NHLBI Small Biz Hangout: Intellectual Property for the New Biomedical Innovator


Sasiela: TODAY’S NHLBI
SMALL BIZ HANGOUT. OUR TOPIC TODAY
WILL BE INTELLECTUAL PROPERTY FOR THE NEW
BIOMEDICAL INNOVATOR. AND OUR PRESENTER TODAY
WILL BE DR. GAUTAM PRAKASH, WHO IS AN INTELLECTUAL-PROPERTY
SPECIALIST HERE AT THE NATIONAL HEART,
LUNG, AND BLOOD INSTITUTE’S OFFICE OF TRANSLATIONAL
ALLIANCES AND COORDINATION. I’M GOING TO BE
YOUR MODERATOR TODAY. MY NAME IS CHRIS SASIELA, ALSO WITH NHLBI’s OFFICE
OF TRANSLATIONAL ALLIANCES AND COORDINATION, AND WE CERTAINLY HOPE THAT YOU WILL ENJOY
TODAY’S PRESENTATION. THIS SERIES HAS BEEN
DEVELOPED BY OUR OFFICE TO HELP OUR COMMUNITY
UNDERSTAND SOME OF THE KEY ELEMENTS
IN BIOTECHNOLOGY DEVELOPMENT. ALL OF THESE EVENTS ARE SPECIFICALLY TARGETING OUR SBIR/STTR APPLICANTS
AND AWARDEES IN THE HOPES THAT
AN INCREASED UNDERSTANDING OF SOME OF THE TOPIC AREAS CRITICAL FOR
BIOMEDICAL-INNOVATOR SUCCESS — SUCH AS REGULATORY
CONSIDERATIONS, MARKET-SPACE ANALYSIS,
AND INTELLECTUAL PROPERTY — WILL HELP THEM
BE MORE SUCCESSFUL IN DEVELOPING
THEIR TECHNOLOGIES. HOWEVER, WE UNDERSTAND
THAT THESE KNOWLEDGE AREAS ARE CRITICAL IN ALL AREAS
OF BOTH BIOMEDICAL INNOVATION, AS WELL AS OTHER SPACES, AND WE CERTAINLY HOPE THAT YOU
FIND TODAY’S PRESENTATION TO BE VERY USEFUL. IF YOU’RE NOT ABLE
TO JOIN US LIVE TODAY, THESE EVENTS ARE ARCHIVED, AND YOU CAN CERTAINLY GO
ONTO NHLBI’s YouTube CHANNEL AND SEARCH
FOR SMALL BIZ HANGOUTS, AND YOU’LL SEE
A SERIES OF THEM POPPING UP IN THESE DIFFERENT DISCIPLINES. WE HOPE THAT YOU DO TAKE
THE OPPORTUNITY TO LOOK THROUGH
THE ARCHIVED MATERIALS, AS WE FIND
THAT THEY’RE VERY USEFUL AS PEOPLE ARE DEVELOPING
THEIR TECHNOLOGIES AND THEIR COMMERCIALIZATION
AND BUSINESS STRATEGIES. IF YOU HAVE QUESTIONS
THROUGHOUT TODAY’S PRESENTATION, YOU CAN PROVIDE THEM
IN A NUMBER OF WAYS. YOU CAN EITHER POST THEM
ON TWITTER, USING EITHER #SBIRCHAT OR DIRECT-MESSAGING US THROUGH OUR OFFICE ACCOUNT
@NHLBI(underscore)SBIR OR YOU CAN SEND THEM TO US
BY E-MAIL, AND OUR E-MAIL ACCOUNT IS NHLBI(underscore)
[email protected] WE WILL BE CHECKING ALL THESE
FORMS OF MEDIA PERIODICALLY AND STOPPING THROUGHOUT
DR. PRAKASH’S PRESENTATION IN ORDER TO ADDRESS
THE QUESTIONS AS THEY COME UP. NOW IT’S MY PLEASURE
TO INTRODUCE OUR SPEAKER. DR. PRAKASH JOINED THE OFFICE OF TRANSLATIONAL ALLIANCES
AND COORDINATION ABOUT ONE YEAR AGO
WITH THE PURPOSE OF HELPING US TO ADVISE OUR INSTITUTE’S
BIOMEDICAL INNOVATORS AND TO DEVELOP
SOME EDUCATIONAL CONTENT RELATED TO INTELLECTUAL-PROPERTY
DEFINITION AND PROTECTION. HIS EXPERIENCE INCLUDES
GREATER THAN 15 YEARS WORKING AS A PATENT LAWYER,
ADVISING CLIENTS AND FILING CLAIMS, AND AS AN EXAMINER AT THE U.S. PATENT
AND TRADEMARK OFFICE. HE RECEIVED A PhD FROM THE UNIVERSITY
OF MARYLAND, COLLEGE PARK, AND HIS J.D. FROM
GEORGE WASHINGTON UNIVERSITY. TODAY, HE WILL BE PROVIDING US
WITH AN OVERVIEW OF THE VARIOUS INTELLECTUAL-PROPERTY
PROTECTION STRATEGIES THAT SMALL BUSINESSES MIGHT EMPLOY AND MIGHT INCLUDE
IN THEIR COMMERCIALIZATION PLANS AS THEY ARE APPLYING FOR
N.I.H. FUNDING IN THIS SPACE. AT THIS POINT, I WOULD LIKE
TO WELCOME DR. PRAKASH AND HAND THE SCREEN OVER TO HIM. WELCOME, GAUTAM. Prakash: GREAT.
THANKS, CHRIS. THANKS FOR
THAT WONDERFUL INTRODUCTION. BEFORE I START, I WOULD LIKE TO, UNFORTUNATELY, AFTER READING THIS PUBLIC
SERVICE ANNOUNCEMENT, THAT WE’D LIKE TO TELL YOU
THAT THIS PRESENTATION IS MEANT FOR BACKGROUND
EDUCATIONAL MATERIAL ONLY AND IS NOT MEANT
TO PROVIDE LEGAL ADVICE OR SERVE AS A SUBSTITUTE
FOR SPECIFIC LEGAL SOLUTIONS TO YOUR PARTICULAR
INTELLECTUAL-PROPERTY SITUATION. WELL, NOW
THAT THAT’S OUT OF THE WAY… OKAY. OKAY. HERE’S SOME ITEMS
I’D LIKE TO COVER TODAY. I FIRST WOULD LIKE
TO INTRODUCE YOU TO THE FOUR MAJOR TYPES
OF INTELLECTUAL-PROPERTY RIGHTS THAT YOU’RE LIKELY TO USE, WHICH ARE PATENTS, TRADEMARKS,
TRADE SECRET, AND COPYRIGHT. AND ONCE THAT’S OVER, WE’LL QUICKLY LOOK
AT AN INTRODUCTION OF THE PATENT AND TRADEMARK
EXAMINATION PROCESS AND THE COPYRIGHT-REGISTRATION
PROCESS, AND WE’LL DISCUSS
PORTFOLIO INTEGRATION. MOST OF US KNOW THIS ALREADY, BUT IT’S WORTH EMPHASIZING
THAT I.P. RIGHTS PROTECT INVENTIVE
AND CREATIVE IDEAS. AND AS WE’VE JUST LEARNED, THERE ARE
FOUR BASIC I.P. RIGHTS. I LIST IT HERE AGAIN — PATENTS, TRADE SECRETS,
TRADEMARKS, AND COPYRIGHT. I’M GOING TO USE THIS CONTINUOUS
POSITIVE AIRWAY PRESSURE MASK, OR CPAP MASK, WHICH IS USEFUL
FOR TREATING SLEEP APNEA, TO SHOW YOU HOW
ASPECTS OF THIS DEVICE CAN BE PROTECTED USING
UTILITY PATENTS, DESIGN PATENTS, TRADEMARKS. AND JUST AS AN ASIDE, THE RESEARCH INTO, AND
TREATMENT OF, SLEEP DISORDERS IS ONE OF THE MISSIONS OF THE NATIONAL HEART,
LUNG, AND BLOOD INSTITUTE. AND BEFORE WE GO INTO SPECIFICS,
IT’S AT LEAST WORTH TAKING A MOMENT
TO SEE WHAT A PATENT IS. I’M SURE MOST OF YOU KNOW, BUT HERE’S THE DEFINITION. IT’S RATHER LARGE
AND OVERLY COMPLICATED, BUT WHAT YOU REALLY
NEED TO KNOW — THAT A U.S. PATENT
EXCLUDES OTHERS FROM MAKING, USING,
OFFERING FOR SALE, SELLING, OR IMPORTING THE DEVICE
COVERED BY INVENTION — BY PATENT — I’M SORRY — COVERED BY A PATENT
FOR A LIMITED TIME. SO IT’S IMPORTANT TO NOTE
THAT IT’S A NEGATIVE RIGHT, SO IT EXCLUDES — IT DOESN’T ALLOW
YOU TO DO ANYTHING. IT ALLOWS YOU TO PREVENT OTHERS FROM DOING OR COVERING,
IMPORTING, USING, AND SO ON,
WHAT YOU HAVE PATENTED. OKAY? THERE’S UTILITY PATENTS. THIS IS THE MOST COMMON ONE — PATENT —
THAT YOU MAY HAVE HEARD OF. SO LOOKING AT OUR CPAP DEVICE
AND UTILITY PATENTS, AS THE NAME SUGGESTS, A UTILITY PATENT IS GRANTED FOR NEW AND USEFUL
PRODUCTS AND PROCESSES. HERE WE SEE AN EXAMPLE OF ONE OF THE UTILITY PATENTS
THAT PROTECTS CPAP MASKS, AND THE UTILITY PATENT PROTECTS THE SPECIFIC ELEMENTS
OF THE MASK AND THE MANNER
IN WHICH IT WORKS. MOST OF YOU HAVE HEARD
OF PATENT CLAIMS, WHICH ARE THE MOST IMPORTANT
PART OF THE UTILITY PATENT, BECAUSE THE CLAIMS DELINEATE
THE SCOPE OF THE PROTECTION THAT YOU’RE SEEKING
THROUGH THE PATENT, AND IN PARTICULAR, CLAIMS COVER
WHAT IS PROTECTED AND WHAT ISN’T PROTECTED
BY THE PATENT. THE SECOND MOST RELEVANT
U.S. PATENT IS A DESIGN PATENT, WHICH IS ALSO CALLED
AN INDUSTRIAL DESIGN IN EUROPE AND SOME OTHER AREAS,
SOME OTHER COUNTRIES. AND UNLIKE A UTILITY PATENT, A DESIGN PATENT COVERS
THE WAY AN OBJECT LOOKS. SO HERE WE CAN SEE
A DESIGN PATENT FOR ONE FEATURE
OF THE CPAP MASK — NAMELY, THE ORNAMENTAL FEATURES
OF THE FACEMASK ASSEMBLY. I’VE ALSO SEEN DESIGN PATENTS
ON ORNAMENTAL FEATURES FOR THE FOREHEAD PADS
OF THE CPAP MASK, BREATHING-TUBE CONNECTOR,
THE OVERALL FRAME. SO YOU COULD GET DESIGN PATENTS ON A LOT OF DIFFERENT
ORNAMENTAL FEATURES. A DESIGN PATENT
ONLY EVER HAS ONE CLAIM, AND THAT SIMPLY SAYS THE
ORNAMENTAL DESIGN OF THE DEVICE, AS SHOWN HERE — IN THIS CASE,
IT’S A FACEMASK ASSEMBLY. AND IF YOU LOOK
AT THE ACTUAL FACEMASK THAT’S BEEN MANUFACTURED, YOU CAN SEE HOW CLOSELY
IT MATCHES THE DRAWING ON THE DESIGN PATENT, WHICH IS REALLY WHAT YOU WANT, THAT YOU WANT
THE MANUFACTURED DEVICE TO COVER THE SAME FEATURES AS DESCRIBED IN AND PROTECTED BY
THE CORRESPONDING DESIGN PATENT. OKAY, SO, AT THIS POINT,
SOME OF YOU MAY BE THINKING, “WELL, IF I CAN GET
PATENT PROTECTION FOR BOTH THE WAY MY DEVICE —
MY INVENTION OPERATES AND THE WAY IT LOOKS, THEN WHY ISN’T THIS HANGOUT
OVER NOW?” WELL, ONE ANSWER IS THAT OBTAINING
PATENT PROTECTION REQUIRES DISCLOSING
YOUR INVENTION TO THE PUBLIC, AND IN CERTAIN CASES, YOU MAY NOT WANT TO DISCLOSE
WHAT YOUR INVENTION IS. SO, ARE YOU OUT OF LUCK
IN THAT SITUATION? THE ANSWER’S NO. TRADE-SECRET PROTECTION IS
REALLY WHAT YOU’RE LOOKING FOR IN THOSE TYPES OF INVENTIONS. SO, TRADE-SECRET PROTECTION
SPECIFICALLY IS EXCELLENT FOR INVENTIONS THAT
CANNOT BE REVERSE-ENGINEERED, THE MOST FAMOUS EXAMPLE OF WHICH
IS THE FORMULA OF COCA-COLA, WHICH MAY BE THE WORLD’S MOST
CLOSELY GUARDED TRADE SECRET. TRADE-SECRET PROTECTION IS FAR MORE THAN
JUST RECIPES AND FORMULA. IT CAN ALSO PROTECT
MANUFACTURING PROCESSES AND IN THIS INCREASINGLY
ELECTRONIC WORLD CAN BE USED TO PROTECT SOFTWARE. SO, MOST OF YOU, I THINK, KNOW
THAT PATENT PROTECTION IS FINITE AND AT SOME POINT,
THE PATENT WILL EXPIRE, BUT NOT SO FOR
TRADE-SECRET PROTECTION, AND THAT ACTUALLY
LASTS INDEFINITELY. OF COURSE, YOU WILL NEED
TO PROTECT THE SECRET. NOW, COCA-COLA’S TRADE SECRET
HAS LASTED FOR OVER 125 YEARS, AND, YOU KNOW, TRADE-SECRET
PROTECTION CAN CLEARLY BE A ROBUST FORM OF PROTECTION
OF YOUR INVENTION. OKAY, SO,
HAVING COVERED TRADE SECRETS, LET’S MOVE ON TO SOMETHING
THAT SOUNDS SIMILAR, BUT IS ACTUALLY VERY
DIFFERENT — TRADEMARKS. HERE AGAIN
IS A FAIRLY LONGISH EXPLANATION OF WHAT A TRADEMARK IS, BUT AT ITS CORE, A TRADEMARK
IS A WORD OR SYMBOL THAT INDICATES THE SOURCE
OF A GOOD, OR PERHAPS SERVICES,
IF YOU ARE PROVIDING A SERVICE. SO, JUST THINK. IF YOU SEE THE SWOOSH
ON ANY ITEM — SHOES, JACKETS, BAGS, HATS,
NO MATTER WHAT — WE KNOW AUTOMATICALLY
WHAT THE SOURCE IS, WHICH IS NIKE. SO THAT’S WHAT A TRADEMARK IS. IT INDICATES THE SOURCE
OF THE GOODS. SO, OUR CPAP EXAMPLE
IS ALSO PROTECTED BY TRADEMARKS. HERE’S ONE. SIMPLUS IS SHOWN AT THIS LISTING FROM THE PATENT AND TRADEMARK
OFFICE REGISTRY. AND ON THE TRADEMARK LISTING, YOU CAN SEE THAT SIMPLUS — YOU CAN DETERMINE WHETHER A TRADEMARK IS A WORD,
SYMBOL, OR COMBINATION, IN WHICH CASE
IT IS A WORDMARK — THE WORD SIMPLUS — HOW IT’S WRITTEN, AND WHAT CLASS OF GOODS
IT IS FOR. IN THIS CASE,
THE WORDMARK “SIMPLUS” IS A TRADEMARK FOR A CLASS THAT COVERS MEDICAL APPARATUS
AND INSTRUMENTS, WHICH IS
WHAT A BREATHING MASK IS. THERE’S ANOTHER ONE — ROLLFIT. THERE’S ANOTHER ONE — ERGOFORM. SO THE CPAP DEVICE ALSO
HAS TRADEMARKS PROTECTING IT. TRADE DRESS. SOME OF YOU MAY HAVE HEARD
THIS TERM, AND IT REALLY IS A FORM
OF TRADEMARK AT ITS SIMPLEST. AND THE WAY
TO ILLUSTRATE IT IS JUST IMAGINE YOU’RE DRIVING
THROUGH A BLINDING SNOWSTORM AND YOU SAW THIS BUILDING
IN FRONT OF YOU. IF YOU SAW NOTHING ELSE — NO OTHER SIGNS,
NO IDENTIFICATION — WOULD YOU KNOW
WHERE YOU WERE GOING? AND I SUSPECT, FOR MOST OF YOU,
THE ANSWER WOULD BE YES. AND HOW WOULD YOU KNOW THAT? WELL, FROM
ITS DISTINCTIVE, RED ROOF — ANGLED, RED ROOF —
THE SHAPE OF THE BUILDING. SO, REALLY, TRADE DRESS WOULD HAVE BEEN CONSIDERED
AS A VISUAL TRADEMARK, AS OPPOSED TO A WORD
OR A SYMBOL, LIKE SIMPLUS. AND IT COVERS THE LOOK
AND FEEL OF A PRODUCT, AND BACK TO THE DEFINITION
OF A TRADEMARK, INDICATES THE SOURCE
OF THE GOODS. SO HERE, WOULD CONSUMERS KNOW WHAT THE SOURCE OF THE PRODUCT
IS, IN THIS CASE? SURE, AND THEY WOULD SAY, “YES,
I KNOW I’M GOING TO McDONALD’S.” SO THAT’S A VERY STRONG
TRADE DRESS FOR McDONALD’S. AND, AS I SAID,
IT’S A PRODUCT TRADEMARK, SO YOU MAY BE ABLE
TO REGISTER IT AS A TRADEMARK OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE. FINALLY, OUR LAST MAJOR I.P.
PROTECTION IS COPYRIGHT, WHICH PROTECTS TANGIBLY
EXPRESSED WORKS OF AUTHORSHIP. AND I THINK SOME OF YOU ARTISTS
MAY BE SURPRISED TO THINK OF
ASPECTS OF THE CPAP DEVICE CAN BE PROTECTED BY COPYRIGHT, BUT AS YOU CAN SEE, HERE, COPYRIGHT HAS BEEN USED
TO PROTECT THE CONTENTS OF THE MASK’S
INSTRUCTION SHEET, RIGHT? SO, TANGIBLY EXPRESSED
WORK OF ART, IF YOU WANT TO CALL IT THAT,
AUTHORSHIP. AND YOU CAN ALSO USE COPYRIGHT
ON OTHER THINGS — WITH WEBSITES AND,
ONCE AGAIN, SOFTWARE. OKAY, SO, WE’RE A QUARTER
OF THE WAY THROUGH. WE’VE GONE OVER
SOME INTRODUCTION OF THE FOUR MAJOR FORMS OF INTELLECTUAL-PROPERTY
PROTECTION, LOOKED BRIEFLY AT PATENTS,
TRADE SECRET, TRADEMARK, AND TRADE DRESS
COPYRIGHT. AT THIS POINT, BEFORE I MOVE ON
TO THE NEXT SECTION, OF COURSE I’M GONNA
TURN IT OVER TO CHRIS AND SEE IF WE’VE RECEIVED
ANY QUESTIONS. Sasiela: THANK YOU VERY MUCH. SO, AS YOU’LL NOTE,
I’VE STILL GOT UP THE SLIDE THAT WILL TELL YOU
HOW TO SUBMIT QUESTIONS. I KNOW THAT WE HAVE
QUITE AN ACTIVE AUDIENCE OUT THERE RIGHT NOW. AND, SO, WE’VE ACTUALLY
ALREADY RECEIVED ONE QUESTION, GAUTAM, AND THAT IS, “WHO POLICES
PATENT INFRINGEMENT?” Prakash: SO,
THE PATENT INFRINGEMENT IS POLICED BY THE PATENTEE, AND SO THE PATENT OWNER, WHICH COMES AS A SURPRISE
TO SOME PEOPLE, BECAUSE THEY THINK THAT THE UNITED STATES PATENT
AND TRADEMARK OFFICE IS THE POLICER OF A PATENT, BUT THAT IS NOT TRUE. UNFORTUNATELY,
THE PATENT AND TRADEMARK OFFICE DOES NOT HAVE ANYTHING TO DO WITH ENFORCEMENT OF
OR POLICING YOUR PATENTS. SO YOU, AS PATENT OWNER,
ARE RESPONSIBLE FOR THAT. Sasiela: OKAY, WELL,
THANK YOU VERY MUCH. THAT’S THE ONLY QUESTION
THAT WE’VE RECEIVED THUS FAR, SO BACK TO YOU. Prakash:
OH, GREAT. THANK YOU. LET’S…MOVE ON. OKAY, GREAT QUESTIONS. SO, OKAY, PATENTS.
WE’VE ALL HEARD ABOUT PATENTS. WE HAVE HEARD
ABOUT PEOPLE SAYING THEY NEED TO OBTAIN PATENTS. “AND, AT THE END OF THE DAY,
WHY DO I REALLY CARE? WHY DO I NEED PATENTS?
WHY SHOULD I GET THEM? WHY DOES EVERYBODY
MAKE A BIG DEAL ABOUT THEM?” AND HERE
IS A VERY SIMPLE EXPLANATION AS TO WHY, IN THE BIOMEDICAL
AND OTHER AREAS OF INVENTION, THAT YOU WOULD LIKE
TO GET A PATENT. YOU DON’T HAVE TO, BUT WE OFTEN THINK OF A PATENT
AS THE BEST OPPORTUNITY FOR AN INVENTOR
TO BENEFIT FROM THE INVENTION. ONCE AGAIN, THEY DO THAT
BY EXCLUDING OTHERS FROM MAKING, SELLING,
OR USING IT. SO IT’S A NEGATIVE RIGHT,
ONCE AGAIN. SO, HOW DOES ONE GET
A PATENT — A U.S. PATENT? AT LEAST IN THE UNITED STATES,
THE FIRST THING YOU DO IS YOU NEED TO FILE
A PATENT APPLICATION AT THE UNITED STATES
PATENT AND TRADEMARK OFFICE. NEXT, THE U.S. PATENT
AND TRADEMARK OFFICE, OR USPTO, WILL EXAMINE THE APPLICATION, AND YOU HAVE INPUT
INTO THIS PROCESS — YOU AS THE APPLICANT. SO IT’S IMPORTANT THAT —
I DO LIKE TO EMPHASIZE THAT THE PTO IS A PARTNER IN THE PATENT-EXAMINATION
PROCESS WITH YOU. AND PLEASE DO NOT THINK OF IT
AS AN ADVERSARY. WE BOTH HAVE THE SAME GOAL — THE PATENT OFFICE
AND THE APPLICANT — WHICH IS THAT BOTH ENTITIES
WANT TO ENSURE THAT THERE ARE VALID
AND ENFORCEABLE PATENTS AT THE END OF THE PROCESS, SO YOU DO HAVE INPUT
INTO THE EXAMINATION PROCESS. OKAY?
DURING THE PROCESS, THE APPLICATION
IS FOUND PATENTABLE. IN FACT, IT ISSUES YOU
A NOTICE OF ALLOWANCE. YOU, THEN, PAY THE ISSUE
AND PUBLICATION FEES, AND THEN THE UNITED STATES
PATENT OFFICE GRANTS YOU THE PATENT. IF THE CLAIMS
OF YOUR PATENT APPLICATION ARE NOT DEEMED TO BE PATENTABLE
DURING THE EXAMINATION PROCESS, YOU CAN EITHER ABANDON
YOUR PATENT APPLICATION OR APPEAL THE DECISION
OF THE PATENT EXAMINER NOT TO GRANT YOUR CLAIMS, FIRST TO THE PATENT TRIAL
AND APPEAL BOARD, AND YOU COULD CONCEIVABLY
GO ALL THE WAY UP TO THE UNITED STATES
SUPREME COURT. THERE’S A QUESTION
I OFTEN GET ASKED — ARE ALL INVENTIONS PATENTABLE? AND HERE’S THE SIMPLEST ANSWER
YOU’LL EVER GET IN THIS HANGOUT. THE ANSWER IS NO. IN ORDER TO BE PATENTABLE,
AN INVENTION HAS TO BE NEW, AND WHAT I’M GOING OVER
RIGHT NOW ARE THE CRITERIA
FOR PATENTABILITY. SO, ONE IS NEW, OR NOVELTY. SOME YOU MAY HAVE HEARD
THAT TERM. UTILITY, RIGHT? SO THE UTILITY PATENT — IT MUST BE USEFUL. IT SHOULD SERVE
A USEFUL PURPOSE. IT MUST WORK. SO YOU CAN’T PATENT SOMETHING
THAT CURRENTLY DOESN’T WORK, LIKE A PERPETUAL-MOTION MACHINE. AND IT SHOULD BE NOT OBVIOUS,
OR NONOBVIOUS. AND THE STANDARD
OF NON-OBVIOUSNESS IS, WOULD IT BE NONOBVIOUS TO A PERSON WITH ORDINARY SKILL
IN THAT AREA. ORDINARY SKILL IN THE ART —
YOU MAY HAVE HEARD THIS TERM. IT’S IMPORTANT TO REMEMBER
THAT ABSTRACT IDEAS AND MERE DISCOVERIES
ARE NEVER PATENTABLE. THAT’S SOMETHING
THAT THE SUPREME COURT HAS REITERATED
IN SEVERAL RECENT CASES. AND SPEAKING OF
THE SUPREME COURT, THE LAW IS EVER-CHANGING. SO IT’S IMPORTANT TO REALIZE THAT THE SCOPE OF PATENTABILITY
DOES CHANGE. OKAY, SO, WE LOOKED
AT HOW TO OBTAIN A PATENT. HOW DOES ONE GET
TRADE-SECRET PROTECTION? JUST AS A REMINDER,
TRADE SECRETS PROTECT CONFIDENTIAL INFORMATION
THAT’S BETTER NOT DISCLOSED. SO, AND, ALSO, IN PARTICULAR,
INVENTIONS THAT ARE DIFFICULT
TO REVERSE-ENGINEER. SO THAT YOU WOULDN’T WANT
TO DISCLOSE IN THE FIRST PLACE, SO, NOT SURPRISINGLY, NO REGISTRATION
OR RECORDATION IS REQUIRED. AND NOT SURPRISINGLY, AGAIN, THE LESS PEOPLE
THAT KNOW AND HAVE ACCESS TO THIS CONFIDENTIAL
INFORMATION, THE BETTER. SO YOU DON’T HAVE
TO REGISTER IT. YOU DON’T HAVE TO RECORD IT. BUT WHAT TRADE-SECRET PROTECTION
DOES REQUIRE IS THAT YOU USE REASONABLE EFFORTS
TO PROTECT THE COMPETITIVE, CONFIDENTIAL
INFORMATION. AND, UNFORTUNATELY, THERE AREN’T ANY
HARD-AND-FAST RULES AS TO WHAT CONSTITUTES
REASONABLE EFFORT. IT DOES DEPEND ON THE NATURE
OF THE INVENTION, AND THERE ARE COURT CASES
THAT PROVIDE SOME GUIDANCE ON WHAT REASONABLE EFFORTS ARE. CERTAINLY,
SOME OF THESE WOULD INCLUDE HOW MANY PEOPLE HAVE ACCESS
TO THE INFORMATION, WHAT SAFEGUARDS ARE IN PLACE
TO PROTECT THE INFORMATION, AND SO ON. FOR EXAMPLE, I’VE READ
THAT THE FORMULA FOR COCA-COLA IS ONLY KNOWN TO TWO PEOPLE, WHO NEVER TRAVEL
AT THE SAME TIME. THE ORIGINAL IS
IN THE BANK VAULT SOMEWHERE, AND THERE ARE NO COPIES
THAT HAVE EVER BEEN MADE. SO, AS A RESULT, I THINK THAT ANYBODY
WOULD FIND THAT COCA-COLA HAS EFFECTED
PRETTY STRONG CONTROLS OVER THEIR TRADE SECRET. AND THAT HAS BEEN FOUND
IN SITUATIONS WHERE THE FORMULA OF COCA-COLA
HAS SUPPOSEDLY LEAKED — IN ONE CASE, I THINK,
TO PEPSI — PEPSI HAS SAID,
“WE’LL JUST SEND IT BACK, BECAUSE WE KNOW
THAT WE CAN NEVER USE IT.” SO THEY ARE
VERY STRONG CONTROLS. NOW, ONE RISK OF KEEPING
SOMETHING PURELY A TRADE SECRET AND HAVING NEVER
BEEN DISCLOSED OF IT OR PATENTED IT IS THAT A THIRD PARTY
COULD COME ALONG AND RE-CREATE IT
AND DISCLOSE IT OR PATENT IT. THIS IS CERTAINLY A POSSIBILITY, BUT CONSIDER, COCA-COLA
HAS KEPT ITS TRADE SECRET FOR OVER 125 YEARS AND HAS BUILT A
MULTI-BILLION-DOLLAR BUSINESS ON THAT TRADE SECRET. SO, AND THIS IS — IT’S NOT LIKE THERE AREN’T
OTHER COLAS ON THE MARKET. A LOT OF COMPETITION. WE JUST MENTIONED ONE — PEPSI. BUT STILL, THEY MANAGE
TO MAINTAIN THEIR COMPANY BASED ON THIS TRADE SECRET. SO, UNDER THE RIGHT
CIRCUMSTANCES, TRADE-SECRET PROTECTION
CAN BE VERY ROBUST. SO SOMETHING FOR ALL INNOVATORS
TO CONSIDER. SO, IF I CAN DISCLOSE
MY INVENTION, THEY’RE PROTECTED BY PATENTS. OR NOT DISCLOSE IT, THEY’RE
PROTECTED BY TRADE SECRET, WHY DO I NEED TO USE
AND REGISTER A TRADEMARK? LET’S START WITH USE FIRST. USING A TRADEMARK ALLOWS CONSUMERS
TO EASILY FIND YOUR PRODUCT AND DISTINGUISH YOUR PRODUCT
FROM YOUR COMPETITOR’S PRODUCT. AND YOU CAN USE THE T.M. SYMBOL
UPON ACTUAL USE OF A TRADEMARK. SO IF YOU HAVE A PRODUCT THAT YOU’RE SELLING
THAT HAS YOUR MARK ON IT, THEN YOU COULD INDICATE IT
WITH THE T.M. SYMBOL. SO, AT THIS POINT,
YOU’RE WONDERING, “WELL, OKAY, I CAN GET TRADEMARK RIGHTS FOR MERELY USING MY TRADEMARK
ON PRODUCTS THAT I SELL. WHY DO I NEED TO GO
THROUGH THE HASSLE AND THE COST OF ACTUALLY
REGISTERING MY TRADEMARKS AT THE UNITED STATES PATENT
AND TRADEMARK OFFICE?” WELL, YOU DO HAVE BENEFITS
OF REGISTRATION, FOR ONE. THE UNITED STATES PATENT
AND TRADEMARK OFFICE TRADEMARK REGISTER
PROVIDES NOTICE TO THE WORLD THAT YOU HAVE RIGHTS
IN A PARTICULAR TRADEMARK. REGISTERING A TRADEMARK
ALSO GIVES YOU RIGHTS PRIOR TO ACTUAL USE. AND I’M GONNA CONTRAST THAT
WITH THE FACT THAT YOU CAN ONLY GET
TRADEMARK RIGHTS UPON ACTUAL USE
OF YOUR TRADEMARK ON A PRODUCT. SO IF YOU REGISTER
YOUR TRADEMARK, YOU CAN ACTUALLY GET SOME RIGHTS PRIOR TO ACTUALLY
USING YOUR TRADEMARK. SO, YOU HAVE
AN UNREGISTERED TRADEMARK, THAT MEANS YOU GET ACTUAL USE — TRADEMARK RIGHTS FOR ACTUAL USE
OF A REGISTERED TRADEMARK, WHERE YOU CAN GET RIGHTS
PRIOR TO ACTUAL USE. YOU CAN ONLY USE THE ® SYMBOL WHEN YOUR TRADEMARK
IS REGISTERED, AND THIS LONG AND COMPLICATED
THING — THE BULLET POINT AT THE END —
ESSENTIALLY SAYS THAT IF YOU’VE REGISTERED
YOUR TRADEMARK FOR FIVE YEARS, IT IS MUCH MORE DIFFICULT FOR SOMEBODY ELSE TO COME IN
AND CANCEL YOUR TRADEMARK. THAT’S YET ANOTHER BENEFIT
FOR REGISTERING A TRADEMARK AT THE PATENT
AND TRADEMARK OFFICE. OKAY, SO, WE’VE SEEN
HOW WE CAN GET A U.S. PATENT. LET’S LOOK AT HOW WE CAN OBTAIN
A U.S. TRADEMARK. SO, HOPEFULLY, BY NOW,
I’VE CONVINCED YOU THAT A U.S. TRADEMARK
IS WORTH GETTING. SO, HOW DO WE DO THAT? THE FIRST THING WE DO IS WE HAVE TO PICK A MARK
FOR A SPECIFIC GOOD OR SERVICE. THEN, WE WILL FILE A TRADEMARK
APPLICATION AT THE USPTO. A TRADEMARK EXAMINER WILL
EXAMINE YOUR PROPOSED TRADEMARK, AND, AGAIN, YOU HAVE INPUT IN THE TRADEMARK-EXAMINATION
PROCESS. THERE’S A SLIGHT DIFFERENCE
ON A PATENTS. IF IT’S FOUND TRADEMARKABLE
DURING AN EXAMINATION, THE TRADEMARK OFFICE
WILL NOT IMMEDIATELY GRANT IT. THEY FIRST PUBLISH IT FOR
OPPOSITION OF THIRD PARTIES. AND THE GOAL HERE IS TO SEE IF ANYBODY ELSE
WISHES TO OPPOSE YOUR MARK. IF IT’S UNOPPOSED, THEN THE TRADEMARK OFFICE
WILL ISSUE YOU A TRADEMARK-REGISTRATION
CERTIFICATE. AND THE OPPOSITION PERIOD IS 30 DAYS FROM THE PUBLICATION
OF THE TRADEMARK. SO, IF THAT PASSES,
NOBODY’S OPPOSED YOUR MARK, OFF YOU GO. IF, ON THE OTHER HAND,
YOUR CHOSEN MARK IS NOT FOUND TRADEMARKABLE
DURING THE EXAMINATION, OR SOMEBODY HAS STEPPED IN — A THIRD PARTY HAS STEPPED IN —
TO OPPOSE YOUR TRADEMARK, THEN YOU CAN EITHER ABANDON
THE APPLICATION THAT’S YOUR MARK OR APPEAL, AND IN THIS CASE,
YOU WOULD INITIALLY APPEAL TO THE TRADEMARK TRIAL
AND APPEAL BOARD, WHICH IS THE COUNTERPART TO THE PATENT
TRIAL AND APPEAL BOARD. AND EVENTUALLY,
I GUESS YOU COULD GO ALL THE WAY UP
TO THE SUPREME COURT. FINALLY,
THERE’S A COPYRIGHT. IN MANY WAYS, THIS IS THE SIMPLEST FORM
OF I.P. RIGHT PROTECTION. AND IT’S IMPORTANT TO NOTE
THAT THE CREATOR OF ANY WORK AUTOMATICALLY GETS
COPYRIGHT TO THE WORK AS SOON AS IT’S TRANSCRIBED
ONTO A TANGIBLE MEDIUM. SO, THIS PRESENTATION, BECAUSE I’VE TRANSCRIBED IT
ONTO THE COMPUTER HARD DRIVE, OR A DISK,
IS AUTOMATICALLY COPYRIGHTED, SO YOU DON’T HAVE TO DO
ANYTHING MORE. THAT’S IT. BUT I STILL WOULD RECOMMEND
THAT YOU REGISTER YOUR COPYRIGHT AT THE UNITED STATES
COPYRIGHT OFFICE. JUST LIKE TRADEMARKS,
YOU DON’T HAVE TO, BUT YOU REALLY
SHOULD CONSIDER IT, BECAUSE REGISTRATION
GIVES YOU SEVERAL BENEFITS, AND HERE ARE SOME OF THEM. ONCE AGAIN, LIKE TRADEMARKS, IT’S A PUBLIC RECORD
OF YOUR RIGHT. YOU’RE ELIGIBLE
FOR STATUTORY DAMAGES, AND THERE’S EVIDENCE
OF COPYRIGHT REGISTRATION IF YOU DO IT RIGHT. NOW, ONCE AGAIN, WE’VE TALKED
ABOUT SOFTWARE IN THE CONTEXT OF PATENT PROTECTION
AND TRADE-SECRET PROTECTION. YOU CAN ALSO COPYRIGHT SOFTWARE, AND A LOT OF SOFTWARE
IS COPYRIGHTED. OKAY, SO, HOW DOES ONE OBTAIN
COPYRIGHT REGISTRATION? WELL, THE FIRST THING YOU DO IS THAT YOU FILL OUT
AN APPLICATION, AND YOU DEPOSIT
A COPY OF YOUR WORK AT THE UNITED STATES
COPYRIGHT OFFICE. THE WEBSITE
IS VERY STRAIGHTFORWARD. THERE’S A REVIEW OF YOUR WORK
FOR COPYRIGHTABILITY AT THE U.S. COPYRIGHT OFFICE, AND IF IT’S COPYRIGHTABLE, YOU GET A COPYRIGHT REGISTRATION
CERTIFICATE. IF IT’S NOT, YOU CAN EITHER ABANDON
YOUR REGISTRATION OR APPEAL THE DECISION. OKAY, SO, WE’VE LOOKED
AT A BRIEF OVERVIEW OF THE VARIOUS WAYS
IN WHICH YOU CAN REGISTER YOUR PATENTS, TRADEMARKS,
AND COPYRIGHTS AND THE EXAMINATION PROCESS
FOR THE PATENTS AND TRADEMARKS. AND BEFORE WE MOVE ON
TO THE NEXT TOPIC, WHICH IS BUILDING PORTFOLIOS, ONCE AGAIN, I’LL PAUSE
AND SEND IT OVER TO CHRIS AND SEE IF WE HAVE ANY QUESTIONS THAT HAVE COME IN
SINCE OUR LAST BREAK. Sasiela: EXCELLENT.
THANK YOU, GAUTAM. SO, AGAIN,
I WANT TO REMIND PEOPLE THAT YOU CAN SEND US
YOUR QUESTIONS BY E-MAIL AT NHLBI(underscore)
[email protected] OR YOU CAN SIMPLY TWEET THEM OUT
USING #SBIRCHAT OR DIRECT-MESSAGE US
@NHLBI(underscore)SBIR. THAT BEING SAID, WE DO HAVE A COUPLE
OF QUESTIONS THAT HAVE COME IN, AND ONE OF THE QUESTIONS
THAT’S COME IN IS, “HOW CAN I USE TRADE SECRETS
TO PROTECT MY PRODUCT IF I HAVE TO DISCLOSE
THE COMPOSITION OF THE PRODUCT TO REGULATORY AGENCIES
AND END USERS?” Prakash: OKAY, THAT’S
A GOOD QUESTION, ACTUALLY. AND IT’S OFTEN BEEN ASKED. SO, YES, IT IS TRUE THAT IF YOU HAVE TO DISCLOSE THE ACTUAL COMPOSITION
TO THE FDA, THEN YOU CANNOT PROTECT
THAT ASPECT OF IT BY TRADE SECRET. BUT YOU COULD PROTECT
THE MANUFACTURING PROCESS, THE FORMULATION, FILLING PROCESS, I SUPPOSE, OF YOUR INVENTION. SO IT IS TRUE
THAT ONCE YOU DISCLOSE IT, YOU CANNOT PROTECT IT
AS A TRADE SECRET. BUT THERE ARE OTHER ASPECTS
OF THE INVENTION THAT YOU MAY WELL BE ABLE
TO PROTECT THROUGH TRADE SECRET, JUST NOT THE FORMULATION
IN THIS PARTICULAR INSTANCE. Sasiela: OKAY. AND, THEN, ANOTHER QUESTION
THAT HAS COME IN IS, “HOW LONG DOES IT TAKE TO
GET THROUGH THE PATENT PROCESS?” Prakash: OKAY.
ANOTHER GREAT QUESTION, ONE THAT’S OFTEN ASKED,
ALONG WITH COST. AND, SADLY,
THE ANSWER VARIES, BUT, IN GENERAL, I WOULD SAY THAT FOR THE AVERAGE
PATENT APPLICATION, YOU CAN EXPECT
BETWEEN TWO TO FIVE YEARS, SO — AFTER FILING. THEY FILE IT. IT GETS PUBLISHED
AFTER 18 MONTHS. IT DOESN’T REALLY
HIT AN EXAMINER’S DESK UNTIL BETWEEN 18 MONTHS
AND 2 YEARS, AND THEN
BETWEEN 2 AND 5 YEARS, YOU’RE GOING THROUGH
THE APPLICATION PROCESS, THE BACK-AND-FORTH
THAT WE TALKED ABOUT, WHICH YOU HAVE INPUT
IN THE PROCESS UNTIL YOU FINALLY GET
THE PATENT ISSUED… OR ABANDON,
AS THE CASE MAY BE. Sasiela: AND
A FOLLOW-ON QUESTION FROM THE SAME
AUDIENCE MEMBER IS, “DO I NEED TO HIRE A LAWYER
TO DO ALL THE WORK?” Prakash: YOU DON’T, BUT WE STRONGLY
RECOMMEND YOU DO. THE PROBLEM IS
THAT THE PROCESS IS COMPLICATED, AND THERE’S A LOT OF JARGON — LEGAL JARGON,
TECHNICAL JARGON — SO YOU, AS THE APPLICANT
OR AS THE INVENTOR, ARE NOT REQUIRED
TO USE AN ATTORNEY TO PROSECUTE
YOUR PATENT APPLICATION AND DEAL WITH
THE PATENT OFFICE. AND IN FACT, YOU DO SEE
INVENTORS THAT ACT PRO SE, AS WE CALL THEM —
BY THEMSELVES — AND CAN BE QUITE SUCCESSFUL. BUT IF YOUR INVENTION
IS COMPLICATED, AND TO UNDERSTAND
WHAT THE PATENT OFFICE IS SAYING WHEN YOU GET COMMUNICATION
FROM THEM, IT IS VERY HELPFUL
TO HAVE SOMEBODY TO HELP YOU DECIPHER THAT AND UNDERSTAND
WHAT IT IS THEY’RE ASKING FOR AND WHAT YOU
NEED TO PROVIDE. SO, AGAIN, I’D LIKE
TO USE THIS OPPORTUNITY TO RE-EMPHASIZE
THAT THE PATENT OFFICE IS NOT YOUR ENEMY HERE
AND DOES WANT TO HELP YOU GET A VALID, ENFORCEABLE PATENT
OUT OF THE PROCESS. Sasiela: OKAY,
AND WE HAVE ONE MORE QUESTION THAT’S CURRENTLY PENDING BEFORE WE RETURN TO THE
REGULARLY SCHEDULED PROGRAMMING. AND THAT QUESTION IS,
“AS AN SBIR AWARDEE, WHAT RIGHTS DOES THE N.I.H. HAVE
TO MY INTELLECTUAL PROPERTY?” Prakash: OKAY, WELL, SO,
I’LL GO OVER THAT VERY BRIEFLY, BUT, ESSENTIALLY, THE N.I.H. HAS WHAT CAN BEST BE DESCRIBED
AS MARCH-IN RIGHTS, THAT THEY DO HAVE
THE ABILITY TO — YOU CAN THINK OF IT
AS THEY HAVE A PAID-UP LICENSE, SO THEY HAVE A LICENSE
TO YOUR INVENTION THAT THEY CAN USE, IF NEED BE. BUT THE N.I.H.
HAS NEVER EXERCISED THIS RIGHT. I KNOW A LOT OF PEOPLE
ARE REALLY CONCERNED THAT THE GOVERNMENT IS GONNA
MARCH IN AND TAKE THE INVENTION AND MARKET IT THEMSELVES
AND SELL THE PRODUCT. AND AS FAR AS I KNOW, NO GOVERNMENT AGENCY
HAS EVER DONE THAT. IT’S JUST THAT IF THE MONEY —
IF N.I.H. MONEY HAS BEEN USED TO FUND THE DEVELOPMENT
OF AN INVENTION THAT HAS BEEN PATENTED, THEN THE N.I.H. HAS THE RIGHT
TO LICENSE THAT INVENTION WITHOUT ANY FURTHER COST TO IT, BECAUSE THEY’VE
ALREADY PAID FOR IT. AND REALLY, AS I SAID,
IT’S BEEN NEVER USED, AND THE ONLY REASON THAT ONE COULD POSSIBLY THINK
OF THE GOVERNMENT MARCHING IN AND TAKING OVER YOUR INVENTION IS THERE’S SOME KIND
OF CATASTROPHIC NATIONAL-SECURITY ISSUE
OR NATIONAL-HEALTH ISSUE AND THAT SOMEHOW
THE GOVERNMENT BELIEVES THAT YOU, AS THE PATENTEE,
ARE NOT ABLE TO OR UNWILLING TO LICENSE
YOUR INVENTION THAT’S KILLING
ALL OUR PEOPLE. I MEAN, A PRETTY OBSCURE
SET OF CIRCUMSTANCES WHERE IT COULD HAPPEN, BUT JUST TO PROTECT ITSELF, IT DOES HAVE
THE RIGHT TO DO THAT. BUT, AS I SAID,
AS FAR AS I KNOW, NO AGENCY HAS EVER MARCHED IN, GRABBED A PATENTEE’S INVENTION,
AND LICENSED IT AND THEREFORE COMPETED
WITH THE PATENTOR. Sasiela: OKAY, WELL, WONDERFUL.
THANK YOU. WE DON’T HAVE ANY MORE QUESTIONS
AT THIS POINT, THOUGH I DO WANT
TO REMIND OUR AUDIENCE THAT YOU CAN SEND US QUESTIONS
EITHER BY E-MAIL OR OVER TWITTER DURING
DR. PRAKASH’S CONTINUED TALK. THANK YOU. Prakash: GREAT.
THANK YOU, CHRIS. OKAY. THESE ARE EXCELLENT QUESTIONS.
THANK YOU FOR THEM. AND THANK YOU
FOR ACTIVELY PARTICIPATING. THE PRESENTATION IS
ALWAYS MADE MORE ROBUST WHEN WE HAVE
AUDIENCE PARTICIPATION. SO, BEFORE WE FILE AND
BUILD PORTFOLIOS OF PATENTS — AND I THINK MANY OF YOU
WHO HAVE SPOKEN TO INVESTORS, INVESTORS MIGHT ASK, “WHAT IS
YOUR PORTFOLIO OF PATENTS?” IT’S IMPORTANT TO REALIZE THAT BEFORE
YOU CAN GET ANY PATENTS AND FILE PATENT APPLICATIONS, YOU SHOULD MAKE SURE THAT YOU
DO NOT DISCLOSE YOUR INVENTION. SO, IN OTHER WORDS, PUBLIC DISCLOSURE IS BAD
BECAUSE IT’S ALMOST ALWAYS A BAR TO OBTAINING
PATENT PROTECTION. SO, HERE’S SOME EXAMPLES
OF PUBLIC DISCLOSURE THAT MOST OF YOU
PROBABLY HAVE THOUGHT OF. PUBLICATIONS, OBVIOUSLY —
IF YOU HAVE A SCIENTIFIC PUBLICATION
THAT YOU PUT OUT BEFORE YOU FILED
YOUR PATENT APPLICATION, THAT’S A PUBLIC DISCLOSURE. IF YOU’RE SPOKEN
AT A CONFERENCE — AND REMEMBER, THIS INCLUDES
THE ABSTRACTS AND THE POSTERS YOU’VE PRESENTED — SO, THOSE WOULD ALSO COUNT
AS PUBLIC DISCLOSURES. AND, NOT SURPRISINGLY,
ANYTHING YOU POST ON THE WEB IS PUBLIC DISCLOSURE. SOME OF YOU MAY HAVE HEARD
THIS TERM — A PROVISIONAL
PATENT APPLICATION. WHAT IS IT? WELL, IT IS A RELATIVELY
QUICK AND INEXPENSIVE WAY TO FILE FOR PATENT PROTECTION
BEFORE PUBLIC DISCLOSURE. IT’S IMPORTANT TO NOTE THAT
A PROVISIONAL-PATENT APPLICATION IS NEVER PUBLISHED
AND IT’S NEVER EXAMINED. SO, THAT’S IMPORTANT,
BECAUSE I’VE HEARD — AND, ACTUALLY,
I’VE SEEN WRITTEN — OFTENTIMES, PEOPLE
WOULD SAY SOMETHING LIKE, “WELL, I HAVE
A PROVISIONAL PATENT.” WHAT THEY REALLY MEAN IS THAT “I HAVE FILED A
PROVISIONAL PATENT APPLICATION.” SO, A PROVISIONAL
PATENT APPLICATION WILL NEVER ISSUE
AS IT IS AS A PATENT, AND THERE’S NO SUCH THING
AS A PROVISIONAL PATENT. SO, WHILE PROVISIONAL
PATENT APPLICATIONS ARE RELATIVELY QUICK
AND CHEAP TO FILE, THERE ARE SEVERAL THINGS THAT YOU REALLY DO NEED
TO CONSIDER. THE FIRST THING
IS THAT YOU ONLY HAVE A YEAR, ONCE YOU FILE THE PROVISIONAL
PATENT APPLICATION, TO TAKE SOME FURTHER ACTION. AND YOU WANT TO DO THAT
BECAUSE ONLY THEN WILL YOU RETAIN THE PRIORITY
OF YOUR FILING. AND IT’S ALSO IMPORTANT TO NOTE
THAT YOU NEED TO PUT ENOUGH IN YOUR PROVISIONAL
PATENT APPLICATION TO SUPPORT ANY
LATER-FILED OR NON-PROVISIONAL UTILITY-PATENT APPLICATIONS OR INTERNATIONAL
PATENT APPLICATIONS. SO, WHILE IT MIGHT BE QUICK, IT MAY NOT END UP
BEING THAT QUICK AND CHEAP, BECAUSE REALLY, THE BEST ADVICE
THAT I CAN GIVE YOU IS THAT YOU SHOULD CONSIDER DRAFTING A PROVISIONAL
PATENT APPLICATION WITH THE SAME EFFORT
THAT YOU HAVE PUT INTO A NON-PROVISIONAL
PATENT APPLICATION. SO YOU SHOULD
TRY AND INCLUDE FIGURES, YOU SHOULD
TRY AND INCLUDE CLAIMS, AND YOU SHOULD NOT MERELY TAKE
YOUR CONFERENCE ABSTRACT OR PRESENTATION SLIDES,
PUT A COVER SHEET ON IT, CALL IT
A PROVISIONAL APPLICATION, AND FILE IT AT THE UNITED STATES
PATENT AND TRADEMARK OFFICE. YOU CAN DO THAT, AND I’VE SEEN A LOT OF
PROVISIONAL PATENT APPLICATIONS THAT LOOK LIKE THAT. BUT THE REALITY IS THAT THAT COULD GET YOU
INTO A FALSE SENSE OF SECURITY, BECAUSE YOU DON’T END UP HAVING PROTECTION
BACK TO THAT DATE, BECAUSE YOU HAVEN’T DESCRIBED
YOUR INVENTION VERY WELL. SO, I MENTIONED THAT
A PROVISIONAL PATENT APPLICATION EXPIRES THE YEAR
AFTER IT’S FILED. I MEAN, WHAT CAN YOU DO
IN THAT YEAR? WELL, THE FIRST THING IS YOU DON’T HAVE TO WAIT
TILL THE YEAR IS UP. YOU COULD DO
WHAT WE’RE GOING TO DESCRIBE IN THE COURSE OF THAT YEAR,
ANYTIME. SO, IF YOU CONSIDER STEP ZERO AS THE STEP OF HAVING FILED
A PROVISIONAL PATENT APPLICATION AT THE PATENT OFFICE, OBVIOUSLY, YOU COULD DO NOTHING
AND TAKE NO ACTION. AND IN THAT CASE, THE
PROVISIONAL PATENT APPLICATION AUTOMATICALLY GETS ABANDONED WITHIN A YEAR
AFTER IT’S BEEN FILED. AND I WANT TO RE-EMPHASIZE THAT A PROVISIONAL
PATENT APPLICATION IS NEVER PUBLISHED
AND IT’S NEVER EXAMINED. SO IF YOU WANT THE PROVISIONAL
PATENT APPLICATION EXAMINED, ONE OPTION IS
THAT YOU CAN FILE A NON-PROVISIONAL PATENT
APPLICATION AT THE PTO THAT CLAIMS PRIORITY BACK TO THE PREVIOUSLY FILED
PROVISIONAL PATENT APPLICATION. NOW WE JUST THEN TALK
ABOUT HOW THESE APPLICATIONS — NON-PROVISIONAL
PATENT APPLICATIONS — ARE EXAMINED
AND THAT YOU HAVE — BY THE PATENT OFFICE, AND
YOU HAVE INPUT IN THAT PROCESS. AND WE’VE SEEN THE REST
OF THE STORY BEFORE. IF THE CLAIMS IN THE NON-PROVISIONAL
PATENT APPLICATION ARE FOUND PATENTABLE
DURING AN EXAMINATION, THE PATENT OFFICE WILL
EVENTUALLY GRANT THE PATENT. AND IF THEY’RE NOT, THE CLAIMS
ARE NOT FOUND PATENTABLE, THEN THE APPLICANT CAN EITHER ABANDON
THE APPLICATION OR APPEAL. SO, THERE ARE TWO OPTIONS
AT THIS POINT. YOU DO NOTHING, THE PROVISIONAL
PATENT APPLICATION GOES ABANDONED AUTOMATICALLY. YOU CAN FILE A NON-PROVISIONAL
PATENT APPLICATION, WHICH GETS EXAMINED
AND EITHER EVENTUALLY ISSUED OR GETS ABANDONED. AND THEN THE LAST OPTION
IS THAT YOU COULD FILE ONE OR MORE INTERNATIONAL PATENT
APPLICATIONS THAT CLAIM PRIORITY BACK TO THE PROVISIONAL
PATENT APPLICATION. SO, NOW THAT WE
KNOW HOW TO FILE, AND HOW TO FILE,
WHAT TO FILE, WHEN TO FILE, WE CAN CONSIDER
PROTECTING ASPECTS OTHER THAN THE CORE INVENTION. AND THIS IS WHAT WE
CALL A PATENT PORTFOLIO. AND IT IS MULTIPLE PATENTS. IT COULD BE UTILITY AND DESIGN
AND OTHERS, THINGS CALLED BROAD PATENTS, ON DIFFERENT ASPECTS
OF THE INVENTION. AND HERE ARE SOME OF THEM — OTHER COMMERCIALLY EXPLOITABLE
FEATURES, POTENTIAL NEW USES. OF COURSE, PATENTS
IN OTHER COUNTRIES ARE AN IMPORTANT PART
OF A ROBUST PATENT PORTFOLIO IN THIS INCREASINGLY
INTERNATIONAL WORLD, SO YOU WOULD WANT TO CONSIDER FILING FOR PATENT PROTECTION
INTERNATIONALLY. AND YOU CAN DO THAT IN TWO WAYS. THE FIRST WAY
IS YOU CAN DIRECTLY FILE A PATENT APPLICATION
IN VERY SPECIFIC COUNTRIES, THAT YOU KNOW THAT YOU
WANT TO FILE IN, WITHIN A YEAR OF YOUR FIRST
U.S. PATENT FILING. SO IF YOU FILED A PROVISIONAL
FIRST, WITHIN THAT YEAR, IF YOU’VE GONE
STRAIGHT TO THE NON-PROVISIONAL, THEN WITHIN A YEAR OF FILING,
IT WOULD BE NON-PROVISIONAL, AND THEN YOU WOULD PROSECUTE
THOSE PATENTS IN THOSE SPECIFIC COUNTRIES. AND SOME OF YOU MAY HAVE HEARD
OF SOMETHING CALLED A PCT, OR THE PATENT COOPERATION
TREATY. AND THIS IS AN INTERNATIONAL
PATENT APPLICATION. YOU CAN FILE ONE OR MORE
OF THOSE, AGAIN, WITHIN THE FIRST YEAR
OF YOUR FIRST FILING — WITHIN A YEAR
OF YOUR FIRST FILING. SO, ONCE AGAIN, IF YOUR FIRST
FILINGS ARE PROVISIONAL, YOU FILE
AN INTERNATIONAL APPLICATION, A PCT APPLICATION,
WITHIN A YEAR OF THAT. IF YOUR FIRST FILING
IS A NON-PROVISIONAL, THEN YOU FILE
WITHIN A YEAR OF THAT. AND, THEN, THAT INTERNATIONAL
APPLICATION IS — YOU CAN THINK OF IT
SOMEWHAT AS A PROVISIONAL. IT’S NOT PROVISIONAL.
IT’S NEVER ISSUED. IT GETS PUBLISHED, AND YOU THEN USE THAT TO ENTER
VERY SPECIFIC COUNTRIES AND OBTAIN
COUNTRY-SPECIFIC PATENTS IN THOSE COUNTRIES. NOW, WHY WOULD YOU
WANT TO DO THAT — FILE A PCT,
VERSUS GOING DIRECTLY TO THOSE COUNTRIES
THAT YOU’RE INTERESTED IN? WELL, IN THE BEGINNING,
YOU MAY NOT KNOW WHAT COUNTRIES
YOU’RE INTERESTED IN, AND THE PCT GIVES YOU
ADDITIONAL TIME, AND IT ALLOWS YOU TO DEFER COSTS OF FILING
IN THOSE SPECIFIC COUNTRIES. SO IF YOU FILE
A PROVISIONAL APPLICATION, FILE AN APPLICATION
WITHIN A YEAR, YOU MAY NOT BE READY. YOU MAY NOT KNOW WHAT COUNTRIES
YOU’RE IN AND HAVE THE MONEY, SO A PCT APPLICATION IS A GOOD WAY TO GO
TO DEFER COSTS AND DECIDE WHERE YOU WANT — WHAT COUNTRIES THAT
YOU’RE REALLY INTERESTED IN. OKAY, SO, TALKED A LOT ABOUT GETTING
INTERNATIONAL PATENT PROTECTION. WELL,
WHY WOULD I WANT TO DO THAT? I KNOW AND I HAVE HEARD QUESTIONS
OF PEOPLE SAYING, “WELL, YOU KNOW, I DON’T EVER
SEE MYSELF EXPORTING. I’M A SMALL COMPANY.
WHY DO I NEED ALL THIS STUFF?” WELL, HERE ARE SOME REASONS. YOU COULD END UP
EXPORTING TO OTHER COUNTRIES, SO THAT’S ONE THING
THAT YOU WANT TO LOOK AT IS WHERE YOU SEE YOURSELF
EXPORTING TO THOSE COUNTRIES, OR MAYBE YOU’RE INTERESTED
IN MAKING PRODUCTS — PIECES OF YOUR PRODUCTS
OR THE WHOLE PRODUCT — IN THOSE COUNTRIES, WHERE YOU SEE
YOUR MARKET GROWING AND WHERE YOU SEE COMPETITION. OTHER COUNTRIES
HAVE DIFFERENT PATENT TYPES WITH DIFFERENT STANDARDS
OF PATENTABILITY, SO WE HAVE CHEAPER PATENTS —
GERMANY BEING A GOOD EXAMPLE — AND WHAT COUNTRIES
THE PATENTS ARE ENFORCEABLE IN. AND FRANKLY, IF ONE
OF YOUR GOALS IS EXIT BY ACQUISITION BY
A LARGER COMPANY OR A PARTNER, COMMERCIAL PARTNER, THEY WILL WANT TO FILE
AND BE ABLE TO FILE IN OTHER COUNTRIES, BECAUSE THEY HAVE BUSINESSES
IN THOSE COUNTRIES. SO COMING TO THEM
WITH MERELY A U.S. PATENT IS NOT A VERY GOOD SELLING POINT
FOR YOU. SO AT LEAST HAVING AN INTERNATIONAL PATENT
APPLICATION FILED GIVES AN ACQUIRER THE OPTION OF FILING AND OBTAINING
PATENTS IN MULTIPLE COUNTRIES. IT’S IMPORTANT TO NOTE
THAT A STRICT TIMELINE — WE’VE TALKED
ABOUT THE ONE-YEAR TIMELINE FOR OBTAINING — FOR FILING AN
INTERNATIONAL PATENT APPLICATION AND EVEN ENTERING COUNTRIES. SO YOU OUGHT TO BE AWARE
OF THOSE. THEY DEFER,
AND IT WOULD TAKE TOO LONG FOR ME TO EXPLAIN WHICH ONES
AND WHAT COUNTRIES. BUT IT’S IMPORTANT TO NOTE
THAT THERE ARE STRICT TIMELINES. AND WHILE IT’S
CONSIDERED DIFFICULT TO OBTAIN PATENT PROTECTION
IN THE U.S. WHEN YOU’VE PUBLICLY DISCLOSED
PRIOR TO FILING, INTERNATIONAL LAW,
IT’S ALMOST IMPOSSIBLE. SO YOU’RE OUT OF LUCK
FOR THE MOST PART IF YOU HAVE DISCLOSED ANYWHERE
BEFORE FILING YOUR APPLICATION. SO IT’S IMPORTANT TO REMEMBER
THAT PATENTS ARE TERRITORIAL. AND THIS QUESTION
I HAVE BEEN ASKED, WHERE THE QUESTION GOES
SOMETHING LIKE THIS — “WELL, YOU KNOW, I HAVE
JUST A U.S. PATENT. I THINK THAT SOMEBODY IS INFRINGING MY U.S. PATENT
IN CHINA. CAN I DO SOMETHING ABOUT THAT?”
THE ANSWER IS NO. IF YOU ONLY HAVE A U.S. PATENT, THERE’S NOTHING
YOU CAN DO ABOUT IT. WHAT YOU NEED TO ENFORCE
YOUR RIGHTS IN CHINA ARE THE CORRESPONDING
CHINESE PATENT. TALKING ABOUT INFRINGEMENT,
IN THE U.S., AT LEAST, INFRINGEMENT OCCURS,
AS WE DISCUSSED, WHERE AN UNAUTHORIZED PARTY HAS MADE, SOLD, OFFERED TO SELL, OR IMPORTED THE INVENTION
INTO THE U.S. OTHER COUNTRIES
HAVE DIFFERENT CRITERIA. I JUST WANTED TO REMIND YOU
OF THOSE AGAIN. AND I WON’T GO OVER
WHAT THOSE ARE. AND YOU CAN STAY OUT OF TROUBLE, OR AT LEAST ATTEMPT
TO STAY OUT OF TROUBLE BY GETTING PRIOR-ART SEARCHES,
FREEDOM TO OPERATE, PATENTABILITY
AND NON-INFRINGEMENT OPINIONS. SO… THOSE ARE THE ONES THAT YOU
CAN GET FROM PATENT ATTORNEYS AND OTHER
PROFESSIONAL PATENT SEARCHES. LET’S TALK ABOUT SOME TRADEMARK
PORTFOLIO CONSIDERATIONS. THEY’RE SOMEWHAT SIMILAR. YOU WANT TO REGISTER
YOUR TRADEMARKS IN COUNTRIES WHERE YOU’RE SELLING
OR PLAN TO SELL. I WANT TO JUST ALERT YOU TO SOMETHING
CALLED THE MADRID PROTOCOL, FOR WHICH YOU CAN OBTAIN INTERNATIONAL TRADEMARK
RIGHTS AND WHICH YOU CAN THINK OF
AS THE TRADEMARK EQUIVALENT OF THE PCT,
OR PATENT COOPERATION TREATY. ANOTHER CONSIDERATION IS TO
REGISTER TRADEMARKS IN COUNTRIES MERELY TO PREVENT OTHERS FROM REGISTERING THE SAME MARK
IN BAD FAITH. REMEMBER, A TRADEMARK
IS A SOURCE IDENTIFIER, AND YOU DON’T WANT CONSUMERS
THINKING THAT SHODDY OR COUNTERFEIT GOODS
COME FROM YOU. SO, SOME COMPANIES FILE — YOU’LL SEE LAYERS OF TRADEMARKS. SO SOME COMPANIES
WILL FILE A HOUSE MARK AS AN UMBRELLA
FOR SEVERAL PRODUCT MARKS. AN EXAMPLE I’M SURE ALL OF YOU
KNOW OF IS THE HOUSE MARK APPLE, WHICH IS PROBABLY ONE OF THE MOST VALUABLE TRADEMARKS
OUT THERE, AND DIVISIONAL PRODUCT MARKS
LIKE iPHONE, iTUNES, AND SO ON. IT’S INTERESTING,
I JUST READ THAT THE RECENTLY RELEASED
APPLE WATCH IS NOT CALLED THE iWATCH,
BECAUSE APPARENTLY, ANOTHER COMPANY HAS
OBTAINED THAT TRADEMARK — HAS ALREADY OBTAINED
THAT TRADEMARK. SO APPLE IS CALLING IT
THE APPLE WATCH, SO IT’S IMPORTANT
TO HAVE MAYBE THOUGHT ABOUT THAT BEFORE THEY — WHILE THEY
WERE DEVELOPING THE PRODUCT. AND UNLIKE PATENT INFRINGEMENT, TRADEMARK INFRINGEMENT
OCCURS WHEN THERE’S CONFUSION AS TO WHERE THE GOODS
OR SERVICES CAME FROM. AND ONCE AGAIN,
GOING BACK TO THE TRADEMARK SOURCE
AS A SOURCE IDENTIFIER. SO, TO RECAP, WE’VE LOOKED
AT THE SLEEP-APNEA DEVICE. WE LOOKED AT UTILITY PATENTS. WE DESCRIBED UTILITY PATENTS, HOW IT OPERATES
AND WHAT ITS COMPONENTS ARE. WE LOOKED AT THE DESIGN PATENT PROTECTING
HOW THE FACE-MASK ASSEMBLY, WHICH IS A PIECE OF THE MASK,
LOOKS. WE LOOKED AT SEVERAL TRADEMARKS
THEY’RE PROTECTED BY. ONE OF THEM IS SIMPLUS,
WHICH IS SHOWN THERE. AND WE ALSO LOOKED
AT COPYRIGHT PROTECTION FOR THE CPAP INSTRUCTION
BOOKLET. AND, THEN, WHILE NOT
SPECIFICALLY RELATED TO THE CPAP DEVICE,
WE EXAMINED TRADEMARKS — I’M SORRY —
TRADE SECRET AND TRADE DRESS. THE STABLE — JUST TO PROVIDE
YOU WITH A QUICK COMPARISON OF THE I.P.I.s
THAT WE WENT OVER, I’M NOT GONNA GO INTO
ANY GREAT DETAIL, BUT JUST TO NOTE
THAT EACH I.P. RIGHT HAS ITS PLUSES AND MINUSES. AND A GOOD STRATEGY IS
TO RECOGNIZE WHAT THE RIGHT IS,
WHAT THE RIGHT PROVIDES, WHAT IT BRINGS TO THE TABLE,
AND TO USE AN ECONOMY. AND REALLY, A VERY STRONG
INTELLECTUAL-PROPERTY STRATEGY IS TO USE DIFFERENT RIGHTS
FOR DIFFERENT THINGS. SO, SOME CONCLUDING THOUGHTS. I.P. RIGHTS ARE TERRITORIAL. WE MENTIONED THIS
A COUPLE OF TIMES. SO, THE MOST WELL-KNOWN ONE IS
[SPEAKING INDISTINCTLY] PATENTS. TALKED ABOUT TRADE SECRETS.
THEY COULD BE USEFUL. AND YOU HAVE TRADEMARK RIGHTS
THAT WE TALKED ABOUT, ALSO. AND, YOU KNOW,
YOU CAN THINK OF THEM, IN ADDITION
TO SOURCE IDENTIFIER, ALSO REPRESENTING
THE TRADEMARK OWNER’S GOODWILL AND REPUTATION
FOR QUALITY AND RELIABILITY. SO WE TALKED ABOUT NOT WANTING
SHODDY OR COUNTERFEIT GOODS TO BE ASSOCIATED WITH YOU. AND THE COPYRIGHT, I JUST WANT TO TELL YOU
THAT THERE IS SOMETHING CALLED THE BERNE CONVENTION,
WHICH YOU CAN THINK OF AS THE INTERNATIONAL COPYRIGHT
COUNTERPART TO THE PCT FOR PATENTS AND THE MADRID PROTOCOL
FOR TRADEMARKS. SO YOU CAN GET INTERNATIONAL
COPYRIGHT PROTECTION, AS WELL. AND, AGAIN, FOR THE LAST TIME, YOU MUST HAVE RIGHTS
IN A COUNTRY TO BE ABLE TO ENFORCE
IN THAT COUNTRY. IN OTHER WORDS,
THERE’S NO SUCH THING AS AN INTERNATIONAL PATENT. THERE IS AN INTERNATIONAL
PATENT APPLICATION, BUT NO SUCH THING
AS AN INTERNATIONAL PATENT. THERE’S NO INTERNATIONAL
TRADEMARK EITHER, MEANING THERE’S NOTHING
THAT YOU CAN, JUST BY ONE TRADEMARK, ENFORCE
IN ALL VARIOUS COUNTRIES. YOU HAVE TO GET THEM
IN INDIVIDUAL COUNTRIES TO BE ABLE TO ENFORCE THEM
IN THOSE COUNTRIES. SO, FINALLY, HERE’S SOME, HOPEFULLY,
POTENTIALLY USEFUL RESOURCES. WE TALKED ABOUT SOME F.A.Q.s, OVERVIEW OF THE EXAMINATION
AND REGISTRATION PROCESSES. SOME GOOD TUTORIALS, ACTUALLY, FROM THE PATENT OFFICE
AND THE COPYRIGHT OFFICE, WHICH IS PART
OF THE LIBRARY OF CONGRESS, THE PTO AND COPYRIGHT
OFFICE ASSISTANCE CENTERS, AND SOME FORMS
THAT MIGHT BE HELPFUL TO YOU. THIS IS HOW YOU CONTACT US. OF COURSE, I ALREADY
MENTIONED A FEW OF THESE. AND FINALLY, CHRIS, I’LL TURN IT OVER TO YOU
FOR ANY CONCLUDING THOUGHTS, ANY QUESTIONS
THAT MAY HAVE COME IN, FOR THE TIME WE HAVE LEFT. Sasiela: EXCELLENT.
WELL, THANK YOU, GAUTAM. IT’S BEEN
A FABULOUS PRESENTATION. IT’S GENERATED QUITE A BIT
OF INTEREST FROM OUR AUDIENCE. SO, I’M JUST GONNA START
HITTING YOU WITH SOME QUESTIONS
THAT HAVE COME IN. ONE QUESTION IS, “CAN YOU SORT OF DISCUSS
HOW A PRINCIPAL INVESTIGATOR SHOULD OR SHOULD NOT SHARE
INTELLECTUAL PROPERTY WITH CO-INVESTIGATORS
ON A GRANT OR A PROJECT? WHO ACTUALLY MAKES
THESE DECISIONS? IS IT THE P.I.?
IS IT THE TECH-TRANSFER OFFICE, THESE SORTS OF — YOU KNOW,
WHO MAKES THOSE DECISIONS?” AND IN A SIMILAR VEIN, WE HAVE A QUESTION ABOUT SHARING
EXPERIMENTAL RESULTS DURING DEPARTMENT-WIDE
LAB MEETINGS, WHERE SEVERAL LABS MAY BE COMING
TOGETHER TO DISCUSS PROGRESS AND WHETHER THAT WOULD COUNT
AS PUBLIC DISCLOSURE. Prakash: SO, WITH RESPECT
TO YOUR FIRST QUESTION, IF YOU’RE A P.I.
AT A RESEARCH INSTITUTION, YOU REALLY SHOULD ALWAYS INVOLVE
THE TECHNOLOGY OFFICES. THEY’RE NOT THE ONES
MAKING THAT DECISION. THEY WILL FOLLOW THE RULES,
OR THE GUIDELINES, WITH RESPECT
TO PUBLIC DISCLOSURE. BUT IN THE CASE OF CO-P.I.s,
THEY’RE USUALLY CO-INVENTORS. SO THAT IS GENERALLY
NOT AN ISSUE. WITH RESPECT TO A LAB MEETING —
AN OPEN LAB MEETING — YEAH, IT’S CONCEIVABLE THAT THAT COULD BE CONSIDERED
A PUBLIC DISCLOSURE, DEPENDING ON WHO’S THERE
AND IF THE PEOPLE HAVE — IF THEY’RE CO-INVENTORS,
IT’S NOT A PROBLEM. AND ALSO IT DEPENDS
ON WHAT [SPEAKING INDISTINCTLY]. IF IT’S JUST PURELY, “LISTEN, THIS IS THE WAY
I RUN THIS ASSAY,” IT’S PROBABLY FINE. BUT, IN GENERAL, YOU KNOW,
IF YOU’VE GOT AN INVENTION THAT YOU ACTUALLY THINK IS
COMMERCIALIZABLE OR PATENTABLE, IT’S ALWAYS BETTER
TO ERR ON THE SAFE SIDE, TO HAVE NONDISCLOSURE AGREEMENTS IF YOU REALLY
NEED TO GET THAT FAR. BUT INVOLVE
YOUR TECHNOLOGY OFFICE, INDICATE TO THEM WHAT IT IS
THAT YOU’RE DEVELOPING. THEY CAN HELP YOU EARLY ON,
ALONG THE WAY, AND SORT OF GIVE YOU A GOOD IDEA OF WHAT YOU SHOULD
AND SHOULDN’T BE DOING IN ORDER TO PROTECT YOUR RIGHTS
AS EFFECTIVELY AS POSSIBLE. Sasiela: OKAY, GREAT.
THANK YOU VERY MUCH. AND ANOTHER QUESTION
THAT’S COME IN, “DO I NEED TO FILE MY PATENT BEFORE I SUBMIT
MY SBIR APPLICATION?” AND IN A RELATED VEIN, “DOES MY SBIR APPLICATION COUNT
AS A PUBLIC DISCLOSURE?” Prakash: THE ANSWER TO BOTH
IS NO. SO YOU DO NOT HAVE
TO FILE YOUR PATENT APPLICATION BEFORE YOU
FILE YOUR SBIR APPLICATION. AN SBIR APPLICATION IS NOT
CONSIDERED A PUBLIC DISCLOSURE. HOWEVER, ONCE AGAIN,
ERRING ON THE SIDE OF CAUTION YOU EITHER WANT TO FILE
YOUR SBIR APPLICATION CONCURRENT WITH
YOUR PATENT APPLICATION OR, EVEN BETTER, MAYBE
FILE YOUR PATENT APPLICATION PRIOR TO FILING
YOUR SBIR APPLICATION. I KNOW PEOPLE WHO GET ALL READY
TO FILE THE PATENT APPLICATION THE DAY BEFORE, AND THEN THE NEXT DAY
IS THE DEADLINE TO FILE THE SBIR APPLICATION, AND THEY SUBMIT THAT
TO THE N.I.H. SO THAT WAY,
YOU’RE PROTECTED, BUT REALLY,
THE ANSWER IS NO TO BOTH, THAT IT’S NOT CONSIDERED
PUBLIC DISCLOSURE, AND YOU DON’T NEED TO,
BUT YOU PROBABLY SHOULD FILE YOUR PATENT APPLICATION BEFORE YOU FILE
YOUR SBIR APPLICATION. Sasiela: OKAY, GREAT.
THANK YOU VERY MUCH. ANOTHER QUESTION THAT’S COME IN
IS, “IF A PATENT HOLDER HAS NOT PAID
THEIR MAINTENANCE FEES, CAN I ASSUME THEIR I.P.?” Prakash: SO, I DON’T KNOW
ABOUT ASSUMING THEIR I.P., BUT THE PATENT OWNER
DOES HAVE A GRACE PERIOD TO FILE
THEIR MAINTENANCE FEES. SO FOR THOSE OF YOU
WHO MAY NOT BE AWARE, AT 3½, 7½, AND 11½ YEARS AFTER
THE ISSUANCE OF THE PATENT — OF YOUR PATENT — YOU NEED TO PAY
THE PATENT OFFICE FEES TO MAINTAIN THAT PATENT. SO, WHEN I SAID 3½, REALLY, THERE’S A TIME WINDOW
OF SIX MONTHS, I BELIEVE, DURING WHICH YOU
NEED TO PAY THAT FEE. SO THE FIRST THING IS
YOU NEED TO MAKE SURE THAT EVEN THOUGH
THE TIME HAS PASSED, THE WINDOW HASN’T CLOSED,
BECAUSE THE WINDOW IS AROUND THAT 3½-YEAR
TIME FRAME, OR 7½, 11½. AND THE SECOND THING IS, I HAVE SEEN SITUATIONS
WHERE YOU CAN GET — A PATENT OWNER
CAN PAY THE FEE LATER AND RECLAIM PATENT PROTECTION. BUT JUST ASSUME
THAT YEARS HAVE PASSED AND THE PATENT OWNER HAS NOT
PAID THE MAINTENANCE FEE, ANY ONE OF THEM. THEN THE PATENT
IS DEDICATED TO THE PUBLIC, AND IT’S PART OF THE PUBLIC,
AND YOU CAN USE IT. I’M NOT SURE YOU ACQUIRE IT,
BUT YOU COULD USE IT. IT’S NOW PART
OF THE PUBLIC DOMAIN. Sasiela: OKAY, WELL,
THANK YOU VERY MUCH. UNFORTUNATELY,
THAT’S ALL THE TIME THAT WE HAVE FOR QUESTIONS
TODAY, AND WE HAVE, I BELIEVE, COVERED ALL OF THE QUESTIONS
THAT HAVE COME IN. SO, AT THIS POINT,
WHAT I WOULD LIKE TO DO IS I WOULD LIKE TO, UM,
SEE MY SLIDE LOAD PROPERLY. [ BOTH LAUGH ] BUT AS THAT DOESN’T SEEM
TO BE HAPPENING, I’M GOING TO TRY STOPPING
AND RE-SHARING MY SCREEN BECAUSE WE HAVE
SOME VERY EXCITING THINGS GOING ON HERE IN OUR OFFICE, ONE OF WHICH IS
THAT WE’D LIKE TO GET YOUR FEEDBACK
ON TODAY’S PRESENTATION. SO, IF YOU’LL GIVE ME
JUST ONE MOMENT, I’M TRYING TO PULL UP
THIS PRESENTATION AGAIN. AND IT’S NOT GONNA WORK FOR ME. HOPEFULLY, IT WILL. NOPE. OKAY. ON THAT NOTE, THEN, THERE IS A FEEDBACK FORM WHERE WE WOULD APPRECIATE
HEARING FROM YOU, AND I AM GOING TO
LOOK THAT LINK UP AS I SPEAK, AND I’LL JUST TALK IT OUT LOUD. AND IT IS A bit.ly LINK, SO, IT IS https://bitly DOT — OR bit.ly — PARDON ME. bit.ly0415HangoutFeedback. SO, 0415HangoutFeedback, ALL ONE WORD,
WITH TWO CAPITALS IN THERE. AND [ COUGHS ] PARDON ME. IF YOU WOULD BE SO KIND
AS TO GO TO THAT LINK AND PROVIDE US
WITH SOME FEEDBACK ON TODAY’S PRESENTATION, AT THE END OF THAT FORM
THERE IS A PLACE WHERE YOU CAN SUBMIT
YOUR E-MAIL ADDRESS IF YOU’RE INTERESTED
IN RECEIVING THE PRESENTATION
OF DR. GAUTAM PRAKASH AND ALL OF
THAT LOVELY INFORMATION THAT HE JUST SHARED
ON HIS PowerPoint PRESENTATION, WE’LL BE HAPPY
TO GET THAT OUT TO YOU WITH A MINIMUM-TWO-DAY
TURNAROUND TIME. AND FINALLY, TO CLOSE OUT
OUR PRESENTATION TODAY, I WOULD LIKE TO REMIND EVERYONE
THAT OUR HANGOUTS ARE TURNING INTO
A BIT OF A MONTHLY EVENT. OUR NEXT EVENT WILL BE
“CONNECTING WITH YOUR CUSTOMER” AND WILL OCCUR ON THE 2nd,
I BELIEVE, TUESDAY IN MAY. YOU CAN SIGN UP
FOR OUR LISTSERV, WHICH IS IN DR. PRAKASH’S DECK, AND RECEIVE INFORMATION
AND UPDATE ABOUT THAT. AND THEN, IN JUNE, WE WILL HAVE ANOTHER INTELLECTUAL-PROPERTY
FOCUSED HANGOUT, “MAKING YOUR MARK:
UNDERSTANDING TRADEMARKS AND THEIR USE TO PROTECT
YOUR INTELLECTUAL PROPERTY.” AND THAT WILL AGAIN
BE PRESENTED BY DR. PRAKASH. THE NHLBI
SMALL-BUSINESS HANGOUT SERIES HAS BEEN DEVELOPED
AND IS EXECUTED THROUGH THE NHLBI OFFICE OF TRANSLATION ALLIANCES
AND COORDINATION. IF YOU ARE DEVELOPING
A BIOMEDICAL TECHNOLOGY THAT FALLS WITHIN
THE CARDIOVASCULAR, BLOOD, PULMONARY, OR SLEEP-DISORDER
AND DISEASE SPACE, PLEASE REACH OUT TO OUR OFFICE
FOR ANY ADDITIONAL QUESTIONS OR ASSISTANCE
THAT YOU MIGHT HAVE. IF YOU’RE DEVELOPING
A BIOMEDICAL TECHNOLOGY IN SOME OTHER AREA
OF N.I.H.’s SPACE, PLEASE REACH OUT TO THE N.I.H.,
OFFICE OF THE DIRECTOR, SBIR PROGRAM CONTACT
WHO IS APPROPRIATE, TO HELP REFER YOU
TO THE INSTITUTE OR CENTER THAT WOULD OVERSEE YOUR BIOMEDICAL TECHNOLOGY
DEVELOPMENT. AND WITH THAT,
WE THANK YOU SO MUCH FOR YOUR ATTENDANCE
AND PARTICIPATION IN TODAY’S HANGOUT. AND WE HOPE THAT YOU HAVE
ENJOYED TODAY’S EVENT. CHECK OUT OUR ARCHIVED EVENTS
ON THE NHLBI YouTube CHANNEL, AND TUNE IN AGAIN NEXT MONTH. THANKS SO MUCH. Prakash: THANK YOU.

Add a Comment

Your email address will not be published. Required fields are marked *