Hi everyone my name is Clark Wilson and
Dr Stubbs and

I connected couple months ago and
he suggested that I.

Might pass on some of my knowledge
to you in the startup community

so I'm going to talk to you today about
intellectual property you know it's

a popular popular term popular topic
I don't know everybody's experience

there's a lot of people in this room and
groups like this sometimes we have one or

two people who seem to be experts and
the rest people aren't so I'm going to try

to do one o one get to the basics you have
a basic understanding of buzzwords of what

things are and if you can keep
your questions to the end I'll

leave enough time to have a good question
and answer session that that will allow

you to have a more clear understanding
of the what I'm when talking about so

as a background I'm a patent attorney
registered patent attorney so what that

basically means is I have an engineering
background I took a patent our exams and

I became a lawyer on top of that
because that wasn't enough school.

I was previously an in-house Pat
attorney at C. Division which is now

part of Novartis so I have a lot of
experience with the medical device side of

things although right now I'm working on
a biotech related patent application.

Master's degree in bioengineering
Currently I'm pretty involved with

the Elana bar I P section and
if you want to keep up on

medical life science related
patent cases relevant patent

cases I try to publish a blog
this is the blog title and

I try to Gets get a post out maybe once
a week I try to break it down into three

paragraphs so that you really get the meat
of what's posed to have come out so

if you want to follow that you know
that's that might be something to be

to be of interest to you so
when we hear what.

Selectional property what is what is under
the umbrella of the term intellectual

property so the big one is patents so

patent a lot of people think I am
what I would like to buy a patent or

I would like to patent this what
does that actually mean a patent is

a right granted from the U.S.
government to exclude

somebody else or other third party
from making using selling or

importing your protected invention
into the United States so

patents are jurisdictional So each country
is going to have their patent system and

they're going to be limited
to that particular country so

a patent does not give you a right
to sell a patent gives you a right

to prevent somebody else from selling
that's that's really what you're getting

to get a patent your invention must have
some sort of function or it must have

some sort of utility that basically
means is you cannot patent gravity and

you pat cannot patent
an algorithm by itself right so

you have to be you have to do something
with it and I'll go into a little

more detail about the particular types
of technology that can be patented but

basically function utility that to get
a patent that's really what you're looking

at the other aspects of intellectual
property trademarks you know the biggest

trademark company brand company in
the world is here in Atlanta and

that's coke so
trademark is basically protecting

the source of your business so
a trademark should not protect should not

indicate the product that you are selling
a trademark is designed to protect

the origin of the product or service that
you're selling what I mean by that So

if somebody sees the trademark
that is of your good or

service they shouldn't they shouldn't
immediately think what the process.

Addict is they shouldn't know what the
product is from that name what they should

ideally should know is where that
product has come from right so

you see McDonald's You see
the word McDonald's in a vacuum

you wouldn't necessarily think
that it's a restaurant but

having known from the brand development
of the company of McDonald's you see

McDonald's they OK I know that's a
restaurant that's the idea of a trademark.

Copyright is more towards the artistic
expression of something traditional

copyright is going to be for
literature music.

Thought to be more recent
times architecture boat halls

and then most recently you can
get copyright protection for

the software code in software program so
the sort of the source code.

And then finally you've got trade
secrets so the top three are primarily

governed by federal law which means
national law and they're pretty standard

internationally trade secret on
the other hand is state law specific so

each state is going to have its own trade
secret law and trade secret is really what

it sounds like it's that secret sauce it's
whatever you you know you've come up with

that makes your business run
better than your competitor or

you know you've you've done a lot of sweat
equity to develop your client list or

your know how and just just because.

Your competitor doesn't know it that
gives you the competitive advantage

and by them not knowing it and

not having it allowed access to it that
can give you something called trade

secret so it's tricky to try to
protect something with trade secret

because if your competitor
can lawfully reverse engineer

what you've come up with on the open
market you don't have a trade secret you.

Right so it's got to be something
that they probably couldn't find or

couldn't figure out unless you give them
access to it you know the most famous

trade secret that everybody uses in law
school is the formula for Coke you know

the old saying is that got four people in
the company that know that the formula at

any one time and they're never allowed to
fly on the same plane at that same time.

You know whether or
not that's true I don't know but.

But they decided a lot of times it comes
the question comes down to do I patent

my idea or do I protect it with a trade
secret and it depends what the idea is

because with a patent you're going to get
a twenty year monopoly but in exchange for

that you going to have to publish
everything about how your invention works

so eventually your competition is going to
know how to make and use your invention or

make it better whereas with a trade
secret if if you if your software or

your product or
your particular chemical formula or

something like that cannot be
easily reverse engineered and

you can keep it secret you might decide
to keep it as a trade secret because

that protection can last indefinitely
there are no time limits on that so

there's typically a dissident to be made
early on depending on you know how you

protect things are trade secret So
what can be patented we talked about

the utility and the function aspect to
it but there's basically four main types

of inventions that can be patented You
can have a process patents that will be

a method of doing something
a method of performing something so

I'm going to give you you know I'm going
to stick within the same industry to

give you the four different viewpoints
from looking at contact lenses so

a process might be a method of
designing a new contact lens or

a method of manufacturing those lenses
a man method of inspecting those lenses so

in that method will be defined by.

Series of steps OK.

A machine is going to be for

example the apparatus that goes it
that actually makes those lenses so

an apparatus is going to have typically
some moving parts may or may not have

moving parts but it's going to typically
be a widget or something that you can hold

in your hand an article of manufacture is
going to be the contact lens itself and

you may define that by the process
that you have undergone

to make that contact lens so you will
say the contact lenses created by step

one step to step three right composition
of matter is going to be more and

then the chemical area so in this case
you're looking at the actual hydrogen

Well that is used to actually make
that contact lens itself OK And

then from a life science standpoint.

There's a variety of ways you can protect
the innovation that that goes into

life science innovation and
those are always pretty interesting

patent claims to read
because it's typically just.

A long series of letters and numbers and
structures and things like that.

It when you're dealing with
a mechanical apparatus and

claim it's very easy to figure out what
it is but that the patent claiming

to deciding how to protect what aspects
of it allows you to be very creative

as a patent attorney so
you know this this may be a cover but

you CAN use of a broader term to
build a bubble around your invention

to it to get protection from the a broader
scope than what you've actually come up

with from a product is a concern whereas
when you're dealing with a chemical or

a biotech it's typically more literal and
so

you're really just trying to protect
exactly what you've come up with

because it's typically a somewhat of
a narrower and narrower scope from.

Languages language standpoint so
one of the requirements for patentability

it's pretty hard to get a patent
it's got a lot harder recently.

And that's partly because there are so
many documents and

publications out there now that can stand
in your way when your patent application

is being reviewed so the main the main
ones that you need to be concerned with

when you've come up with an invention
do I have utility meaning

does does my invention perform some sort
of a function whether it's a process or

an article manufactured I mean does it
do something it cannot be an abstract

law of nature you know gravity no it
can't just be like I said the algorithm

by itself now if you are undergoing
a process that uses the algorithm

to do something that process in its
entirety could be patentable but

just saying I've come up with this great
algorithm that's not going to be enough.

Novelty it's a novelty and non-obviousness
you know if you ever are going

to file a patent application for something
and you're going to deal with the patent

office you're going to see these two words
novelty basically means that the patent

examiner is going to look at what you're
claiming to be the patentable part of your

invention in a patent you've got
the description of maybe the product and

how you've how you've gone through the
process of coming up with your venture and

how it might work but the claims at
the end are going to are going to outline

what part of that is particularly
patentable what you think is what

you've come up with that can be protected
what's new That's what that's what you're

trying to protect So in those claims
you may have three or four key

elements right that's that's that's the
part that you think is valuable the patent

examiner is going to look at those three
elements and is going to do a search

of all publications that typically their
U.S. issued patents or world wide patents.

Publish patent applications.

In the case of biotech it's a lot of
papers scientific papers academic research

papers and if that patent examiner
can find all of your claimed elements

within a single document he will
say it's not novel because somebody

has already described and published this
right it's already it's already been done.

Now let's say he can't or he or
she patted examiner cannot find all

of your elements in a single reference
that pad examiner can then take two or

three or four separate references.

And if each of them are in
related technology fields.

And each of them together can be
combined to have all of your listed

claimed elements then that patent
examiner can then say one of

ordinary skill in the art which is the
this is the hypothetical person that would

review your patent application
one of ordinary skill in the art.

Could look at all of these
references these four references and

it would be obvious to that
person to combine them and

come up with what you've
claimed is your invention so

when you file a patent application unless
you have come up with the internet or

something that is so new that nobody
has ever even thought about it

it's pretty much a guarantee you're going
to get an obvious rejection right so when

you when you go to navigate the process
of filing your patent application and

getting it examined just prepare
yourself when you get that rejection

don't don't feel like it's a shot in the
heart like you will never get your pattern

that's pretty much standard practice
it's it's going to happen and so

you just have to then deal with it and you
have to negotiate with the patent examiner

narrow or amend your claims and
try to get around there prepare arguments

that's that's that's just the process
right so these are the three.

Things that you have to overcome
in order to get your patent.

So let's say you've come up with
an invention What do you do first

some people say call the pad
attorney I would say don't do that

because you don't want to come to
the patent attorney too early.

Because you haven't really fleshed out
your idea yet so what what do you need to

do is your first step when you've come up
with something identify those functional

elements that you think are new so you
may look at what you've come up with and

ninety five percent of that may be based
on technology that already existed

right most things that are patented
are subtle improvements of already

existing innovation so you're going to
look at the ninety five percent of what

you've you've based your innovation on and
then carve out that five percent that

additional step that you said that's what
I've come up with that's what makes it

better that's my improvement you
look at that five percent identify

the functionality of that
five percent write it down.

And then you really need to start doing
some patentability searching OK And

this is basically trying to anticipate
that search that the patent

examiner is going to do he's going to
look at public you're going to look at

publications to see these to try to find
these claimed elements so you need to

do it as well because there's no sense in
spending a lot of money to prepare and

file a patent application if there's
a document that's help there already that

describes exactly what you've done so
there's a couple of different ways

that you can do some searching you know
just general Google you're going to find

publications academic
papers things like that.

That's a that's a pretty nice pretty nice
tool Google has their own patent searching

tool and it's very easy google
dot com backslash patents and

you're going to search pretty
much the same way that you.

Use Google right and
you're going to look basically for

those functional elements in your
invention that you think are protected and

you're going to try to find a few that
you think are particularly relevant

if you're feeling very courageous and
very advanced in your patent searching

abilities you can then step your game up
and go to the Patent Office website and

use their search engine tool.

It's not the the easiest thing to use
right off the bat but it's probably

the best because it allows you to
define your terms pretty pretty well.

And it's and it's free the problem with
pads searching is that if you don't know

what you're doing you're probably going to
do a search for three or four terms and

your end since there are eight and
a half million issued U.S.

patents and and an equivalent number
of published patent applications and

then you've got to consider the worldwide
patent documents you're probably going to

come back with a thousand hits and
you're not going to go through a thousand

patent documents to try to determine
if your invention has been described so

you're really looking for five to ten
that's a nice list it's a manageable

list and if you can get them down to that
that's great the alternative is to have

a professional search done and that can
be done by you know a lot firmer or

just a patent search or
they're typically not that expensive so

if you budgeted into your development
plans you know you're looking at somewhere

between I'd say six hundred to fifteen
hundred dollars depending on how many how

many hits come back so I'd say once
you do your first call on your own and

you get one hundred hits back and you say
I'm not going through all this is taking

too much time at that point you can then
maybe outsource that project and and

have a look at it but that really needs
to be the first step is the patentability

searching so once you get
a manageable list of search results.

You're than going to
look at those results and

compare them to those functional elements
that you think are protected in a really

nice way to do this is just to create a
chart side by side say these are my three

elements these are the patent
references I've discovered do each

of these include these particular elements
if it's similar How is it different so

it's you want to try to come up with
differentiators right and that will help

you determine whether you want to take the
next step to file a patent application and

even if you do file a patent
application it'll allow you to maybe

make quick arguments if
there's a rejection that's so

that's I think that's especially in this
industry where it's pretty complicated

that's really necessary before
you go take the next step.

And file a patent application
with a patent attorney or

somebody like that that that
will save you a bunch of money.

Upfront and it will allow you to determine
how to steer your steer your innovation

your in your research a lot of times
sometimes people will be at a very

early stage in the development
of their idea and

before they want to really push forward
with a bunch more R. and D. they'll

say OK I want to be I want to play in this
space to perform this type of function.

But I want to see what else is out there
in the patent documents to see whether

it's worthwhile so they'll just do
a general landscape type search to see

what's already been described and what's
been protected and that will allow you to

maybe steer your your research or
steer your development to sort of move

through what's already been patented
right so that's a that's a nice option.

So if you decided you've got something and
it's not described and

you really think you want to move forward
you want to file a patent application

should do that right away the old system.

Used to allow you.

A grace period.

Basically by saying if you
were the first inventor.

You will have the rights regardless of
whether somebody else filed their patent

application before you we were the only
country in the world that operated that

way everybody else is on a first
to file system so if you and

a guy in France both independently
came up with the same invention and

you came up with it before him but
he filed his patent application before you

you're out of luck and
he gets the patent rights.

But in the old system of
the US If you filed first but

you were the first one to invent it you
could then go to the Patent Office and

prove to him through cocktail napkins and
no journal entries and

things like that that you actually
came up with it first yes.

Yes Yes So any any application
that describes the invention

that's going to follow the patent
office right whereas isn't but

that does change what that old system
allowed you to sit on things so

sometimes you would go to corporate R. and
D. departments and they would have file

cabinets full of invention disclosure
statements so the people in the R. and D.

department are coming up with these ideas
but the people the marketing department or

product development say we're
not ready for that yet so

let's just keep it in the keep it in the
file cabinet till it where we're ready to

move on the product and that was OK
because they had documented proof that

they were the first ones to come up
with it now the system is first inventor

to file so it's pretty much in alignment
with the rest of the world what that means

is as long as you
are a true inventor meaning

you've come up with it independently
you did not get it from somebody else.

If you file your application first
you will have those patent rights

right so now.

You cannot sit on these inventions and
allow them to collect dust in the in

the closet to decide whether you want to
move forward you got to file something and

like this gentleman said that's where
something called provisional patent

applications become very valuable.

As two types of patent applications
it's usually going to file

the one that's going to be examined and
that will eventually become a patent and

enforceable patent are called non
provisional patent applications

those are going to have formal drawings
if you're if you're a device or

something like that.

You might have tables you
might have research data.

They're going to have those claims that
I talked about which are identifying

the particular aspects of your
idea that you think are new and

it's going to be probably
more expensive to prepare and

file that because you want to get it right
the first time because you're not allowed

to add to that description once you
filed it you can amend the claims but

you can amend the description so if you
continue your research you're going to

have to add on to that original
application with new applications so

that's why it's typically a little more
expensive now there's there's there's ways

to reduce your cost with
the government fees they have

new new programs like the micro entity so
if you actually work for

a university or you have your name on less
than four previous patent applications and

you've made less than three times the
national average salary is determined by

the Department of Labor in the past
year you can pay a quarter of the of

the fees so I think that number currently
is one hundred fifty three thousand

dollars is three times the national
average salary I think this year if you

may less than less than that in
the past year you know you name one for

less than four applications you could.

Less government fees so
that's Or if you work for

the governor or
a university you can get that to.

Yes.

So when I talked about.

Be sure that your research is somewhat
final when you file the application that

specification that detailed description of
the of all the aspects of your invention

how it works that cannot be changed so
you can't add to that right so

a continuation in part
application is pretty useful when

you are continuing your research beyond
the filing of the patent application so

if you've come up with new stuff since
the filing of the patent application

then you can tack that
new description onto.

The description that you filed and
you will file a second application with

that new description and so
what then happens is that the old

stuff the original description that
was in the original patent application

will get the benefit of the original
filing date from the old application but

the new stuff that you've come up
with will have a new filing date so

you know if some third party came
up with the invention of published

in between those two filing dates.

And that covered the new stuff then
you may be out of luck maybe they may

predate your new things right so
that's what a continuation of part is

yeah.

It depends you can you can
broaden the description and

if sometimes taking out can broaden and
so that's why.

In your description you have to word
things like that very carefully so

you may use a broader term and
then you say for example liquids such as

sailing etc etc etc So
you're not necessarily bounds to sailing.

But it's in their history and
it has a description and

it's OK to include more
detail than is necessary for

your claims in the description
right you want a full how to guide.

In your description where their
claims may be a little bit

more restrictive to particular
aspects of what you describe right.

So a provisional application is
going to be a document that is

less formal You don't have to have claims.

You don't have to have formal drawings and
the format of the application

doesn't necessarily need to be in the
requisite format as the as the term and

by the patent office so.

This often allows you to file
things much more quickly and

much less expensively the government
fees for a provisional are pretty low.

And because of this new first
inventor to file standard

you know find that people will
often file their own provisional we

call them sort of cover sheet provisional
so you'll have your your abstract or

your scientific paper that you're
going to publish you to slap a cover

sheet on they're saying this is my patent
application and that's filed right so

as long as it's it's detailed
as all the detail necessary

to perform what you've
come up with that could be

the basis of a patent later on now ideally
you know if you'd only do that if you're

under a very tight timeline deadline
right say let's say you're going to.

A presentation in a week and you don't
have time to have a patent attorney

massage it and file it you might just
file that just to make sure you've got

something on record as of conception
as of this date in filing in the patent

office you probably want to follow up
with a pan attorney to make sure they'll

they'll take out negative words and
restrictive words and

things like that but provisional
applications have become almost direct was

that at this point because of
the necessary minute the necessity for

timely filing Yes.

You cannot edit an application
once you submit it but

if you file a provisional right if
you file a provisional application

you can file a second
provisional application right.

That the.

The provisional application is
going to have the same patent

pending status that you would get with
a non provisional application right

you can't enforce your rights at that
point so you can't sue anybody but

you still have some patent rights so when
you see on the T.V. a patent pending that

basically means it's in the patent office
and it's being examined but they can't sue

anybody yet and that will count whether
it's a provisional or non-provisional

the difference with a provisional is that
you only get that for twelve months or so

before the end of twelve months after
you file the provisional if you want

to continue the process you have to file
a non provisional patent application and

that will be examined
the benefit from that is.

As long as the claims in your
non provisional application

are supported by the original
disclosure in the provisional

you can claim that earliest filing date so

hopefully you can jump ahead of any other
third parties that have come in between

the filing dates of your provisional and
non-provisional So that's really the key

if you're going to file a provisional
make sure you throw everything in there

because you you don't know you know what
you might need to use down the road yes.

So so that the strategy on that is if you
file a first provisional application and

you know things are going to be happening
fast in the lab or whatever and

you're going to be coming up with.

New innovation over this twelve
months you know the base of

innovation that you've come up
with at its most basic form

is at that first provisional level.

So over that next twelve
months you may come back and

say I had six updates every two months so

you then file six more or
five more provisional applications.

But in order to make sure you get the
benefit of that original filing date you

going to have to base your twelve month
window off that original provisional but

you can claim priority to all
those other five along the way so

when you file a second a third a fourth
provisional application you're your

theoretical window for claiming that
priority date gets a little shorter and

shorter and shorter so
you should be keeping your mentality

on your clock on the original provisional
application unless that original

provisional application was so broad that
it's pretty much useless and the third or

fourth provisional are the ones that
are really really have to meet and

then you can give yourself some time but
a provisional is never published

it's never examined and
if you don't do anything with it.

Within twelve months it pretty much
just expires as if it never existed so.

One strategy is that at
the end of the twelve months

if you're not ready to file
your non-provisional and

you're still developing but
you haven't made any publications and

you haven't talked to anybody about what
was in the provisional you may just be.

Not not converted into a non-provisional
at that point you may just file it again.

To maybe extend out a little
another twelve month window but

with that decision you would lose
that previous twelve months.

Say.

Yeah right right but you would lose
that the first twelve months right so

that's the you know that's
the gamble that you take OK.

So the next

yes.

Right you were you could file
it within twelve months from

the publication date in the US outside
the US you can no longer do that

in the US they give you a twelve month
grace period from publication or

public use right so
if you were to make a publication

you would have twelve months
from that publication.

But you could not claim back a provisional
can't claim the priority date

of another provisional provisional
sits on it's own right

so.

About your

invention.

How do you monitor that.

You know you can set up you know that
setting on on Google you know that

a little notify you when something pops
up with your with your name on it but

that's just that's just a case of being
aware of what's going on in the in

the industry and
whether whether you're being talked about.

If if somebody else has made
a publication about your development but

you're still within a twelve
month window from that.

You know like I said you can still
file your application because the idea

originated with you if it was
somebody else that independently

published on their independent work and
they had nothing to do with you and

they did not get their idea from you and
twelve months passes.

Then you may be out of luck so.

Short long story short if you come up
with an idea file your application and

and keep watch of the twelve months ago.

So from a a product standpoint now we
get to the business side of things.

Patent application looks at things one
way patent infringement litigation

on the products side looks at things and
another way so people always ask me

you know when can I start
selling my product.

Like I said before a patent
is not a right to sell or

use a patent is a right to stop somebody
else from selling or using so quick answer

whenever you want you want to start
selling you can start selling today.

The problem is once you start selling you
now have a twelve month window to file

some sort of patent application if
you ever want patent rights and

if you don't get those patent rights then
you're basically opening yourself up to

any kind of competition
on what you're selling.

Media Mansour You probably
want to at least wait to start

selling something until after you filed at
least a provisional patent application so

you get that process started so you let
your competition in the world know that

there's something in there
is patent pending and so

you shouldn't you shouldn't steal my idea.

That also from an investment stay.

Point most investors nowadays won't
even talk to you unless you have

some kind of patent application filed so
it becomes a piece of your property a part

of your your value that you will
then approach an investor about.

Complete answer if you've got
something that you want to sell.

You need to look at whether or

not you're going to be infringing
somebody else's patent so

something that you may hear a lot of your
you know developing a product to sell or

working for a company that sells products
is something called freedom to operate and

freedom to operate basically means that.

You've come up with a product that
you're going to sell this product has

it's a killer elements in it.

You want to compare those elements
of that product to the patent

claims of other people's
other entities issued patents

so I do a lot of this this is I
write a lot of these opinions for

for clients they say we're
going to sell this product.

I need you to figure out if we're
going to infringe our competitors or

friends anybody else so I basically
look at all the available patents that.

Describe technology that is
included in that proposed product

look at those claim elements and
compare side to side and

say Are we going to infringe
these claims and if so.

You know how can we.

Redesign your product to make sure
we don't infringe your claims or

how can we determine if you are if
that patent might be invalid so

freedom to operate is something you
probably hear a lot about and that's

looking at things from the infringement
standpoint if you have a product yes.

You know.

If if you if you're
worried about in media.

Infringement litigation then you're
only worried about the issued patents

if you want a complete picture then you
can look at published patent applications

because patent applications are all made
public for view eighteen months after you

file the application right so you can
look at the claims in those published

applications in their present form and
see whether or

not you're going to infringe those
claims but you know there's always

the chance that that patent application
will actually never get allowed anyway so

you kind of hedging your bets at that
point where you know you hire somebody to.

Give you a guess as to whether or

not it will issue and whether or
not it will issue in that same form.

So you typically look at those but.

When I write those opinions I say keep in
mind this is based on their current form

and this may change so
you can't hold me to anything right.

So miscellaneous miscellaneous
miscellaneous parts so

question is aren't patents expensive
you know a lot of people call me.

And they talk to me for a while they say
yeah yeah I really want to file a patent

application and I tell him how much it's
going to cost and they immediately say.

I don't know that I can do that and
you come to talk talk to you again so yes

patent applications and the patent process
is expensive and it takes a long time and

it is complicated it's not quite
as bad as the F.D.A. process.

But it is it's it's sort of
in stages right the patent

you know the patent application process
is as a little bit expensive and

takes a little bit of time then you
say I want to get F.D.A. approval and

you go to the clinical and
yours your costs skyrocket from there.

Typically a patent application
the examination process is as likely to be

somewhere between three and six years I
would say a less you file a petition to.

Accelerate and
basically all that is is giving the patent

office more money and they'll push
you to the front of the line and

they will guarantee you a thumbs up or
thumbs down within twelve months

that's about as fast as you're going to
get with your pad examination process.

Your costs all in from beginning to
end including the government fees for

the patent examination you
know could be anywhere from

twenty to fifty thousand dollars.

To get a patent especially in
this industry because you get two

bites at the apple you get two different
rejections with the patent examiner and

then you can appeal the patent examiner
if he continues to reject you so

that involves briefing why you think
he's wrong going up to the patent office

arguing in front of a panel of judges.

And this is pretty common
Dow days because it's so

hard to get patents in
particular industries and

then you can start all over again with
some actual money paid to the government.

So this process can go on for for
a long time I've I've worked on patent

applications that took us ten years to get
through the pattern examination process so

you know some some some patent
applications especially in the pharma

industry you know that one blockbuster
drug can be completely protected by one

patent so
those guys will spend God knows how much

money on their patent application process
because that's that's everything to them

you know it goes generic and
then they can't control the pricing.

So that you know they will spend hundreds
of thousands of dollars on that one patent

application in the I.T. field you know
you look at a piece of software or or

a product and that one product may be
protected by fifty patents you know

each individual part of each individual
aspect may have its own patent and

so you know if they lose one it's OK but
the farmer field and in the by.

Tech field that one patent may be may be
everything to preventing your competition

going back first.

Yes So they they have instituted the.

Micro energy discount for those so you can
pay less if you are if you're classified

as a micro entity but you also have a
small entity discount which means you have

ploys less than five hundred employees.

The schedule is the same so
you know what he's talking about is

after you've gone through your
plan examination process and

you've paid all your money in
the patent attorneys and government.

At the three and a half year mark seven
and a half year mark in the eleven and

a half year mark after your patent has
issued you then have to pay maintenance

fees to the patent office to keep that
patent alive so a patent can be protected

for for a year for twenty years after
it's filed but you have to pay these fees

that three three seven eleven years to
keep it keep it going outside of the U.S.

Those fees are typical
typically annual right.

So yeah that that's that
schedule has has not changed.

Yes.

There's a lot there's a lot that goes yeah
there's a lot that goes into that if you

if you send me and this is why I love
talking to groups like this people know

if you send me an invention disclosure
that is complete it's going

to take a lot less time if I send you
a draft and ask you to review it and

you send it back to me in a week it's
going to take a lot less time so

a lot of times the timeline to
file the patent application are.

Dependent on the inventor because you're
going to know your invention better

than me your Paisley paying the patent
attorney to lawyer it up right make sure

it's you're not giving anything up making
sure it's all the T.'s are crossed the I's

are dotted in drafting the claims that's
what you're really paying the patent

attorney to do is draft those claims so
we need to have enough time to do that but

you could probably say anywhere between
if you're preparing a non-provisional and

you don't have an immediate timeline
deadline you'd say probably

anywhere between a month or
two months I think it's probably good for

budgeting and
a lot of that I guess that is the back and

forth you know you're reviewing it
on reviewing in a manner managing so

give yourself an I would say a month or
two months yes or.

He knows he's he's Or
he's the ringer in the crowd.

So continuation in part is going to be for

protecting updated research right
stuff that you've come up with since

you filed the patent application so that's
going to have a new filing date that's

that new stuff a continuation application
is going to be a pure continuation or

is also going to be called a divisional
application outside of the U.S.

they're all called divisional in the US
we've got that they have two different

titles so when you file an application.

You end you include in your description
all the aspects of the invention so

you may have three or four different body
ments there are slight variations on each

other they can protect they can sort of
perform different functions with air tight

kind of related so
you may try to protect with claim language

the different types of environments that
that perform different functions but

under patent law you're only allowed
to get one patent per invention

so in your list of claims the patent
office may look at them and

say you've actually got two or
three different inventions

here they're distinct from each other you
need to pick one so in that case they may

send you something called a restriction
requirement the basis pick one you

withdraw the claims that you're not going
to proceed with in-at application and

you move forward with the ones that you
are going to proceed with you then can

file those withdrawn claims in something
called a divisional patent application

it will have the same exact description
that you've submitted before so nothing's

changed the claims are the same it's ready
to go you file it in the patent office and

you then can claim the original
filing date the priority date

of that original application right so
it's.

It's really beneficial a continuation
application not a continuation of part but

a continuation application.

Is going to be somewhat similar that's
going to be the situation where you

haven't already submitted those claims for
review so

they haven't been looked at but
in your description.

You then look at what's been claimed and
you come back to the patent attorney or

and you say you know what there's this
little aspect here that we described but

I didn't think was immediately
pressing but now it's important and

I think we need to claim
protection on that.

And I need we need we need to protect this
because our competitor started to do this

even though we've described it at that
point you can then craft new claims and

as long as those new claims
are fully supported by that

original description you also get to
claim that original filing date so

that original priority date so
with a divisional and

a continuation as long as that
description is the same and the claims

are supported by that original description
you could claim all the way back to

the original filing date and this is great
so every time we get an issued patent for

a client one of our things in our
checklist is go back to the inventor and

ask them if there's anything else in this
description they think might be claimed

because once that door closes once
the once the patent issues you can no

longer file a continuation it has to
be pending right so sometimes we'll

just file something just to just to keep
the door open and this application that it

took us ten ten ten years it had
an original filing date of two thousand so

that gets that's gets in front
of a lot of competitors so

we've found some claim language and

file the continuation just to keep the
door open and that can you know out of.

One original application you can
have twenty patents because you can

only have one patent
per invention right so

the question of how out if you have
a series of continuation in parts and

continuations and things like that.

That you know I have a case like
that right now where it dates back

eight years and there's eight priority
applications some of them are continuation

parts some of them are continuations and
it's really going to depend on

the technology that you're
trying to to protect right it's

not going to be the date it's the
technology so if you have been rejected

by the examiner on a on this
aspect of your claims and

you're trying to say well this
aspect of the claims we actually

have priority over this piece of prior
art based on our continuation or

continuation part you're going to
you're going to have to find out where

in that priority documents that you have
it was listed and when it was filed so

it's not going to you know you're not
going to get a spreadsheet from the patent

office that says this is this date this
is this they that's really going to

be something where somebody brings up
a piece of prior in a rejection or

a litigation and you then say well
actually we pre-dating predate that prior

art because we described it originally so
that's that's typically how that's going

to work right it's kind of up in
the air you don't really need to figure

it out until you need
to figure it out right.

Thank you thank you so how long the
patents last I mentioned it twenty years

from filing the USED TO BE
seventeen YEARS from issuance but

people even took advantage and
of the system and

filed something called Submarine
patents so basically what that means is

your patent application gets allowed and
your patent her.

He then asked you Are you sure there's
nothing else in here that you want

to protect Well actually yes there are
some claims I would like to protect and

this is five years after it was filed and
so then they finally new continuation

application with the original priority
date and then you have you you have patent

applications that are issuing thirty
years after the original filing date but

then they have an additional
seventeen years on on on on that and

people really sort of take
advantage of the system so

the patent office now changed the system
and they said twenty years from filing

right so
you're trying to limit the monopoly.

Design patents I didn't talk about them
because that's not really something for

this this type of audience you don't find
the design patterns in the biotech field

unless you've come up with a new case or
something like that but

it's really the way something looks you
can get a patent on the way something

looks is going to be more for a commercial
product those are fourteen years from

the date the patent issues those
didn't have maintenance fees so

you know that may be a way to sort of
broaden out your patent portfolio so

the next question that I have lots of
discussions with people about is in force

and what I mean by enforcement
litigation in infringement litigation

the idea of getting a patent
in its most basic form is

to stop somebody else from selling or
making what you've come up with and

that means lawsuits and patent lawsuits
are probably the most expensive

lawsuits you can possibly
file in any type of law.

So if you start up company come up
with an idea and you get a patent and

giant company X.
is infringing your patent and

you come to your attorney and
say hey I'd like you to sue those guys.

And most likely what's going to happen
is depending on the attorneys you go to

he's going to say or
this was a this is what's going to happen.

We're going to assume they're going to
come back to us with fifty of their own

patents and say I'm not sure because I
haven't done my due diligence yet but

I bet somewhere in this stack of fifty
you're infringing one of ours so

just go away and leave us alone
that's I.B.M. strategy by the way.

So the alternative then is.

Something called contingent fee litigation
where the attorney might basically say I'm

only getting paid if I win.

But it but but but in essence it's very
expensive to enforce your patent rights

and there's a variety of options to do
that but I wouldn't necessarily say that

should end your goal of getting patent
protection because a variety of reasons to

get a patent the one being
creating value for your company

talking to investors talking to potential
purchasers of your of your company or

licensors of your of your invention from
your patent those are those are very

valuable ways of using your patent other
than suing your giant competitor and

hoping for a billion dollar windfall
which so rarely happens and

you'll spend one hundred million dollars
just to get there so I wouldn't I wouldn't

go to it go into the situation thinking
that I'm going to get a patent and I'm

going to sue Johnson and Johnson and it's
not likely to happen you should file your

patent application and think I'm going
to talk to this venture capitalist and

we're going to grow and then we're going
to sell or license to Johnson and Johnson

we're going to get a nice revenue stream
because that's that's the most likely

thing that's going to happen
with the patent application.

So that at one thirty five
to go in a presentation and

we had some good questions
answers we have the other one.

I mean if you file
the provisional application.

The you don't want to
disclose to somebody.

Outside Well I think you
should always have an N.D.A..

I think an N.D.A. without a provisional
application is really dangerous so

our N.G.'s typically
are combinations of the two so

you'll reference
the provisional application but.

Your provisional application.

To be a valuable and
useful provisional application needs to

fully describe what your invention is and
what you hope to eventually claim

because if what you eventually
get allowed claims for

in your non-provisional is not fully
described in the provisional and

you don't get the benefit of
that original date right so

a provisional can be very useful and
I don't I don't necessarily.

I have never heard that I mean I
don't know why they wouldn't describe

disclose something to somebody that's
been following a provisional as long as

the provisional is complete when we file
a provisional application it's pretty much

ready to be filed as a non-provisional so
we include claims we've got drawings

it's ready to go you just get you
get an additional year to play with

at a lower and a lower filing fee so
you know I have

Nessun I'm necessarily heard heard that
I don't know why that would be a problem

a provisional a good provisional is every
bit as good as there is a non provisional

application.

If you haven't filed a provisional you
have to have an N.D.A. And I think if you

have filed a provisional you should
still have an N.D.A. And that N.D.A.

should reference the provisional
application that's the way our.

Now yeah maybe damages or just getting
an injunction to remove your competitor

from the marketplace you know that's
that's kind of the there's a there's

a there's two different options you know
you may just say I don't need a windfall

financial windfall I just need them gone.

And you know if it's an industry where

the person getting sued
is the major player.

And they have one product and
you can get that one product removed with

an injunction they then will
come back to you and say.

So we're going to pay you all this money
to allow us to keep selling these within

a with a license agreement with.

People you're.

Probably going to be.

Good writers that you know the people.

Really.

Yeah not behaviors.

We have or.

We.

Have.

Yeah and that's why you've got the options
of these contingent type agreements.

You get these new companies which I would
be very wary about where they sort of

finance your litigation but they take like
sixty percent interest which is crazy.

But yeah that's a discussion that needs
to be had and I wouldn't you know

there's options there are options that
you're not dead in the water who me.