Looking at Patent Law: Patenting an Electrochemical Invention for Eradication of Microbes from the Surfaces of Implants—A Case Study

In this installment of the “Looking at Patent Law” series, we present a case study of the prosecution of U.S. Patent No. 9,616,142 directed towards “Electrochemical Eradication of Microbes on Surfaces of Objects” jointly assigned to The Research Foundation for the State University of New York and Syracuse University. This case was chosen to coincide with the focus of this issue of Interface on diversity and inclusion in electrochemical technology, science and engineering. Notably, several of the inventors are female, including Dr. Esther S. Takeuchi who is a prolific inventor with numerous awards, honors and recognitions. The case study begins with a brief synopsis of the background of the invention followed by 1) a discussion of the patent applications associated with the invention, 2) inventor assignment and power of attorney designations, 3) submission of an information disclosure statement and duty of candor, 4) summary of office actions, 5) summary of applicant response to non-final rejection, and 6) allowance of the patent application. With this case study, we hope to de-mystify the patent prosecution process and better prepare electrochemical and solid-state scientists, engineers and technologists to interact with their patent counsel regarding their inventions.