Inventions and IP: Patenting Your Ideas

Summary

 
 
 

Featured Guest: Dr. Andrew Berks – Patent Attorney

Andrew H. Berks builds and protects patent portfolios for his clients. He is a partner at Fresh IP PLC. Andrew specializes in all aspects of patent matters and IP transactional matters. Andrew’s practice includes:

  • Patent strategy and counseling, patent drafting, prosecution, and appeals

  • Patent opinions including patentability, freedom to operate, non-infringement and patent landscape reviews

  • Patent enforcement and litigation

  • License agreements and other IP-related contracts

  • Confidentiality (non-disclosure) agreements

  • Research and development agreements

Andrew’s prior experience includes work at several law firms and corporate environments, including Wyeth Corp., Merck & Co., and Ivax Pharmaceuticals. Andrew’s clients include Fortune 500 corporations, University technology transfer offices, established businesses, foreign companies, entrepreneurs, startups, and individuals. Andrew works in all technology areas, including chemistry, pharmaceuticals, biotechnology, medical devices, mechanical and engineering, and computers and software. Andrew is a graduate of Fordham Law School and has a Ph.D. in organic chemistry from the University of Colorado, Boulder.

 

Words of Wisdom:

·       A patent is a government grant giving an inventor the legal right to exclude others from practicing the claimed invention.

·       Why patents are important - Patents can provide market exclusivity over functional and utilitarian designs. Patents are an important disclosure medium – along with journal articles, science meetings etc

·       Why get a patent - To protect business interests and profit by excluding others from copying your invention. Patents are an asset, can be assigned, bought/sold, and licensed – exclusive, non-exclusive

·       What is patentable - The statute says: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. English translation: if you make something new and can hold it in your hand or put it in a bottle, its probably patentable, as well are the methods of making something.

·       What is not patentable - Courts say: laws of nature, natural phenomena, and abstract ideas. Translation: business methods, assessing financial risk, buying low and selling high (all “abstract ideas”)

·       Sequence of Events For Patenting:

1. File provisional patent application - Good for one year max, establishes priority date

2. File non-provisional patent application - can claim priority to one or more provisionals. International Patent Application can be submitted.

3. Patent publication 18 mos. after the priority date (first application filed).

4. Examination and grant in one or more countries.

·       Can you file a patent application yourself? – It is possible but DON’T DO IT because it is highly unlikely you will get an issued patent. If you do get an issued patent, its highly likely that you will leave important assets on the table

·       Instead, University faculty, staff, post-docs and students should work through the university tech transfer office

·       If you are working at an institution, and you use institution space, equipment, and funding, the institution owns your work. This includes federal or other external funding. This is true also in the corporate world. Postdocs, students, and staff should be discussing filing a patent application with their PI