Inventors should be well aware of the fact that no matter how innovative their invention is, unless they patent it anybody else can claim it’s their idea and that you have come up with nothing worth the news.

Filing a patent for their invention is something that most inventors don’t know how to do. It implies presenting a series of documents in an accurate manner and many a time the forms are not easy to understand for ordinary individuals who are not acquainted with legal terms.

Even though it is highly advisable for all inventors willing to patent their invention to hire the services of a patent attorney, this step by step guide will introduce them in the process.

Perform A Patent Search

Performing a thorough patent search is the first step in the process of obtaining the patent for your invention. Throughout this step you will look into any other patent that has already been filed for inventions similar to yours. If somebody else has patented something similar to your invention then, unfortunately, you haven’t invented anything actually.

It is very important that you take enough time to do this step. If you do it carefully you can save yourself a lot of money and serious legal trouble for trying to patent something that already exists or infringing on other inventor’s rights.

If you don’t know how to do that by yourself, you can always hire a patent attorney to help you out. If your product is truly original, you’re ready to start with the patenting process in itself.

Fill Out The Patent Application

As it has already been said, the patent application is quite a complex process. If you misread something or do not fill in the information as expected, you will have to start all over again. Amongst the various documents you will be asked to fill in, we can mention: an overview statement of what you have invented, detailed and professional drawings of your invention, a virtual or physical prototype of your invention and the type of patent you are aiming at and why.

If the idea of presenting the prototype of your invention freaks you out, don’t worry! You can talk to the staff members of Idea Design Studio at 888.864.1870. It is an invention development company that helps inventors with achieving the virtual or physical prototype of their invention.

It is worth mentioning that filing a patent for an invention can put your patience to the test. The review process will definitely take some time. Perhaps you are asked to make some corrections on it or supply further information. You will need to comply with all these requirements if you want your request to patent your invention to be accepted.

If your application is approved, you may file for a patent. This is the right time to evaluate if all the costs involved in applying for a patent is something that you can afford financially or if it is really worth it.

Edward Lakatis run and writes for Idea Design Studio, an invention development and marketing company. He is passionate about all things related to invention, and helping other inventor’s realize their products potentials. More of Edward’s writing can be found on http://ideadesignstudio.com/

  Print This Post   Email This Post

Audio conference to be held October 3, 2013

Section 101 of the patent statutes defines the conditions for patent-eligible subject matter. Historically, Section 101 issues have not been predominant in the life sciences. However, two recent Supreme Court cases have challenged those assumptions and clarified what scientific discoveries are eligible for patentability under Section 101. For example, Mayo v. Prometheus involved an analysis of patentability of tests applying correlations between drugs and metabolites.  Another recent case, Association for Molecular Pathology v. Myriad Genetics, involved patentability of isolated DNA sequences. In this audio conference presentation, the speaker discusses examples of both patent-eligible and non-patent eligible subject matter, and discusses strategies and implications for life sciences companies in the wake of these recent landmark Supreme Court cases.

This audio conference covers:

  • An overview of Section 101 and its importance to life sciences companies
  • Recent Supreme Court cases impacting life sciences companies
  • Why law of nature and purification or isolation of a naturally occurring material does not warrant patentability
  • When structural modifications to a naturally occurring material might make it patent-eligible
  • Why Section 101 is only a bare litmus for patentability; novelty and obviousness issues must be considered

About the speaker:

Jay Pattumudi is an experienced patent attorney with a graduate degree in biochemistry and molecular biology. His experience includes drafting patent applications as well as prosecuting those applications in such technological fields including biotechnology, chemical and pharmaceutical areas, mechanical matters, medical devices, and materials science. In addition, he has drafted opinions relating to non-infringement and invalidity in many of those fields. He has worked for a large general practice firm as well as patent boutique firms, including a life sciences patent boutique firm. Pattumudi has represented large companies, university start-ups, clients of foreign firms, and individuals.

More information here:  http://www.fxconferences.com/Product2.aspx?ProductId=1550&CategoryId=1

  Print This Post   Email This Post

From Dr. Matthew Barton, a UK Chartered Patent Attorney and European Patent Attorney at Forresters:

We have learnt that the EPO has made formal proposals to remove the current two-year time limit for filing divisionals.

At the present time applicants may only file voluntary divisionals within two years from the first examination report in a family of applications.  Mandatory divisionals due to a unity objection may be filed within two years from the unity objection.

The EPO proposes that applicants should again be able to file divisionals (and divisionals of divisionals) for as long as the original application is pending. The EPO also wants to increase the filing fee for second and subsequent generation divisionals.

The proposals aim for 1 April 2014 to formulate and introduce appropriate amended rules. Under the current proposals, applicants with a pending application (not granted, refused or abandoned) on 1 April 2014, can use it as the basis for a divisional application, even if the current two year limit has expired.

Consequences

We recommend that you identify currently pending European patent applications where the divisional due date has expired, or will do before 1 April 2014.  If you are still interested in filing a divisional from any of these, you should slow prosecution as much as you can.  There are techniques enabling you to draw out EPO procedures, and we would be pleased to advise you on those.

Please do not hesitate to contact me if you have any questions.

  Print This Post   Email This Post

patent_long banner_728x90

The International Quality and Productivity Center (IQPC) is holding a Patent Infringement Litigations Summit on developing strategically sound, cost-effective methods to manage increasing patent litigation.

Often, patent infringement litigation comes out of nowhere.  It is unpredictable.  Companies are constantly trying to figure out the best way to manage both the litigation itself and the corresponding costs.  Recent developments in the area allow for some discussion of new ideas and strategies, but there remains ample room for additional reform.

IQPC’s Patent Infringement Litigation Summit will bring together in-house counsel from major companies, law firm attorneys and representatives from other vendors to facilitate strategy and information sharing among these key stakeholders.  Go here to learn more about the speaking faculty.

As an attendee, you will spend two days engaged in quality, high-level conversation about the most pressing issues surrounding patent infringement litigation, including;

  • Recent developments in patent infringement litigation
  • Efficient, cost-effective litigation management
  • Putting together a strong team to make sound, risk-conscious decisions at threshold moments
  • Looking at proactive strategies for preventing unanticipated litigation

The event will feature IP counsel from Google, Microsoft, Intel, Hewlett-Packard, Kodak and more.

Readers of Patent Baristas receive a 10% discount on registration.  For more information, please download the brochure here.

 

  Print This Post   Email This Post

The U.S. Department of Commerce released a green paper on Copyright Policy, Creativity, and Innovation in the Digital Economy (Green Paper) to advance discussion on a set of policy issues critical to economic growth. The Green Paper discusses the goals of maintaining an appropriate balance between rights and exceptions as the law continues to be updated; ensuring that copyright can be meaningfully enforced on the Internet; and furthering the development of an efficient online marketplace.

copyrightThe Green Paper provides a comprehensive review of current policy related to copyright and the Internet, and identifies important issues that call for attention and development of solutions. The solutions may entail a combination of legal remedies, technology, private sector cooperation, and public outreach and education, along with the continued development of options to legally access copyrighted works.

In the Green Paper, the IPTF proposes the following actions:

  • Establishing a multistakeholder dialogue on improving the operation of the notice and takedown system under the Digital Millennium Copyright Act (DMCA).
  • Soliciting public comment and convening roundtables on:
  • The legal framework for the creation of remixes;
  • The relevance and scope of the first sale doctrine in the digital environment;
  • The application of statutory damages in the context of individual file-sharers and secondary liability for large-scale online infringement;
  • The appropriate role for the government, if any, to help improve the online licensing environment, including access to comprehensive public and private databases of rights information.

The Green Paper reiterates the Administration’s support for legislation creating a public performance right for the broadcasting of sound recordings and enabling prosecutors to seek felony penalties for unauthorized streaming to the public. It supports congressional or regulatory attention to determine how best to rationalize rate-setting standards for different types of music services; reform music licensing, particularly the mechanical license for musical compositions; and ensure consumers can unlock their cell phones, subject to applicable service agreements. It supports the U.S. Copyright Office’s work to address the problems of orphan works and mass digitization, consider possible small claims procedures, update the statutory exception for libraries, and improve public registration and recordation systems. The Green Paper also supports and encourages enhancing public education and outreach efforts.

In preparing the Green Paper, USPTO and NTIA held listening sessions with interested stakeholders, convened a symposium, received hundreds of public comments, and reviewed comments submitted to other agencies on relevant topics. The IPTF will consider feedback it receives from public comments, roundtables and forums to determine how the current copyright framework can be improved to serve creators, right holders, service providers, consumers, innovation, and national economic goals.

The Green Paper can be found here: http://www.uspto.gov/news/publications/copyrightgreenpaper.pdf.

  Print This Post   Email This Post

109318After receiving my copy of “How to Write a Patent Application” (Jeffrey G. Sheldon, Second Edition), I changed my opinion about it. I’ve certainly used the first edition over the years. However, I thought of it as a book intended for beginning patent practitioners to use as a handbook for learning patent application drafting. Yes, this massive 1268 page tome is a fantastic manual for teaching new and developing patent attorneys and agents — and as study material for the registration examination with the USPTO. But, I find myself learning (and re-learning) tidbits all the time.

While this book won’t train someone by itself, it is an invaluable tool for learning the ins and outs of patent drafting. Sheldon himself notes:

This book should not be used alone to learn how to write a patent application. No one can expect to read this book and be able to sit down and write a satisfactory patent application. The guidance, assistance, and tutelage of a skilled practitioner will be needed.

The goal of patent application drafting is always to end up with a patent that is both held valid by the courts and infringed by competitors. If missing one of these two items, the patent is worthless. The Sheldon book helps anyone with this goal in mind.

I find that every time I leaf through the book, I am reminded of one concept of another that I need to consider when drafting an application. For example, in a section on Functional Language, Sheldon writes:

Functional statements should be placed either at the end of the description of the particular element after everything necessary to support the functional clause has been set out, or at the end of the claim when all the elements of the claim are necessary to support the functional expression. In general, a claim is easier to follow when the function of an element is recited immediately after the element itself. Also, a claim is less likely to be considered overly broad when the functions are set out one at a time rather than at the end of the claim.

“Whereby” Clauses

“Whereby” and “thereby” clauses are proper only when they describe a function or result that necessarily follows from a previously recited structure. Unlike a means clause, the “whereby” clause has been judicially construed not to define any structure. Thus, a “whereby” clause in a means-pIus-function clause merely states the result of the limitations in the means clause, and adds nothing of substance to the claim.

Accordingly, a “whereby” clause must be preceded by some recitation of structure. Such clauses should only be used when the equivalent phrase “it follows from the foregoing that” can be used to replace he “whereby” clause.

How to Write a Patent Application is an invaluable resource for reviewing topics and re-thinking procedures that may be followed more out of old habit than thoughtful reflection. As pointed out by the author, if your invention is worth filing a patent application, it is worth hiring a skilled practitioner to make certain that the application adequately claims the invention and meets the statutory requirements for a patent application. A poorly written and inadequate patent application will provide a false sense of security and in the long run probably cost much more money. Or even everything.

The book covers diverse topics beyond just preparing the specification and claims including design and plant patent applications as well as preparing foreign patent applications based on a U.S. application. Of course, the book could certainly cover yet further topics. I know some people have said that the book should include information on strategies for responding to Office Actions, like §103 obviousness rejections, the book really is just for drafting the application. I highly recommend this book to any practitioner at any level.

While not a book to read in one sitting, it has a place on everyone’s shelf.

You can get your own copy here: How to Write a Patent Application” (Jeffrey G. Sheldon, Second Edition), Practicing Law Institute; April 24, 2010; 1268 pages.

About the Author

Author Jeffrey Sheldon is the founding partner of Sheldon Mak & Anderson PC, an intellectual property law firm with offices in Pasadena, California. Mr. Sheldon is a summa cum laude graduate of Loyola Law School. He has a Bachelor of Science degree in Chemical Engineering from the Carnegie Institute of Technology, and a Master of Science degree in Biomedical Engineering from the University of Strathclyde, Glasgow, Scotland. He has been adjunct professor in intellectual property law and patent law at Southwestern University Law School and advanced patent law at Loyola University, both in Los Angeles. He is a frequent lecturer for Practising Law Institute and other organizations.

  Print This Post   Email This Post

What:

American Conference Institute’s FDA Boot Camp.  Basic training in core regulatory concepts for life sciences lawyers, business executives and policy analysts.

bigstock-Military-men-26612090The approval process…pre-approval concerns…product labeling… clinical trials…adverse events reports… patent concerns… exclusivity. — all are critical aspects in the commercialization process for drugs, biologics, and devices which are governed by FDA law and regulation. Recent court cases, and high profile trials concerning FDA-regulated products have made it clear that it is essential for attorneys who do not have regulatory practices — but who do deal with FDA-regulated products — to have a familiarity with these concepts. The changing business dynamics of the life sciences industry have also made it critical for business executives, policy analysts and securities experts who work in this field to have a clear understanding of the dynamics of the FDA.

Litigation as well as numerous other legal, business, and policy decisions concerning FDA-regulated products often hinge on what happened during the pre-approval, approval, or post-approval periods.r business executives, policy analysts and securities experts who work in this field to have a clear understanding of the dynamics of the FDA.

Many products liability lawyers, patent counsel, business and investment experts, medical and regulatory affairs professionals, and those involved in pricing and reimbursement — despite their tenure in working with FDA regulated products — are not well-versed in the essentials of the approval process and the regulatory hurdles of the post-approval period. Whether you are a products liability or patent litigator, in-house counsel, in-house business development or federal affairs professional, FDA Boot Camp will provide you the insights you need.

When:

Tuesday, September 17 to Wednesday, September 18, 2013

Where:

Omni Parker House, Boston, MA

But wait, that’s not all:

Boost your FDA regulatory IQ Learn about the FDA approval process and the ins and outs of post-approval challenges

untitledACI’s FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies.

A distinguished faculty of top FDA regulatory experts — a “Who’s Who of the FDA Bar” — will share their knowledge and give you critical insights on:

  • The organization, jurisdiction, functions, and operations of the FDA
  • The essentials of the approval process for drugs, biologics, and devices, including:   NDAs – OTC Approval; INDs; 510(k) submissions; BLAs; PMA process
  • Clinical trials for drugs and biologics and the clearance process for devices
  • The classification of devices and the concept of “risk-based” classification
  • The role of the Hatch-Waxman Act in the patenting of drugs and biologics
  • Labeling in the drug and biologics approval process
  • cGMPs and other manufacturing concerns relative to products liability
  • Proactive adverse events monitoring and signal detection
  • Recalls, product withdrawals, and FDA oversight authority

Attend the pre-conference workshop or post-conference master classes to get the background and/or the in-depth information you need to maximize your learning and networking experience at this event!

Workshop A: Fundamentals of FDA Regulatory Law will address topics to set the stage for the main conference by helping you thoroughly comprehend the structure of the FDA and the essentials of the pre-approval, approval, and post-approval process. Get the background you need to flow seamlessly into the conversations at FDA Boot Camp.

Master Class B: Hatch-Waxman and BPCIA: Overview of Biosimilars and Life Cycle Planning for Drugs and Biologics will provide an in-depth overview of biosimilars as well as analyses of bioequivalency and exclusivities and their role in patent and product life cycle management.

Master Class C: Post-Approval Marketing Guidance and Preemption Protocols will address issues that arise post-approval, including advertising, promotion, and off -label promotion and enforcement, as well as preemption fundamentals.

Attend this conference and learn to navigate your way through the regulatory maze that plays such a crucial role to your cases and practice areas. Seats at prior iterations of ACI’s FDA Boot Camp sold out. Don’t delay — register now calling 888-224-2480, faxing your form to 877-927-1563 or online at www.AmericanConference.com/FDABootCampBoston


image credit: military men from bigstock

PatentBaristas.com is a Media Sponsor of this event.  Readers of Patent Baristas are entitled to $200 off the current conference price tier.   The discount code you will need for this is: PB 200.

  Print This Post   Email This Post

John F. Lewis, Jr. has been appointed as the new president and CEO of BioOhio, Ohio’s bioscience trade association. Lewis succeeds Anthony J. Dennis, Ph.D., who announced his retirement in April.  He was named BioOhio’s fourth president after Dorothy Baunach, Frank Samuels and Dr. Dennis.

johllewisLewis has led bioscience-focused trade missions to Germany, Japan, China, Taiwan, France and Israel. In concert with key BioOhio partners, Lewis helped to market Ohio companies internationally as well as to attract global companies to locate new operations in Ohio. Through BioOhio participation in global exhibitions, more than 72 companies have been attracted to Ohio in the past six years.

Lewis is a Bexley, OH native and graduate of Miami University and Capital University Law School. He is a licensed attorney, an experienced entrepreneur, and a passionate advocate for all things “bio in Ohio.”  He has helped raise more than $1.3 billion for Ohio’s emerging bio companies and is a founding partner of the Ohio TechAngel Fund (OTAF), the largest Angel fund in the U.S. and one of the largest in the world.

An annual BioOhio study started by Lewis in 2004 and produced in partnership with researchers from Cleveland State University, shows the total economic impact of Ohio’s bioscience industry is estimated at $54 billion. Over the past decade, employment in Ohio’s bioscience sector has outpaced general employment by 27% and the rate of start-up company formation has increased ten-fold. Since 2002, BioOhio has grown to include 430 members that represent all regions of the state and all major industry sectors.

As a trade association with 430 members, BioOhio is the lead organization for the Ohio bioscience community and is the Ohio affiliate for global bioscience industry organizations including BIO, AdvaMed, PhRMA and MDMA.

  Print This Post   Email This Post