: Two key aspects:

      1. A detailed description for skilled individuals to replicate the invention.

      2. Claims must distinctly claim the invention to inform the public about protected aspects.

America Invents Act (AIA) Changes

  • Effective March 16, 2013, the US shifted to a first to file system from the previous first to invent, aligning with the global standard.

  • The Micro Entity System provides a 75% discount on patent fees for individual inventors, encouraging patent applications.

Structure of a Patent

  • A patent cover sheet indicates that the application has been received and approved by the US Patent Office after examination.

  • Universal Numbering System: Helps retrieve information in different languages by identifying key sections (e.g., inventor details, patent type).

Important Sections of a Patent

  • Section Listings:

    • Section 12: United States utility patent.

    • Section 54: Title of the invention (e.g., "Device for Treating Hiccups").

    • Section 76: Inventor's name and contact information.

  • Patent Life Extensions: If the Patent Office delays processing, the patent term may be extended to compensate for the delay.

Patent Application Process

  • All applications filed after 2001 are generally published 18 months post-filing; non-publication requests are possible with trade-off conditions.

  • Specification: The most important part are the claims that dictate the scope of the invention.

    • Claims must be possible for analysis of infringement and patentability.

  • Claims types: Can be independent (complete) or dependent (referring back to other claims).

Distinction Between Patent Types

  • Utility Patent vs. Design Patent:

    • Utility patents protect practical utility, while design patents protect ornamental design.

    • Different terms: Utility (20 years with maintenance fees) and Design (15 years without maintenance fees).

    • Utility patents typically contain multiple claims; design patents usually contain one claim.

Patent Value and Ownership

  • Inventorship vs. Authorship: Being an inventor involves making an inventive contribution to at least one claim, essential for legal recognition as an inventor.

  • Trade Secrets: Another protection method that keeps valuable information confidential (e.g., Coca-Cola recipe), contrasting with patents that require disclosure.

Key Requirements for Obtaining a Patent

  1. Patentable Subject Matter: Must be a useful process, machine, or manufactured item.

  2. Novelty: The invention must not be previously disclosed as prior art.

  3. Non-Obviousness: The invention must not be obvious to someone with ordinary skill in the relevant field.

  4. Adequate Disclosure: Detailed enough for others to recreate the invention.

Example of Patentability Evaluation

  • Invented: A pizza table preventing lid collapse with improvements.

    • Check for patentable subject matter (yes).

    • Determine novelty and non-obviousness against prior art.

    • If completely new and non-obvious, it could qualify for patenting.

Freedom to Operate Analysis

  • Before practicing an invention, ensure there are no dominant patents that might be infringed.

    • Options upon infringement risk:

      1. Design around the competing patent.

      2. Challenge the validity of the existing patent.

      3. Obtain a license to use the competing patent.

Columbia University Inventions

  • Students retain ownership of inventions if not significantly using university resources or faculty assistance.

  • Process through Columbia Technology Ventures (CTV): Inform, submit reports, and engage patent attorneys for assistance.

Patent Filing Process Timeline

  • Provisional Application: Establishes a filing date with a year to refine the invention before a full application is filed.

  • Investor meetings with CTV involve patent attorneys to explore protecting inventions and assessing commercialization opportunities.

  • Average patent processing involves detailed communication with the Patent Office, often requiring amendments based on office communications.