PATENTS

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PATENTS

• PROF. JANICKE
• IP SURVEY COURSE
• 2009

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THE USUAL QUESTIONS

• CAN I GET A PATENT ON ____?
• IF IM EMPLOYED OR CONSULTING, WHO WILL OWN IT?
• HOW MUCH WILL IT COST?

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THE USUAL QUESTIONS

• HOW LONG WILL IT TAKE?
• WHAT CAN I DO WITH IT IF I GET IT?

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ELIGIBILITY

• JUST ABOUT ANYTHING BELIEVED TO BE NEW
  BASICALLY NOT KNOWN BEFORE
• COMPUTER SOFTWARE GENERALLY YES
• BUSINESS METHODS YES

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ACTUAL INVENTORS MUST APPLY

• MERELY PAPERWORK OWNERSHIP IS OFTEN IN AN
  ASSIGNEE
• WHO ARE THE INVENTORS?
• ROLE OF CLAIMS IN MODERN PATENT LAW
• YOU DONT PATENT A THING ANY MORE

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INVENTORS

• THOSE WHO THOUGHT OF SOMETHING COVERED BY THE
  CLAIM
• NOT THOSE WHO LEARNED IT FROM SOMEONE ELSE

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INVENTORS

• YOU DONT REALLY KNOW WHO THEY ARE UNTIL THE
  CLAIMS ARE DRAFTED
• THOSE INVOLVED IN A MINISTERIAL OR MANAGERIAL WAY
  ARENT

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INVENTORS

• ARE ALWAYS THE INITIAL OWNERS OF THE PATENT RIGHT
• USUALLY THEY ASSIGN TO A COMMON ENTITY, WHICH
  BANKROLLS THE APPLICATION

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HOW THE CLAIMS SYSTEM WORKS

• CLAIMS ARE AT THE BACK OF A PATENT
• THEY ARE THE ONLY IMPORTANT PART, FOR PRACTICAL
  PURPOSES
• THEY DEFINE THE SCOPE OF COVERAGE

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PURPOSE OF A CLAIM TO DEFINE COVERAGE AS BROADLY
AS POSSIBLE

• ANYONE WHO LATER OPERATES WITHIN THE LANGUAGE OF
  A CLAIM IS AN INFRINGER
• OTHERS ARENT

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EXAMPLE OF CLAIMING THE FIRST CAR

• CLIENT SHOWS YOU A MACHINE SHE HAS DEVISED
• IT HAS
• CHASSIS
• 4 WHEELS
• 10-CYLINDER ENGINE
• BRAKE ON EACH WHEEL
• 3-SPEED TRANSMISSION

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HOW TO CLAIM?

• RULE 1 CLAIM CAN BE AS BROAD AS POSSIBLE, BUT
  MUST NOT COVER ANY PREVIOUSLY KNOWN CONFIGURATION
• RULE 2 CLAIM MUST EMBRACE SOMETHING THE
  INVENTOR DEVISED

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RETURN TO CAR EXAMPLE

• ASSUME CLOSEST PREVIOUSLY KNOWN MACHINE WAS THE
  HORSE-DRAWN WAGON

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CLAIM 1

• 1. A VEHICLE, COMPRISING
• (a) A CHASSIS
• (b) A PLURALITY OF WHEELS ATTACHED TO SAID
  CHASSIS AND
• (c) AN ENGINE FOR TURNING ONE OF SAID WHEELS.

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CLIENTS PRIDE

• CLIENT IS UPSET NO MENTION OF HER 10-CYLINDER
  ENGINE, THE FINEST PART OF THE CREATION!
• CAR WONT BE ANY GOOD WITHOUT IT!
• SAME FOR 3-SPEED TRANSMISSION

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ADVICE

• DONT GIVE UP BROADEST SCOPE!
• WRITE MANY OTHER CLAIMS, NARROWER (IN CASE CL. 1
  TURNS OUT TO VIOLATE RULE 1)
• EACH CLAIM IS TREATED AS A MINI-PATENT

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ONE EXCEPTION NEW INFO ON PRIOR ART

• YOU FIND OUT AT SOME POINT THAT THE LOCOMOTIVE
  PRE-EXISTED YOUR CLIENTS DEVELOPMENT

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AMENDED CLAIM 1

• 1. A VEHICLE, COMPRISING
• (a) A CHASSIS
• (b) A PLURALITY OF WHEELS ATTACHED TO SAID
  CHASSIS
• (c) AN ENGINE FOR TURNING ONE OF SAID WHEELS
  AND
• (d) A STEERING DEVICE FOR TURNING AT LEAST ONE
  OF SAID WHEELS.

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BROAD CLAIM COVERAGE IS ESSENTIAL

• MOST PATENTS ARE DEAD LETTERS, BECAUSE THE CLAIM
  SCOPE IS NOT COMMERCIALLY MEANINGFUL
• EASY TO DESIGN AROUND SUCH CLAIMS

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ONLY CLAIMS ARE VALID/INVALID

• EACH CLAIM IS ADJUDICATED INDEPENDENTLY
• A PATENT IS NEITHER VALID NOR INVALID

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ONLY A CLAIM CAN BE INFRINGED

• ACCUSED INFRINGING PRODUCT/METHOD MUST BE WITHIN
  LANGUAGE OF A VALID CLAIM
• CLAIM SCOPE IS EVERYTHING!

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• MOST PATENTS CONTAIN MANY CLAIMS, OF VARYING
  SCOPE
• USUAL STYLE TELESCOPING DOWNWARD
• IN THE EVENT THE BROADER CLAIMS ARE HELD INVALID

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SOME MYTHS

• HE HAS A PATENT ON THE IDEA OF PUTTING ..
• REALITY FOR EACH CLAIM, HE HAS A PATENT COVERING
  THE FAMILY OF COMBINATIONS RECITED IN THE CLAIM

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SOME MYTHS

• THERE IS A GREAT MARKET FOR THE STRUCTURE I HAVE
  ACTUALLY DEVISED
• REALITY MARKETS ARE NOT STRUCTURE-SPECIFIC
  CLAIMS BROAD ENOUGH TO COVER FOLLOW-ON DESIGNS
  ARE CRITICAL

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SOME MYTHS

• WERE GOING TO LICENSE IT TO A BIG COMPANY!
• REALITY BIG COMPANIES DONT WANT AN OUTSIDE
  IDEA IT IS A NUISANCE UNLESS IT ADVANCES THEIR
  FIVE-YEAR PLAN

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SOME MYTHS (contd)

• IT HAS NOTHING TO DO WITH WHETHER THE IDEA IS A
  GOOD ONE
• THE PROBLEM IS HIGH RISK

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SOME ROUGH ESTIMATES

• COST THROUGH U.S. ISSUANCE 5-10K AND UP
• TIME TO ISSUANCE 2 YEARS
• EXCLUSIVITY IN MEANTIME NONE

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• FOREIGN COVERAGE NEEDED, TOO
• EUROPE AND JAPAN 30K AND UP
• MAINTENANCE FEES ABOUT EQUAL TO PROCUREMENT
  COSTS
• TOTAL 100K-140K AVERAGE

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HOW EFFECTIVE IS A PATENT?

• DEPENDS ON CLAIM SCOPE
• DEPENDS ON TO FIGHT
• 45 ARE HELD INVALID

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DO YOU HAVE TO DO A SEARCH BEFORE FILING?

• NO. BUT NON SEARCHING ENLARGES RISK OF WRITING
  UNPATENTABLE CLAIMS.
• PTO NOW MOVING TO REQUIRE SEARCHES

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DO YOU HAVE TO BUILD AND TEST THE INVENTION
BEFORE FILING?

• NO. FILING APPLICATION ACTS AS CONSTRUCTIVE
  REDUCTION TO PRACTICE.
• NOT GOOD TO WAIT.

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WHAT ARE THE CHANCES OF GETTING A PATENT ALLOWED?

• IF YOU DONT CARE ABOUT CLAIM SCOPE, MAYBE 90
• BUT MOST WILL BE COMMERCIALLY DEAD LETTERS

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LACK OF NOVELTY FOR A CLAIM AND LOSS OF RIGHTTO
A CLAIM

• FOCUS ON 102 (b) IT ACCOUNTS FOR 90 OF
  SITUATIONS ENCOUNTERED IN REAL LIFE

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4 PRIOR-ART EVENTS

• PATENTING
• DESCRIBING IN PRINTED PUBLICATION
• OFFERING FOR SALE (IN U.S.)
• PUBLICLY USING (IN U.S.)

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RULE

• IF ANY ONE SPECIES WITHIN THE CLAIM APPEARS IN
  THE PRIOR ART, THE CLAIM IS INVALID
• TRUE NO MATTER HOW REMARKABLE THE OTHER SPECIES
  ARE
• DISCOVERY OF GREAT PROPERTIES AND THEIR
  DISCLOSURE IN THE PATENT WILL NOT SAVE THE CLAIM

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NO WAY OUT(OTHER THAN EARLY U.S. FILING DATE)

• EARLY INVENTION DATE WONT HELP
• FOREIGN PRIORITY DATE WONT HELP

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A CLOSER LOOK AT DESCRIBING IN A PRINTED
PUBLICATION

• REASONABLE ACCESSIBILITY REQD.
• BUT DOESNT HAVE TO BE WELL KNOWN
• CAN BE IN A UNIVERSITY LIBRARY
• ENABLING DISCLOSURE REQD.

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A CLOSER LOOK AT THE ON-SALE BAR

• COMPLETED SALE NOT REQUIRED
• OFFER IN U.S. IS ENOUGH
• INVENTION MUST BE READY FOR PATENTING Pfaff v.
  Wells Electronics, 525 U.S. 55 (1998)

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A CLOSER LOOK AT THE PUBLIC-USE BAR

• PRIMARY PURPOSE OF EXPERIMENTATION, EVEN IN
  PUBLIC, TAKES ACTIVITY OUTSIDE THE PUBLIC USE
  CATEGORY
• PRIVATE USES CAN BE A BAR BY ANALOGY TO ON SALE,
  IF REGULARLY USED FOR PROFIT
• LEARNED HANDS RULE RE. METHOD CLAIM SECRETLY
  USED IN PROFITABLE SERVICING REBUILDING ENGINE
  PARTS

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SOME PRACTICAL PROBLEMS UNDER 102(b)

• SEE FILE IN CLASS MATERIALS TIMEBAR PROBLEMS ON
  PATENT CLAIMS

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OBVIOUSNESS

• THE CENTRAL GROUND OF REJECTION IN MOST
  APPLICATIONS
• KEYED TO THE PERSON OF ORDINARY SKILL IN THE
  ART AT THE TIME INVENTION WAS MADE
• 103(a)

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THE DISCLOSURE PORTION OF THE APPLICATION

• REFERS TO DRAWINGS, SPECIFICATION (OTHER THAN
  CLAIMS)
• NORMALLY DOESNT HAVE MAJOR IMPACT ON SCOPE

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THE DISCLOSURE PORTION OF THE APPLICATION

• IS A BURDEN IMPOSED BY STATUTE
• MUST TEACH HOW TO MAKE AND USE WHATS CLAIMED
  112 (1st para.)
• MUST SET FORTH THE BEST MODE SUBJECTIVELY
  112 (1st para.)

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• THE WRITTEN DESCRIPTION IS SPECIFIC, AND TELLS
  WHAT THE INVENTOR ACTUALLY DEVISED OR IMAGINED
• HAS LITTLE TO DO WITH THE PATENT GRANT (CLAIMS)
• A CLAIM MUST INCLUDE WHAT INVENTOR IMAGINED, BUT
  LOTS ELSE BESIDES!
• THE INTENT IS TO COVER FUTURE INVENTIONS OF
  OTHERS!

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INFRINGEMENT IS OF A CLAIM

• JUDGMENT IN A PATENT CASE IS BY CLAIMS, NOT THE
  PATENT
• ONE CLAIM STANDING VALID AND INFRINGED A
  VICTORY FOR THE PATENT OWNER

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ACTS OF INFRINGEMENT

• MAKING
• USING
• SELLING
• OFFERING TO SELL
• IMPORTING
• 271 (a)

SOMETHING WITHIN THE CLAIM IN THE U.S. DURING
THE TERM
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INDIRECT INFRINGEMENT

• INDUCING 271 (b)
• CONTRIBUTORY 271 (c)
• SHIPPING PARTS 271 (g)
• IMPORTING PRODUCT OF PATENTED PROCESS 271 (g)

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TYPICAL MODERN BUSINESS TRANSACTION

• THREE OR MORE PLAYERS
• PARTS/MATERIALS VENDOR
• MANUFACTURER/SELLER
• RETAILER
• COULD BE MANY MORE
• CONSULTANT/ADVISOR
• END USER

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EACH PLAYER NEEDS TO BE ANALYZED FOR LIABILITY

• CLAIM-BY-CLAIM ANALYSIS
• DONT COUNT ON INDEMNITY
• BUT ..

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EXAMPLE A POWER DRILL FOR HOME USE

• PATENT HAS TWO CLAIMS
• 1. STRUCTURE OF DRILL
• 2. METHOD OF DRILLING THROUGH CONCRETE

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• CONSIDER POSSIBLE INFRINGERS
• VENDOR OF MOTORS TO TOOLCO
• TOOLCO
• RETAILER
• END USER
• WHO IS LIABLE FOR WHAT?

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OWNERSHIP

• ORIGINATES FROM NAMED INVENTORS
• WHY JOINT OWNERSHIP IS IMPRACTICAL (ABSENT
  STRINGENT AGREEMENT)
• ANY CO-OWNER CAN USE FREELY
• ANY CO-OWNER CAN LICENSE WITHOUT ACCOUNTING TO
  OTHER CO-OWNERS

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MORE ABOUT FOLLIES OF JOINT OWNERSHIP

• HARD TO AGREE ON BRINGING SUIT
• HARD TO AGREE ON PAYING FOR SUIT
• HARD TO AGREE ON SETTLEMENT POSTURE

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LICENSING

• PERMISSION TO DO WHAT WOULD OTHERWISE BE ILLEGAL
• 3 GENERAL TYPES
• NONEXCLUSIVE
• SOLE does not exclude patent owner
• EXCLUSIVE excludes patent owner

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IMPLIED WARRANTIES

• LICENSOR HAS SUFFICIENT TO GRANT THE LICENSE
• LICENSE TO MAKE INCLUDES HAVE MADE

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NOT IMPLIEDLY WARRANTED

• VALIDITY OF ANY CLAIM
• PRACTICING LICENSE WILL NOT INFRINGE THIRD-PARTY
  PATENTS
• LICENSOR WILL THROW IN RELATED PATENTS
• OTHERS WONT GET BETTER TERMS

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NOT IMPLIEDLY WARRANTED

• RIGHT TO SUBLICENSE 3RD PARTIES
• RIGHT TO ASSIGN THE LICENSE
• PERILOUS UPON MERGER

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LITIGATION

• THREE MAIN TYPES
• INFRINGEMENT ACTION
• DECLARATORY JUDGMENT OF INVALIDITY,
  NONINFRINGEMENT, OR UNENFORCEABILITY (BY ACCUSED
  INFRINGER)
• DECLARATORY JUDGMENT OF INVALIDITY,
  NONINFRINGEMENT, OR UNENFORCEABILITY (BY A
  LICENSEE)

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SUITS AGAINST THE UNITED STATES

• MUST BE IN COURT OF FEDERAL CLAIMS
• NO INJUNCTIONS ALLOWED
• NO SUITS OR REMEDIES AGAINST CONTRACTORS ALLOWED

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PARTIES TO LITIGATION

• PATENTEE IS NECESSARY, UNLESS SUBSTANTIALLY ALL
  RIGHTS ARE GIVEN OVER TO EXCLUSIVE LICENSEE
• ANY EXCLUSIVE LICENSEE HAS STANDING TO SUE (ALONE
  IF SHE HAS ALL RIGHTS OTHERWISE JOINING PATENTEE)

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PARTIES TO LITIGATION

• NONEXCLUSIVE LICENSEE HAS NO STANDING TO SUE
• PARTIES DEFENDANT CAN INCLUDE INDIVIDUALS
  WORKING FOR CORPORATION
• THIS IS TORT LAW
• NO IMMUNITY FOR EMPLOYEES