Speaker 1  0:00  
Good afternoon, and welcome to today's webinar, patent prosecution strategies presented by Autumn. My name is Sandy Spiegel, autumns professional development manager and I will be your staff host for today. All lines have been muted to ensure high quality audio and today's session is being recorded. If you have a question for our panelists, we encourage you to use the q&a feature on your zoom toolbar, or use the raise hand function to ask your question out loud. If you have a technical question or comment, please feel free to use the chat. Should you need closed captioning during today's session, Zoom closed captioning feature is turned on and also available on your toolbar. Before we begin, I would like to give or take a moment and acknowledge and thank autumns online professional development sponsors Marshall Gerstein, IP, and the Michelson Institute for intellectual property. We appreciate your ongoing support and also the pleasure of introducing you to today's presenters. Elizabeth Healy is an inventor patent holder, registered US patent attorney, chemist and published author with extensive knowledge of the chemical and pharmaceutical industries and intellectual property law at Deakin as she manages the university's IP and develops innovation and entrepreneurship initiatives. Prior to her current position, she was a patent practitioner for 13 years. She has counseled clients on a wide range of intellectual property matters and patent law issues. Dr. Healy has also prepared and prosecuted 1000s of patent applications manage numerous patent portfolios, providing hundreds of opinions and assessments on patent infringement, validity, freedom to operate and patentability. She has also helped many intellectual property owners with due diligence issues, licensing strategies, and Technology Evaluation and supportive productive development acquisition, product development acquisition and launched. Kelly Charlotte is a registered patent agent with experience in domestic and foreign patent filings and prosecution efforts. After working in private law practice, Kelly returned to her alma alma mater to assist in IP protection for the Colorado State University system, including strategic prosecution efforts in IP education. She works closely with inventors to determine the prior art patentability, strategic filings and claim language and drafting to create high value IP for potential licensees. Kelly has earned degrees in chemical engineering and biomedical engineering. Welcome, Kelly and Elizabeth. We're both we're excited to learn from both of you today. And I will now pass it off to Elizabeth to start today's presentation.

Unknown Speaker  2:35  
Thank you, Sammy. I mean, get my screen

Speaker 2  2:55  
thank you for this wonderful introduction. So today, we're going to talk about patent prosecution strategies. And specifically, in regards to utility patents. So we're going to start from the beginning the filing of an application, we're going to talk about the prosecution, the examination process, and we're going to kind of keep our thoughts towards commercialization of that those innovations and inventions, that would be part of the patent application. So there are different types of patent application that can be filed. With the USPTO, the United States Patent and Trademark Office in America in the United States. One can file either a provisional application or non provisional application. And if interested in protecting an invention, abroad, PCT or it's also called an international application can be filed. And that application will not lead to becoming a pattern you will be examined. And then there'll be a search report issued, but it will not result in a patent as an applicant will have to file national stage in whichever country is of interest. And the another possibility is to file directly in whichever country is of interest with bye bye bye. bypassing the PCT application process. So let's go step by step and kind of taking a look at what these applications are. So first, the provisional application is quick and inexpensive way to get a priority date. And it doesn't require much to be filed. Just a specification and drawings if necessary, you don't even have to have claims on oath. The advantage of filing or submitting a provisional application with the USPTO is that you can state that it's patented watch whichever innovation is patent pending, it provides you proof for your date of conception, a priority date, this priority can be relied on for foreign findings. It's not published. So that's something that might be of interest in certain situation and gives you a little bit of time to develop the innovation the product response to try to figure out what to do with it gives you a year nonprovisional application can stand stand alone, you don't have to file a provisional application before it you the other side of it is you could file a provisional application and then convert it into a non provisional application within 1012 months, I have the two timelines here for funding research this like you have to pay attention to the timeline for that. And if the non provisional application is issued from the conversion of a provisional application and must be adequately supported by the disclosure or the priority date will not apply to whatever subject matter is not supported by the original provisional application. So non provisional application or just regular eyes full service application, they are examined by the an examiner at the patent office, they actually have certain things that are required, and they must include claims they have to have the matters inventory inventory post, and they provide the standard term when you the filing of the application, start the 20 year term for the patent. Um, the examination process like a quick overview, what does it entail? And what does it mean? When you file a non provisional application, the first step is the patent office will just take a look at it from from the outset, it will just look at the format if any fees are missing things like that. And they will look if all the required parts are present. So NPP 600 provides what the elements required to file a ticket by the patent applications. So you have to have a transmittal form a fee and application data sheet specification drawings, if necessary from for describing the invention, and the inventor or inventors oath or declaration from them. Now though, not all sports have to be submitted at the exact time of filing, you can file the oath a little bit later, there'll be an additional fee for that, but has to be filed at least before the the application is now. Now, when you look at the actual application file, the certain parts are required. And if those parts are not, presents are missing, the titles are not there, you might get an objection during the examination. So you have to have MPP governs the what parts should be in the application, it should be title, cross reference, if applicable. I just put a little asterisk for the statement regarding federally sponsored research or development. This applies to university innovation that are deriving from government funding. It has to be careful here I just wanted to mention and have a little example. Next slide about this. The names if that applies if it's a joint research. If there's any sequence listing, they should be a reference after that any prior disclosure should be mentioned. And then we come to the usual parts that you see in most patent patents and patent application a background of the invention a brief summary, a brief description of the drawings, that detailed description, a claim or claims and an abstract and if, if applicable, a sequence listing. Here is the little side note I just wanted to mention that because it's important you get reminders from IRS. And in particular, if that's not properly included, and it seems like some law firms still have don't include that sentence perfectly right. And it's really provided by the vital Act, the Federal regulation, the exact language for that government support clause, it shouldn't have any word like portions of or in part, because then you'll get, you'll have to change that you have to amend it. Continuing about these so decomposition, what happens is you we don't use your application, your patent application. When I'm talking about that I'm talking about non provisional patent application, it really takes about one to two years from the filing date to start being examined. But an examiner will pick it up about after that amount of time. And then the first thing we're going to look at is the format contents, there might be some objections to labelings and the drawings or missing parts or subtitles or things like that. And then any kind of application requirements, form of claims definiteness and invention requirements, they might issue some rejection for those application and invention requirements, we'll look at that more in detail. So an exam, you know, issues of its actions during prosecution or examination with the USPTO. The types of obstructions are really two types, non non final and final office actions. And then an applicant during prosecution submit responses, those responses can include arguments and or amendments to the claims. So during the process and examiner may Allah so claims are all of claims. And then an applicant can either argue back that the claim should be allowed, or they may just take the claims that are allowed, and then proceed with the patent. Or they can appeal, they can request to continue the examination and continue the prosecution to try to see if they can present some more arguments or amendments to obtain more claims. Another option to continue the application is to file continuing application so you can from that original provisional application, you can derive from it, keep that priority date and file a continuation or divisional divisionals are specifically when you have

Speaker 2  12:52  
when you have requirements to split to pick some claims. And then continuation in part, if you have some additional matter, and you want to keep that original party priority date for the original matter and add to it in a sap in a continuing application, you can do that. So those are the that's the main the main main lines for what's going on during the production from the application to the end. So I wanted to talk a little bit about timelines and how that can be these different strategies to play with the timeline for the application, when, generally when you think of filing a patent application, it takes about 234 years sometimes to become a patent. That's not necessarily always the outcome. If you use different strategies to accelerate the examination process, and it's possible to get a patent faster, it's also possible to get a patent later and lengthen the length of time for the application process. So the timeline can vary for application type. And I'll show some examples to see, to kind of visualize those timelines. So the baseline is for a full standard application non provisional application. So generally, like I said, it would take about three years to get an allowance in most cases, and everything depends. I mean, it's not like a standard for everything kind of data here. It's, you know, the most likely when you have a normal kind of innovation, it's not something really too complex, or it would depend on where it goes in the patent office. The different centers have different timelines. So in general, it takes about three years. So from the initial filing, you get, the application gets published about Out 18 months later, examination really doesn't start, you really don't get an office action until about 16 months. And then the back and forth between the examiner issuing objections or rejections in office actions takes time, the response, an applicant has usually between two and three months to respond. But extensions can take additional time up to six months. So all this back and forth can take several years, which is the reason why it takes that long. If you add the provisional application, and your non provisional application claiming benefits to this priority date of the provisional application, then you pretty much add one year to it, because it's like the provisional application. In order to be converted and properly claim priority, you have to do this within a year. Again, with the government funded requirements, you have to do this within 10 months. Publication still about 18 months after the original filing examination starts about, you know, 10 to 15 months after the non provisional application. And that depends I mean, certain Center are faster than others, it depends on the backlog from the examiner. And there's a way to check when the first office action can issue after you file an application lawyers that have access to the patent center system. Or even if you if it's published, you can anybody can access then you can see an estimate for how long it's going to take for an office action to issue. Okay, so when you have a PCT application, so you start with your priority application, it could be your whichever country you want to find application, it could start with your provisional application. So from there, you can file an international application or also called a PCT application within 10 or 12 months depending of its government funding or not. In that situation, it takes a little bit longer, depending on which national stage you're interested, if you're interested in, you know, what is going to be allowed in different countries, it might take more or less. But generally, after 18 months to get the PCT gets published, and you get an international search report, the applicant receives a written opinion, and an international preliminary report on patentability. And I'll talk about this a little bit later how that can help accelerate examination in certain situation. So you have this 30 month deadline for entering the national stage, if, if the applicant is interested in filing in different countries in the world, you can convert this PCT application in an application from that particular country or countries that are interested in. And they're all going to consider that original find the initial filing date from the priority application. That'll be your use date for all of those. Okay, how do you accelerate the allowance if you're interested in getting a patent faster? So you can there's different ways to get an exam mutation prioritized at the patent office in the US Patent Office. I'll talk about the different mechanisms for that. But that would accelerate or greatly the attention of a pattern you possibly could get a patent before the application has been published. In certain cases, it's guaranteed 12 months in other cases, close to that. So you know, between 12 and 18 months, you can get a patent. Now if you have a provisional application, it's this acceleration just takes that extra 12 months between the provisional filing and the non provisional filing this, you know, the conversion of that provisional. So, why would you want longer or shorter prosecution time? So, if you want to keep the application pending as long as possible, there's different reasons for that. So maybe you want to delay the expenses related to prosecution or the expenses related to the maintenance fees. You might want to have issues with the patentability, the law for as as applied to patentability of certain subject matters or in certain fields of law. So you might think there might be some changes in the law that are upcoming soon. So this is something that might be of consideration. Maybe the value is having the patent pending. Label. And that's what you're mostly interested in until you can get financing or funding to continue the innovation to kind of develop the invention in time. So that might be something that might want to kind of push an applicant towards longer prosecution times. Now, shorter prosecution time. If interested in getting a patent as fast as possible, there's several ways that can be done. The prioritization does the USPTO track one program, and there's a limited amount of how many requests can be made at the patent office to get this track one applied to you, this is a small fee for small engineers is 20 $2,100. And that's a guarantee 12 months, if it's if there's any response in terms of patentability, it'll happen within 12 months. So you'll get a patent if it's patentable, within one year. Another way to prioritize the prosecution time is to submit a petition to make the application special and the three requirements for that are the age so an inventor has to be 65 years old or older, you can request that if there's an illness from an inventor, so an inventor will not be able to participate in the production of the application, because if it takes too long, because they're ill, so you can get a shorter prosecution time for in that situation. And also, depending on the type of the invention, the patent office is trying to get certain types of innovation off the ground faster. So in terms of enhancing the quality of the environment, contributing to the development of conservation of energy resources, and cannot counterterrorism types of innovation, also get prioritized in the patent office, but just there's no fee for that just a request. Um, another way to have a shorter prosecution time is in terms of foreign patent application, if you have filed an international application, and then

Speaker 2  22:44  
the national stage, so the corresponding application in two different countries, let's say, the US and Europe, then let's say your first response for your application, it went faster in Europe and you got a patent granted, then from those claims that were allowed, you can request in the other country, that examination, we expedited another PPH Patent Prosecution Highway Program. So you would have to explain which claims have been allowed in first country, and then you would most likely get a patent allowed on the same claims with minimal examination. And finally, last way, that I'm aware of to accelerate, the prosecution time is a PCT PPH type of program. So you don't have to file the national stage in another country, but just an international application from the result from the international search report and written opinion that is issued to that international application. If it's favorable, if there's some claims that are found novel non obvious, and having industrial applicability, then you can send that to the US Patent Office and say, I request expedited prosecution in view of this result of the search and then they would accelerate examination with no fee. This is just a quick scheme of you know, what we do need to get a patent. So, there are several requirements, application requirements, written description, the invention should be, what dimension is should be provided, how to perform the invention should be also provided the best mood and example or something should also be provided. The claims should be proper, definite. And then international comments, those are the big requirements. It has to be used. smaller has to be a proper statutory subject matter, non abstract concept, abstract ideas, things like that has to be novel The invention, and it has to be non obvious. And if everything, fulfill those requirements, then theoretically you should get a patent. So, thinking, keeping all those things in mind, at the very outset of getting an invention disclosure from an inventor. So I work in a university, so I get invention disclosure from faculty members, and I like to ask different questions to try to capture the broadest possible invention that they have not just really keep keeping that not try to not keep it too narrow, which is easy to do. Because normally inventors, we have an embodiment of an invention, and it's hard to kind of look at it from outside the box. So I try to have some questions for them to try to, you know, capture the inventive concept, and try to have that in the patent to have the broadest pattern possible to have the best coverage possible. So I usually ask them to describe in their own words, the their invention, it's always better to get an idea from their own perspective. I asked them how the invention was originated, what problems are solved and how they're solved? It's always important to have this problem solution kind of link in understanding the innovation. What exactly is the innovation? Are those old or new problems? Is this something that's really solving an old issue? And in that case, I would ask them? Is this something that has already been solved? And how is that how different is your invention from the this old way to solve it? New problems or, you know, possibly something a little bit more innovative? In that, in that way? Are there any current solutions? And if so, is what is different in the invention. And then I always ask them always restate my understanding of what invention is, and that problem solution link, just to see if I, if I actually captured what they were trying to sense, they often get additional things from it. So I think it's really useful to kind of work to do that. Are there any possible alternatives? I try to think about, you know, those requirements, if you get reject rejection in the patent office for, you know, it's anticipated or it's obvious or something, is there any alternative that can be claimed eventually, any fallback position, anything like that? Trying to broaden, you know, the innovation? Is there anything else that can be more general or applied, you know, to other, possibly other fields, other you know, you know, apply it to something else? Um, now, is the invention create any new problems? And now, how can those be solved? Is there something else that you can add, you know, you can find a different application for something slightly different, is it possible? And then towards commercialization, it's really important, especially here at University universities. You know, that's the end goal, trying to license the innovation or, you know, commercialize the product. What are they thinking about? Is there something specific that they have in mind, trying to kind of move towards their from white from the outset, from the, you know, early filing, or the other companies most of those questions are included in most invention disclosure forms, and most universities, but it's kind of good to think about those, do all those questions with always keeping in mind requirements for a patentable invention? You know, all of those things, all those questions really come from what is required actually to have in your patent application in order to be able to obtain the patent, the written descriptions, what enablement how the best small Pio differences and the fallback and any foreseeable designing arounds or commercial the commercial merit and the prospects of dimension. Let Kelly go on.

Speaker 3  29:44  
Yeah, thanks so much, Elizabeth. So on that vein, so kind of that first part was talking about the timelines of everything and when you as a tech transfer office can expect to hear from an attorney that you're working with, I assume most of them People attending this or watching this webinar work with an outside firm. So those are more keeping in mind what the timeline looks like. And then I'm going to pick up kind of on the strategic filing where Elizabeth stopped, and asking your inventors the right questions to get the most broad application you can. So picking up from here, assuming we've decided to file on an invention that's disclosed to your office, there are several factors to consider that we kind of think about internally as well as how we proceed forward. First one is have any of this been publicly disclosed? Has any of it been disclosed? Has some of it been disclosed? What does that disclosure look like, which oftentimes gives you a much better idea of what you're looking at and what you can protect and what you cannot protect? If they have been already disclosed? Does this innovation have foreign applications? So is this something that would be really helpful in another country? Is this something that's likely going to be made manufactured commercialized in another country? Or is it something that's more on the US side and more likely to be commercialized? Hear us? Does this invention have a really narrow scope or field of use with lots of prior art in it? Or does this invention have potential applications with lots of applications and different fields with little prior art, those are not necessarily hand in hand. But the way that we think about that is, if we've already made the decision to file that doesn't necessarily mean that any of these are a stop. But more so of having us think about what what is best for this technology. And what is best for this field that it's working in. A lot of times, at least with our inventors, they create the solution to a problem that they know of or they have. And oftentimes, they do not have that one step back view of what could this be used for in other scenarios and other fields and other areas, where sometimes it really is a really narrow scope of field and a really narrow field of use. But that doesn't mean that it's not necessarily not patentable or not a good idea if it's a good problem that needs to be solved. So next slide, please. Back to that public disclosure, this is kind of in that types of disclosure area. I know as much as anybody else in any tech transfer office, you beg Your inventors to talk to you before they have a public disclosure. And you really, really, really want to hear it early and often. But sometimes you don't. And sometimes you get an email that says, hey, this is in submitted to a journal, and what can we do about it? So a lot of times that prompts us to ask that question of, is this a pre publication submission? Or is this like an actual publication? It's out in the world, you have a date? Typically, because most journal articles have the submissions are confidential, so you can still protect it, if you can work really, really quickly. And each journal has its own timelines about how quick reviews are and how quick submissions are. So usually, that's a really good question to ask your Pio or your inventor? Do you have an idea of how soon this is going to happen? Do you have an idea of how quickly this journal works? Do they pre publish online so that it's available in the public? And then that's another one of those online journals. So like bio RX, which immediately publishes, you want to ask those questions with your inventors first, so that you have those ideas before you start kind of moving forward in any space? Or was this disclosure a presentation? Was it a thesis defense? Was it at the conference? Was this to get more funding? Is it a funding opportunity? Is it a pitch? And all of these questions, what I try and bring it back to is was this disclosure enabling, which is the bar and I know that that can be confusing for some, but enablement is typically defined as can someone who's skilled in this art, upon this disclosure, make or use the invention as it is. And so if this is really like a conference, and it's a funding opportunity, kind of more those sites, those sorts of disclosures, those may or may not be enabling for how you make the invention. If your inventor is trying to get some more funding, and they're talking about like the applications of this invention, but they don't really have how you would do it, then that could still be considered confidential and that could still be protectable. And then, kind of on that same note, is this a thesis defense, because this is defense is typically the graduate student or the person who's working on with a PI is explicitly explaining how They did everything and how they got to where they are with the results. And so in those scenarios, you, you probably it is probably enabling, and it could be enabling if someone was viewing that or reading that thesis or anything like that. So something to keep in mind, something to definitely think about when you're thinking about strategy is if there was a public disclosure, what kind of public disclosure was it, and I would think that that would help to really pick which way you're going to go. And if this is protectable, or not. Next slide, please. On that note, grace periods for public disclosures. I know that this is a touchy subject with a lot of people and a lot of law firms. But grace period is pretty loose. Of course, we want to hear it beforehand. But you do have some options, especially still International. If you do have a public disclosure, this is a non exhaustive list of countries with grace periods for filing. So obviously, the big one is the US we have a 12 month, you can disclose anything in public, as long as you file it within 12 months. A lot of these countries also have a 12 month, a couple of them are six months, but Singapore, Australia, South Korea, Canada, Japan, Brazil, Philippines, and these are all referred to as relative novelty countries, which means that that grace period is allowed for and as long as this was not, you know, patented by another, you can probably still get really good protection on it. And then you have countries without a grace period. So that's Europe, that's our big one. That's the immediate loss of foreign rights. And in that includes Germany, UK, France, Italy, and Spain. And these are referred to as absolute novelty countries. And so those, those public disclosures can also guide where you have these strategic filings. If you have a public disclosure, you already know that you can't file in Europe, right? And so that will help you guide where you want to go with this or what you have available. And then this leads into something else to keep in mind, which is the can versus should question just because you can file internationally should you file internationally. And that is up to each invention. And we at our office look at every invention through its own lens to see if that's worthwhile. But that's kind of where we want to think about when we're looking at strategic filings. And when you want your office to look at strategic filings. Another thing to kind of keep in mind is that these absolute novelty versus relative novelty countries does not necessarily mean that you don't have protection in it. But it just means that you won't be able to file with this really full robust application sometimes because especially if you get those disclosures right away, you can think about these, but sometimes you have, you know, two weeks, PII gets you something that says hey, this is going to publish or I'm presenting. And so thinking about how long getting together an application, or getting together with a law firm is going to take is also really helpful to keep in mind for these grace periods. And just remembering that the clock is ticking, oftentimes, we always hope that it's not. But as as we're all figuring out, it all depends.

Unknown Speaker  38:19  
Next slide, please.

Speaker 3  38:24  
Foreign filings here, kind of in that same vein, these can be far more difficult to navigate than the US system, which, again, even if you have everything going all at one time, these are often really expensive. So the way that I like to think about it is this cost versus benefit scenario for Foreland. Filing. A lot of our stuff, especially at a university is really, really early, really, really early, which means that it's likely going to need a partner to commercialize it or help it get to the point where it can be commercialized. And so we'd like to consider the field of invention and just what is happening and where that field is based or big players in that field. You can either ask this from the inventor, or oftentimes your licensing manager will really know this field and know that this area and kind of where the big players are, or smaller, small market startups whatever where those happen to be, and where they're located can be really critical for these foreign filings. Or you can do internal or external evaluation to figure that out as well. And then we try and think about do we have an articulated reason for this filing like in another country or outside of the US? Would the invention be made or used in that country? Or are we just doing it because it's a maybe, or what that looks like, in our sense. So an example here is say you have an invention that comes in from an engineering department and it's a A jet engine, new type, something like that. We like to think about what potential licensee would be interested in this. And if we're thinking about that, we're looking at the space and we're looking at the market and we're looking at these big players. Say, for example, Brazil has very few engine fabricators in their country, I think it might be one and only. So it may or may not make sense to forget file protection in Brazil, versus in the US where we have lots of people that are making jet engines and producers and manufacturers. On the flip side of that coin, another example is the pension, that's a new crop type, say certain kind of crop, and it's widely produced in other countries and not really grown in the US, it might be useful to seek that protection in another country that primarily grows the crop, or that it would be useful to license to a company that will grow it in that country. So those are things to think about and things to really consider when thinking about these foreign filings and strategic filings. And another thing I want to mention back to Elizabeth, is when the PCT application is yes, this international sort of provisional filing. But if you are likely to just go nationalized in the US alone, it often might be better, cheaper, by better, I mean, cheaper to file alone in the US, if that's where you want to go anyway. So that's back to that can versus should scenario, and every technology is different. And it may not be the same every time. And so that's kind of what we wanted to get out here is that strategic thinking about it, long term plan. Next slide, please. And as I'm a registered US Patent and Trademark Office, I will kind of talk more about the US applications now and strategy for those. And the way that I approach prosecution, and the way that I approach any US filings is we want this to be as broad as possible, like Elizabeth was saying, so getting all of the information from your inventors, for any way or different or range of anything that could be in there. And then I like to have specific fallback positions that I know that I have. And I know that we could go to if we have to. So over on the right, you can see I have my big specification, broadest possible. And then I do initial independent claims, and then really narrow dependent claims. I like to utilize those answers from inventors and research to guide any of these fallback positions. So for example, you really want to think about what would a licensee find helpful for patent protection? Do they want to commercialize this product? And they need the method of making it? Do they want to commercialize it, and it's a composition? Do they need both the method of making it and the composition because it's a new composition, and the method is novel? And so when we think about specific fallback positions, I know it's oftentimes, at least in my experience, inventors will come to you and say, This is exactly how it works. And this is exactly how much we added and exactly how much because that's how their science works. Right? You dial it down, you get it down to a point. But oftentimes, I like to ask, well, what if you didn't put it in the oven for as long? Or what if you added this much of a different compound? Would that still work? Would it still make it? What do you think? Because your inventors are going to be the technical expert on this. And oftentimes, they don't necessarily think about that when they disclose they've they've gotten to a point they've gotten to an endpoint and they say, Great, this is perfect. That's exactly how I want to do it. And that's that best mode. But it does not mean it's the only mode. And so I really like to ask about those and think about as broad as possible, while keeping in mind what our fallback position is. So I have an example of that on the next slide. So as I'm a chemical engineer, by trade, this is a chemical prosecution maybe. And so the original claim that we submit, say we say it's a chemical formulation that comprises chemical X and chemical y. And that's what we say that's what we tell the USPTO. And one scenario, the examiner comes back and cites a chemical formulation that includes 40% chemical X and says that's my rejection I'm gets the same. And then in your specification, if you have exclusively written that it's a 0% to 30% weight percent of chemical x, then you can amend your claim quite easily. And say this is a chemical formulation that comprises zero to 30 weight percent chemical X and chemical y and so Therefore, you, you have that verbatim support, which is oftentimes needed for us applications, to say, this is why this is where I said, I can say zero to 30%. And now I'm amending my claim to include that ticket around this prior art that says 40%. And another scenario, the examiner could say a chemical formulation that includes 25%, chemical x and 2%, chemical y, you can amend your claim then to say a chemical formulation that comprises zero to 30 weight percent chemical X, and five to 50 weight percent chemical y. So this is kind of that, if you have asked all of these questions to your inventor, and they can give you these broad ranges or others, other specifications or other ways that this invention works, it can really help you in prosecution because you know, you have these fallback positions, obviously, to try and get as broad as possible, right. But you have a fallback position to come back to going into your original filing. And I think that that's really helpful and something that universities can really, really take advantage of. And these are obviously not for we've, I've at least been looking at this from the state of we are directing an attorney to amend the claims in such a way. So these are not necessarily like for your own office to be doing. But just to keep in mind of how prosecution goes forward, having these fallback positions are so helpful, because then you know, you have that in there, and you know, where you can have space and where you don't have space. So next claim, right?

Unknown Speaker  46:41  
Next slide, sorry.

Speaker 3  46:44  
And so this comes back to the restriction requirements when we're making as broad as possible. And we're trying to really capture everything we possibly can, in an application or any, any mode or any substitutions or obvious working around. You're, you're very much gonna get a restriction department, the patent office is going to come back and say, there's two inventions. There's three there's five inventions in this application, please pick one. I think that's a great sign. And I think that those I welcome restriction requirements. They're super common. And we, you really do want that because that means that the examiner is really focusing in on what invention you want to pick first. And then you can always keep the option for the other ones later. Or another thing that I don't think a lot of TT o offices take advantage of oftentimes is called rejoinder. rejoinder is a consideration of claims directed to a non elected species or inventions that may be eligible if the claim depends from or otherwise requires all the limitations of an allowed claim. And so how this works is when prosecution is ongoing, first thing is a restriction requirement. Oftentimes, the first thing is a restriction requirement. So you can pick which election which claims you want to argue on first. And then if you pick that with traverse, so, and these are all for your attorney, you should they should be directing this for you, but just knowing what what how it works, and what the words are, can be really helpful, I think. So electing with traverse means I am picking this group and these claims to argue upon, but I am reserving the right to argue that the other ones may or may not be eligible subject matter, once we get to an allowable claim. And these are really helpful. So instead of having these divisionals, like Elizabeth mentioned, where there's claims that are allowed, and then you have other claims that were in there that you don't know or aren't sure of, and then your option can be okay, I'll take the allowed claims, and I'll start a divisional application, which starts the clock of examination over again. So you're a year and a half before anyone really looks at those non elected claims. Or you can say, if I have these allowed claims, can I make these non allowed claims depend upon those claims, and therefore I can get both of them all in the same application. So another example I know that this is really broad, intentionally vague words that I'm using, but an example would be an original application was subject to a restriction requirement and there's a product and a process of making and or using the product. If you elect to do the product and prosecution say you argue with the examiner the product is allowed. You can argue with traverse for rejoinder to say the method or process of making this or the method of using this product is now dependent on the product itself. So those claims go together now and you include all of the restrictions of the first of the product, then the process claims can be allowable if they require all of the limitations. This can be really helpful for licensing a product, because then all of these come together and link your back your back to the original application where you say, here's this great product that we made this great invention. And also, here's the process of making that product. And they come to come back together in one, one patent. And then that patent becomes infinitely better and more valuable to a potential licensee because it's all together. And they know that they have rights to both the product and the method of making the product. And so those are something to keep in mind. Those are something to ask your attorneys that you work with, about rejoinder, even at the outset, even at the beginning to just say with those restriction requirements, we want to reserve the right with rejoinder. So those are something to definitely keep in mind. Next slide, please. So to kind of wrap up this discussion, you really want to plan ahead, I know that that's the same everything everyone always says early and often to all your PIs and all of that. But really having this discussion and having these internal discussions within your TTL office to really have these strategic filings and really know where you're going with the IP is really, really helpful. Another point that I wanted to bring up yet again, is that broader specification brings you more options and prosecution efforts. And so thinking about not saying the exact use case, if you have a composition, leave it out composition, don't give it a specific this is exactly how we're going to use it, if there are other ways to potentially use it. Now, the thing is those fallback positions clearly laid out, those will also guide your prosecution efforts. If you know where you're going, it's a lot easier to get there. And then lastly, that rejoinder may be a more cost effective protection than those divisional applications, and they're likely a lot quicker. Next slide, please. And then I'll leave you with this, the man who does not plan ahead will find trouble at his door. So thinking about those and thinking about strategy beforehand, will oftentimes help you a lot down the road. And you don't get to that 10 month deadline. And you're like, Ooh, I don't know what we're doing. Let's look at it. Having that strategy beforehand. And having that plan beforehand, will really, really help your TTL and helps to make some more strategic decisions for some more valuable IP. And then that was all we had. We wanted to open it up to discussions, if anyone has any questions.

Speaker 1  52:42  
Kelly, Elizabeth, thank you so much for that great presentation attendees. As a reminder, you can type your question into the q&a box, or you can raise your hand, and we can grant permission for you to ask your question out loud. We will give it a minute or two to see if any questions come through. If either of you have any additional thoughts you wanted to share while we wait for questions come through, please, please feel free your comments on each other sections. Otherwise, we can just give it a moment.

Speaker 1  53:28  
All right, looks like you can keep giving another second. But I think he made both in so thorough that we answered every question that could have possibly come up regarding this topic or there's just a lot to digest attendees, you will have access to the slides as a handout. So as you're going through these items, if you think of follow up questions, I'm sure Elizabeth and Kelly, I'd be happy to connect with you as well as you're thinking through all of these details. All right. So I think with that, unless either of you have any closing thoughts before I take us home for the afternoon.

Speaker 2  54:05  
Then rather than think early, like Kelly said, really? Just talk to inventors.

Speaker 1  54:14  
Excellent. Awesome. I think that's a great parting piece of advice. Alrighty, so Kelly was with I want to thank you both so much for such an informative discussion. And attendees. Thank you so much for joining today, and listening to all that they both had to share. As a reminder, a recording of the webinar will be available within a couple of days on the autumn Learning Center and is included in your registration. And that is also where your slides and handouts can be accessed. And please complete the webinar evaluation form that will open when you close out of this webinar to help us serve your needs in the future. So thank you again, everyone. And I hope you have a wonderful rest of your afternoon and day. Thanks. Thank you

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