美国专利培训讲座.ppt

The Basics and Recent Developments in US Patent Practice Alan S. Nadel, Esq., Partner Weihong Hsing, Ph.D., Esq. Intellectual Property (IP) Everything you develop can be your IP Three ways to “handle” IP Publish: make it freely available to the public Trade Secret: “hide” from the public, but protect by agreements, risk loss of exclusivity if made public Patent: a government granted exclusive right given for a limited amount of time in exchange for complete disclosure of the invention Exclusive Right Inventors have right to exclude others from making, selling, offering to sell, using, or importing the invention in the U.S. Right to exclude ? right to practice Ways to use a patent Assignment in exchange for income: completely transfers the right to exclude License in exchange for income: partially transfers the right to exclude Patent litigation Maintain right to exclude: seek injunction Compensation: seek lost profits and reasonable royalty Limited amount of time: patent term The longer term of 17 y from issuance date or 20 y from earliest effective U.S. filing date Patents that were in force on June 8, 1995 Applications filed before June 8, 1995 20 y from earliest filing date Application filed on or after June 8, 1995 1st app’n filed before but 2nd filed on/after June 8, 1995 Subject to patent term extension or adjustment if filed on or after June 8, 1995 Subject to payment of maintenance fees: 1st, 2nd, 3rd fee due: 3.5, 7.5, 11.5 years after issuance date Complete disclosure (35 U.S.C. § 112) Enablement must teach one skilled in the art how to make and use the claimed invention without undue experimentation Chemical or biotech invention is considered unpredictable, it’s often not sufficient by, e.g., prophetic examples only without data or actual examples; 1 or 2 species for a genus claim. Sufficient written description such that one skilled in the art reading the description would recognize that the inventor had invented the claimed subject