Post on 18-Nov-2014
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PLAYING THE PATENT GAMESeptember 4, 2014www.boagip.com
What’s a Patent?A government grant of the right to exclude others from making, using, or selling an invention.
Not a right to practice the invention.
U.S. Patent (Application) Varieties
UTILITY PROVISIONAL DESIGN PLANT
The Provisional Application Never examined Never becomes a patent Requires full disclosure Expires in 12 months Why bother?
Filing date, cost, buys time.
Design Patents Protects ornamentation
that is non-functional Inexpensive and quick to
obtain 14-year term Damages: Infringer’s
profits
Business Method Patents? Just a utility patent Often just a way of doing
business applied to new technology
1981: State Street Bank No clear lines: software,
business method, Internet
Busiest (Patent) Supreme Court in 50+ Years
1. Alice v. CLS Bank (patentable subject matter)
2. Nautilus v. Biosig (claim indefiniteness)
3. Limelight v. Akamai (divided infringement)
4. Highmark v. Allcare (attorney fee awards in exceptional cases)
5. Octane Fitness v. Icon Health & Fitness (attorney fee awards in exceptional cases)
6. Medtronic v. Boston Scientific (burden of proof in licensee-brought actions)
Patentable Subject Matter Patent Act:
process, machine, manufacture, composition of matter, improvement
Courts: laws of nature, physical phenomena, abstract ideas
The basic tools of scientific and technological work are never patentable.
The Abstract Idea mathematical formulas algorithms fundamental economic practices methods of organizing human
activity an idea in and of itself
The Abstract Idea mathematical formulas algorithms fundamental economic practices methods of organizing human
activity an idea in and of itself
BUT, methods and products employing abstract ideas may be patentable when used to perform a real-world function or achieve a concrete result.
Patentable Subject Matter: Alice
[T]he claims at issue amount to "nothing significantly more" than an instruction to apply the abstract idea of intermediated settlement using some un specified, generic computer. Under our precedents, that is not "enough" to transform an abstract idea into a patent-eligible invention.
Alice Corp. v. CLS Bank International (2014)
See: bit.ly/1qpuucW (GigaOm); 1.usa.gov/1qpweTy (USPTO)
Meaningful limitations beyond generally linking an abstract idea to a particular technological environment.
So You Still Want a Patent? Exclusivity Piques VC and investor interest Tangibility Caché Property right that could
outlast company Passive deterrent
So You Still Want a Patent? Expensive ($10-25K+) Requires detailed
disclosure Patent could be of little
value in a crowded field
Patents and Startups—Alternatives
Preventative Disclosure No one else can patent
Trade Secret Must be kept
confidential Disclosure ends
protection
v.
Strategy I—Get Good Patents Identify patent-worthy
inventions Core to business?
Alternatives? Aim for not just any patent, but
a valuable one Too broad, not patentable or
invalid Too specific, not valuable
Strategy II—Use the System Wisely
File early enough Meet statutory
deadlines Be first to file
Repeat as development continues
Post-grant procedures
Trap I: Public Use of Invention One year deadline after your first
public disclosure! Use, sale, offer for sale,
demonstration, disclosure Beware of the “absolute novelty”
jurisdiction No patent with any pre-filing
disclosure Europe
Trap II: Inventorship Named “inventors” must invent
conception, not just implementation
By default, an employee owns what (s)he does on the clock, even with your resourcesUse employment agreements
Trolls, NPEs, and PAEs
• All shapes and sizes• Different challenge than traditional
patent holder• impervious to counter-suit• no interest in business solution• BUT, not interested in destroying a
competitor
NPE: Any entity that earns the majority of its revenue from the licensing or enforcement of its patents.
Strategy III—Offensive Defense
Conduct due diligence before the troll calls
Conduct freedom to operate searches
Counsel can help you identify and avoid existing patents
USPTO: 5,342 P.P.W. in 2013
“Everybody has a plan until they get punched in the mouth.” Mike
Tyson
Mike Tyson.jpg
Trap III: Patent Infringement Cost of an average patent
lawsuit ($1-$25M at stake): $2.8M (AIPLA)
The Sport of Kings 6,092 infringement suits in
2013 No accidental infringement
defense
Strategy IV—React Smartly to Threats
Don’t panic Don’t ignore notice
letters Is the letter detailed
or one-size-fits-all? Competitor?
EPR, PGR, IPR @ USPTO
Rarely a DIY project
Questions?
dab@boagip.com