Maintaining Patentability Despite Pre-Filing Publication

Mr. Chris Braidwood
Marshall, Gerstein & Borum
Ann Arbor, MI

ABSTRACT:

The first half of this talk is a quick introduction to what constitutes patentable subject matter. The three-part test for patentability involves issues of novelty, non-obviousness, and utility. Not surprisingly, these legal requirements differ markedly from notions in academia as to what qualifies as publishable work, not to mention how the work should be presented and supported.

At least one thing is common to both patent filings and academic papers – the pressure to publish, or file, as quickly as possible. Of course, the safest route is to publish the work after the filing of a patent application.

The second half of this talk will address when circumstances dictate that publication precede filing. In fact, the legal requirements for patentability discussed in the first half of the talk, especially the often-overlooked concept of utility, are instructive on strategies for publication without loss of rights.

BIO:

Chris Braidwood joined Marshall, Gerstein & Borun in 1995 after seven years in Ann Arbor, where he received his B.S.E. in E.E., summa cum laude, and his J.D., cum laude. As an undergraduate, he worked in the SSEL in an effort to model diffusion in silicon.

His patent practice involves prosecution, transactions, and portfolio management in a variety of technical areas, including wireless communications, semiconductor devices and device fabrication, MEMS and other microsystems, RF filters and other RF devices, microfluidics, optical and photonic devices, and process control systems.

Chris returned to Marshall, Gerstein & Borun earlier this year, following three years as V.P., Intellectual Property, of Ardesta, a firm investing in MEMS, microsystems, and nanotechnology startups, including several COE spinoffs.