The End of Free Sharing in the Insurance Industry

Mark NowotarskiMark Nowotarski, Patent Agent, Patent Agent

Markets, Patents & Alliances LLCMarkets, Patents & Alliances LLCwww.marketsandpatents.comwww.marketsandpatents.com

John LoveJohn Love, Director Business Director Business MethodsMethods

United States Patent and Trademark United States Patent and Trademark OfficeOffice

www.uspto.govwww.uspto.gov

Tom BakosTom Bakos FSA, MAAA FSA, MAAATom Bakos Consulting, Inc.Tom Bakos Consulting, Inc.

www.bakosenterprises.comwww.bakosenterprises.com

©2004

Outline

• Intellectual property overview

• Patent background

• Patent examination

• Patents in the P/C industry

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

Key Points

• Insurance inventions can now be protected with patents.

• Patents give the right to stop copying.

• You are an inventor.

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

Patents in the Insurance IndustryThe Land Rush is On

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

1998 State Street Bank Decision

We take this opportunity to lay this ill conceived notion to rest … Since the 1952 Patent Act, business methods have been, or should have been, subject to the same legal requirements for patentability as applied to any other process or method.

State St. Bank vs. Signature Financial (Fed. Cir. 1998)

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

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1980 1985 1990 1995 2000

Year

Nu

mb

er pending

issued

tom bakos consulting, tom bakos consulting, inc.inc.

Insurance Patent Activity

State Street

©2004

Major Types of Intellectual Property

Trademark Trade secret

CopyrightPatent

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

Intellectual Property Comparison

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

Filing Cost Term Value

Patent $10k – $20k 20 years Billions

Copyright $0.5k 95 years Billions

Trademark $1k - $2k As long as you use it

Billions

Trade secret

na As long as it’s secret

Billions

What is a Patent?

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

A Patent is a Publication

• A patent is a publication that describes a new invention.

• A patent owner has the right to exclude others from making, using or selling the claimed invention for 20 years.

• Patents are enforceable only in the countries they are issued in.

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

Two Parts to a Patent

1. Written Description: Instructions on how to make and use the invention.

2. Claims: Exact definition of the invention(s).

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

I claim as my invention:1. An electric lamp …

comprising a filament of carbon of high resistance ….

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

Written Description Claims

T.A. Edison – Electric LampUS 223,898 Jan 27, 1880

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

I claim as my invention:1. A carbon in

combination with a lamp….

H. Woodward – Electric LightUS 181,613 Aug. 29, 1876

Written Description Claims

Patentable Inventions35 U.S.C. 101

Manufactured item Composition of matter

MachineProcess

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

Not Patentable

ContractWish

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

Too Late to be Patentable

Inventions For Sale

Public Inventions

tom bakos consulting, tom bakos consulting, inc.inc.

©2004

Key Points

• Insurance inventions can now be protected with patents.

• Patents give the right to stop copying.

• You are an inventor.

tom bakos consulting, tom bakos consulting, inc.inc.

©2004