Getting Your Startup to Work for You

How Innovators Can Use US Patent Law to Protect Their Startups

Shelly RosenfeldLewis Brisbois Bisgaard & Smith LLP

213.580.3912shelly.rosenfeld@lewisbrisbois.com

SPEAKER INTRODUCTION

Shelly Rosenfeld focuses her practice in the areas of Intellectual Property and Technology and Entertainment. Prior to joining Lewis Brisbois, Ms. Rosenfeld previously served as a Prosecutor. She first-chaired misdemeanor criminal trials, and had a perfect record. Before becoming an attorney, Ms. Rosenfeld was an award-winning journalist. She worked as a television anchor and reporter for an NBC affiliate. Ms. Rosenfeld is fluent in Hebrew and frequently visits Israel.

INTELLECTUAL PROPERTY

• Trade secrets: Information that provides a commercial advantage and is kept confidential.

• Patentable inventions: machines, products, compositions, processes and improvements that have utility.

• Copyrightable works: original works of authorship reduced to a tangible medium.

• Trademarks: marks used to identify the source of goods or services.

UTILITY PATENT

• Novel, non-obvious processes, machines, articles of manufacture and compositions of matter.

• Good for 20 years from the date of the priority application, with certain exceptions.

UTILITY PATENT

Highly complex prosecution process between inventor and patent examiner determines the breadth of patents. Patent application requires the known embodiments of the invention and its best mode with sufficient detail to permit one “skilled in the art” to make and use the invention.

DESIGN PATENT

• Protects the “ornamental” and nonfunctional features (i.e. the way a product looks).

– e.g. – shape of Coca Cola bottle, design of a tire tread.

• Good for 14 years from the date of issuance.

• Relatively inexpensive to obtain compared to utility patents and potentially very powerful tool to keep competitors away.

Utility Patent

So What Can You Actually Patent?

Patentable Subject Matter definition: • “Whoever invents or discovers any new and

useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title” 35 USC§101 (emphasis added).

Machine or Transformation Test

An invention was a “process” only if:• (1) it was tied to a particular machine or

apparatus, or • (2) it transformed a particular article into a

different state or thing.

PATENTABLE SUBJECT MATTER

Bilski v. Kappos, 130 S. Ct. 3218 (U.S. 2010).

• Bilski filed a patent application for an invention that explained how buyers and sellers in the energy market could protect against the risk of price changes.

• The Supreme Court rejected the patent application and said that it was an attempt to patent an abstract idea.

PATENTABLE SUBJECT MATTER

Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289 (U.S. 2012).

• Prometheus Labs developed a method of testing for metabolites to determine the proper effective dose for a drug.

• The Court held that Prometheus had not provided enough additional features to provide practical assurance that it did not try to monopolize laws of nature.

Mayo Collaborative Servs. v. Prometheus Labs, cont’d

• The Supreme Court held that because one cannot patent a law of nature, then a process stating the law of nature is not patentable, UNLESS:– The process has “additional features that

provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.”

PATENT INFRINGEMENT

Direct Infringement (35 U.S.C. §271(a))One infringes a patent if:• During the term of the patent• The person makes, uses, offers to sell, or sells

the patented invention in the US or imports the patented invention into the US.

PATENT INFRINGEMENT

Indirect Infringement (35 U.S.C. §271(b))• It is another way someone can be sued for

patent infringement• A type of indirect infringement is contributory

infringement

CONTRIBUTORY INFRINGEMENT

One infringes a patent if: (35 U.S.C. §271(c))• Offers to sell/sells in or imports into the US• A component of a patented machine, or a

material to use for a patented process• That is a material part of the invention• Knowing that the component is especially made

to be used in infringement• Item not suitable for substantial noninfringing use• E.g.: a TV screen is claimed in a patent for a TV

set and a 3rd party sells the screen which can only be reasonably used to make the claimed TV set

PATENT INFRINGEMENT REMEDIES

Patent cases are traditionally some of themost expensive cases to prosecute anddefend because the issues are oftencomplex and the exposure significant.

Consult with insurance broker to see if insurance available to protect against claims.

Before making or selling something “close”, get clearance from patent counsel.

Hatch-Waxman Act

Also known as: Drug Price Competition and Patent Term Restoration Act of 1984

• Amended the Federal Food, Drug, and Cosmetic Act (“FDCA”) and the Patent Act to more quickly get lower-cost generic drugs to market.

• It also preserves the pharmaceutical patentees’ rights by compensating the, for the market time lost in satisfying FDA safety/efficacy requirements.

Hatch-Waxman Act

• When a generic drug achieves the Abbreviated New Drug Application (ANDA)’s “Paragraph IV” certification, it provides a 45-day period where a patentee can decide to file suit against the generic manufacturer.

• Once the patentee files suit against the generic drug manufacturer, it delays the approval of the ANDA drug by 30-months.

AMERICA INVENTS ACT (“AIA”)

Changed US Patent system from First to Invent to First Inventor to File

• Went into effect in March 2013.

Expanded definition of prior art• Prior art now includes anything on sale or

disclosed publicly anywhere in the world.

USEFUL WEBSITES

• Patent and Trademark Office: http://www.uspto.gov/

• Free Patent Searching and PDF Copies:http://www.freepatentsonline.com/

• Copyright Office: http://www.copyright.gov/

תודהShelly Rosenfeld

Lewis Brisbois Bisgaard & Smith LLP213.580.3912

shelly.rosenfeld@lewisbrisbois.com