Nixon Peabody LLP

1. Patent basis and overview Maria Swiatek april 7, 2014 Nixon Peabody LLP

2. Topics • Introduction • Patent Basics • Why Patents? • Patent Process Considerations • Patent Process Timeline

3. Introduction

4. Patent Basics

5. Patent Basics • What does a patent cover? • “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…”

6. Patent Basics • What is patentable? • Process – an act, or a series of acts or steps. • Machine – a concrete thing, consisting of parts, or of certain devices and combination of devices. • Manufacture – an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by handlabor or by machinery. • Composition of matter – all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids, for example.

7. Patent Basics • What is patentable? • Complex technology to simple ideas • Incremental improvements • What is not patentable? • Abstract or impossible ideas • Laws of nature • A naturally occurring organism; human per se • Transitory forms of signal transmission, e.g., a propagating electrical or electromagnetic signal per se • A computer program per se • Data structures • Non-functional descriptive material

8. Patent Basics • What are the criteria for obtaining a patent? • The invention must be: • USEFUL • Invention has some utility. • NEW • Invention must be distinguishable over any existing idea, known as the “prior art.” • Considerations include whether invention has been previously published, made, in public use, offered for sale or otherwise available prior to date of filing / conception. • NON-OBVIOUS • Invention must be more than just an “obvious” combination of existing ideas (based on a multifactor analysis).

9. Patent Basics • Patent prosecution is the process by which an invention is: • Fully documented in an application • Filed with the U.S. Patent and Trademark Office (“USPTO”) • Revised and/or argued in (typically) multiple iterations with the USPTO • Eventually leading to (hopefully) a notice of allowance and an issued patent

10. Patent Basics • What are the types of patent applications? • Provisional Patent Applications • Preliminarily discloses an invention that is proper subject matter for a possible utility patent filing (within one year). • Establishes filing date, but does not provide “full” patent protection. • Utility (“Non-Provisional”) Patents • Provides “full” patent protection for useful processes, machines, manufactures, or composition of matter.

11. Patent Basics • Design Patents • Provides patent protection for ornamental design for an article of manufacture, rather than functional/operational features. FIG. 1 U.S. Design Pat. App. No. 29/402,542 Alexander Crib

12. Provisional Patent Application preliminary disclosure of an invention that is proper subject matter for a utility patent Holds your “place in line” Utility Patents Includes useful processes, machines, manufactures, or composition of matter Design Patents new, original and ornamental design for an article of manufacture (“look and feel”) Plant Patents Types of Patents

13. Key Elements of a Patent • Specification • The specification is a narrative that clearly describes the existing technology and the improvement(s) made by the invention. • The specification establishes that the inventor had possession of the invention. • The specification must provide sufficient detail to allow a person having ordinary skill in the art to make and use the invention. • Examiner may raise objections or rejections for inadequate or unclear specification.

14. Key Elements of a Patent • Drawings • Drawings must be included to illustrate each aspect of the invention as detailed in the specification and claims. • Drawings must be formatted per requirements. • Numbered to correspond to description in specification

15. Key Elements of a Patent • Claims • Claims are detailed statements of exactly what your invention covers. • Claims must follow strict requirements for wording and format. • Claims are key to defining the scope of your patent rights. • Patent Claims are like a deed to property, they define the meets and bounds of what your invention is, and what you can exclude others from doing.

16. Key Elements of a Patent • Claims • Claims are detailed statements of exactly what your invention covers • Must follow strict requirements for wording and format • Claims are key to defining the scope of your patent rights! • Example claim language: • 1. A plastic reclosable fastener with slider particularly suited for thermoplastic bags and the like comprising a pair of flexible plastic strips having separable fastener means extending along the length thereof comprising reclosable interlocking male and female profile elements … • What is this?? See next slide for the answer …

18. What protection does a patent provide? • Grants owner right to exclude others from practicing the claimed invention • Prevents competitors from making, using, selling, offering to sell and/or importing without license. • For a limited time • Typically, 20 years from the filing date. • Patent is NOT permission to practice the invention free and clear • If device is covered by patents (a) + (b), ownership of patent (b) is not enough to build and sell the device.

19. FOREIGN PATENT PROTECTION • Patent application under the Patent Cooperation Treaty (“PCT”) • Streamlines the process of filing in numerous countries • Able to file one application now, and make decisions on specific countries to pursue down the road • Patent application filed directly in foreign jurisdictions, e.g., non-PCT countries • Patent application filed before European Patent Office

20. WHY PATENTS?

21. WHY PATENTS? • Patents can be a key component of a companies’ IP strategy • Offensive use: • Provides strong rights in invention for limited time period • Force others to pay royalties / take license • Defensive use: • Can use your patent portfolio to defend against infringement claims by competitors • May lead to cross-licensing arrangements in the case of blocking patents • Provides defensive publications

22. Practical Points • The U.S. process has changed • Recently passed America Invents Act (“AIA”) • U.S. has moved from “first to invent” to “first to file” standard • Consistent with other foreign jurisdictions. • Important to win the race to the patent office, the first to file now is entitled to the patent

23. Protect Your Ideas • Think about IP protection for an idea as early as possible. • Proper documentation in the early stage can help to avoid later issues. • When was the idea first conceived? • Who are the inventors? • Who owns it? • When was it reduced to practice?

24. Protect Your Ideas • Develop and adopt best practices for documenting R&D. • Documentation may include: • Engineering notebooks • Information disclosure forms • Weekly status reports may show progress of a project • Meeting minutes • Emails • Electronic documents IF sufficient information to determine date and version information

25. Protect Your Ideas • Avoid “starting the clock” • Submit an invention disclosure before public disclosure. • Be aware of the on sale and public use restrictions. • Timing is very important - missing a critical date can be a complete bar to patentability.

26. Protect Your Ideas • Consider: • What are the inventions? • What are different embodiments? • How might the industry landscape change and affect how the application is prosecuted? • How should the invention be protected (utility, design, etc.)? • How are the inventions patent eligible, new, non-obvious?

27. Analyzing the Invention • Review “state of the art” • Consider all known publications, papers and products. • Perform a “prior art” search to determine if invention is patentable or blocked by a prior disclosure. • Consider possible adjustment to direction of your idea/business. • Avoid wasted R&D effort and allow for tweaks to the idea to better leverage IP.

28. The Patent prosecution Process

29. Timeline • Pre-filing • Prior art search (optional) • Submission of disclosure documents • Collaboration between NP and inventors to prepare application • Filing Date (establishes priority) • Complete application must be filed with specification and claims • All required supporting documents

30. Timeline • Patent Office Administration • Preliminary review to insure application meets formalities • Assignment of patent to Examining group based on technology • First Office Action (typically issued 1-2 years after filing)

31. Timeline • Office Actions • Examiner provides opinion on whether the claims are patentable • Each claim may be subject to: • Objection • Rejection • Allowance • Examiner may reject a claim based on: • Prior art that discloses all the claim elements (anticipating the claim) • Combination of prior art has that discloses all the claim elements (rendering the claim obvious)

32. Timeline • Response to Office Action (due 3 months after mailing date) • Input from inventors • Claims can be amended • Submission of written arguments as to patentability • Possible interview with Examiner • Subsequent Office Actions (typically 4-6 months after previous response)

33. Timeline • Final Office Action • Examiner still rejects claims. • Response to Final Office Action • File an Appeal to the Patent Trial and Appeal Board (12-18 month process) • File a Request for Continuing Examination (RCE) • Resets prosecution for another office action and corresponding opportunities to argue • May delay the patent because of new rules

34. Timeline • Foreign Applications (12 months after filing) • Publication of Application (18 months after filing) • Application becomes a public record, unless secrecy is requested • Divisional, continuation, continuation-in-part applications (due by issue date)

35. Timeline • Allowance • Examiner agrees that patent should be issued • Issue fee must be paid • Payment of Issue fee (2 months after notice of allowance) • Issue Notice (1-2 months after payment of issue fee • Mailing of Patent Certificate

36. real world example

37. U.S. Patent Apr. 8, 2003 Sheet 1 of 8 US 6,544,345 B1 FIG. 1 Area for Deposition & Cleaning Gas-Controls 7-10

38. (12) United States Patent Patent No.: US 6,544,345 B1 Mayer et al. Date of Patent: Apr. 8, 2003 We claim: 1. A method of cleaning deposits in semiconductor manufacturing equipment wherein there are different types of deposits including powdery and dense film-like deposits, characterized in that the equipment is cleaned using two separate steps, each of said steps using different fluorine containing chemicals to selectively clean the different deposits.