PATENTS

PROF. JANICKEIP SURVEY COURSE

2009

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THE USUAL QUESTIONS:

• CAN I GET A PATENT ON ____?

• IF I’M 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 DON’T 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 DON’T REALLY KNOW WHO THEY ARE UNTIL THE CLAIMS ARE DRAFTED

• THOSE INVOLVED IN A MINISTERIAL OR MANAGERIAL WAY AREN’T

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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 AREN’T

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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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CLIENT’S PRIDE• CLIENT IS UPSET: NO MENTION OF

HER 10-CYLINDER ENGINE, THE FINEST PART OF THE CREATION!

• CAR WON’T BE ANY GOOD WITHOUT IT!

• SAME FOR 3-SPEED TRANSMISSION

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ADVICE:• DON’T 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 CLIENT’S 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

• “WE’RE GOING TO LICENSE IT TO A BIG COMPANY!”

• REALITY: BIG COMPANIES DON’T WANT AN OUTSIDE IDEA; IT IS A NUISANCE UNLESS IT ADVANCES THEIR FIVE-YEAR PLAN

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SOME MYTHS (cont’d)

• 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 DON’T 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 WON’T HELP

• FOREIGN PRIORITY DATE WON’T HELP

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A CLOSER LOOK AT DESCRIBING IN A PRINTED

PUBLICATION• REASONABLE ACCESSIBILITY

REQ’D.– BUT DOESN’T HAVE TO BE WELL

KNOWN– CAN BE IN A UNIVERSITY LIBRARY

• ENABLING DISCLOSURE REQ’D.

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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 HAND’S 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 DOESN’T 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 WHAT’S 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• DON’T 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 WON’T 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