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 foundations

patent legal right granted by the federal government that permit it owner to prevent

others from making, using, selling or importing an invention.

3 types

1 utility patents

2 design

3 plant

vast majority - utility

4 basic req to be eligible for patent protection

1it must be a patentable subject matter as provided for by the statute (utility, design

or plant)

2 useful if utility - does the invention provide some benefit

3 invention must be novel - new

4 non-obvious -would a person having ordinary skill in the field of that invention have

thought of that; if yes-obvious -most litigated

a utility patent is a process, machine, manufacture or any compositional matter

ideas- not patentee

process ok

 - method of doing something

not subject to protection

-products of nature

-laws of nature

how long?

gen: 20 years

after this others are free to use, make, sell invention

AIA

US: first to invent sys before

now: first to file

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LIBERTY UNIVERSITY SOL

patent ownership, transfer and infringement

to receive patent protection: file an application and be granted the patent by the US

PTO?

inventor=application=owner

multiple=all sign

dispute: ownership (mar 2013)

under america invents act (AIA): shift from first to invent sys to first to file sys

-harmonizes with other foreign countries

if dispute:

-derivation proceeding

-purpose : w/n prior applicant derived the invention from a second applicant and w/o

authorization filed the application for the invention

 Ee/ independent contractor:

typically- employment contract handles the issues- provide that Er own the invention

or discoveries achieved during the scope of employment

also Ee will effectuate any docs in order to make assignment effective

if no contract: Shop right?

- Ee will retain ownership of patent but Er will have non- exclusive royalty free, non-

transferable license to use the invention

patents have attributes of personal property they may be

transferred or assigned

transfer must be in writing

also of practice but not required to record the transfer instrument with the US PTO

licensing a patent: v assignment

 

ass: transfer ownership of the patent

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granting a license: allows the licensee to use the invention subj to the terms of the

license

also they can customize the agg w/ regard to duration, scope, terms or territory

patent infringement

patent protection= owner ability to preclude others from making, using, selling or

importing the inv.

direct infringement when make, offer to sell, use, imports patented inv w/o the

owner's permission

-very broad prohibittion

first sale doctrine

- once the patent owner sells one of the inv (like a product) the buyer has the right to

sell the product as s/he sees fit (w/ch is diff from selling the actual patent)

indirect inf

- one encourages someone else to infir, among other things

def defenses:

-patent invalidity

-fraud

-patent misuse

- first inventor defense

-laches

-estoppel

remedies:

-injuctive relief

-compensatory damages

-if willful: punitive damages

patent litigation:

-very expensive and time consuming

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patent law- very technical- involves complicated subj matters

experts involved-very expensive to retain

so resolve out of court if possible

begin with cease and desist letter

also depend on circ also demand letter asking for financial compensation

if not succ

file action with local federal district court

all appeals - us CA for federal circuit in washington DC