PatentEng-Berkeley-Lavian Week 4: The Patent Process 1 Patent Engineering IEOR 190G CET: Center for...

PatentEng-Berkeley-Lavian Week 4: The Patent Process 1

Patent EngineeringIEOR 190G

CET: Center for Entrepreneurship &Technology

Week 4

Dr. Tal Lavian(408) 209-9112

[email protected]

321 HavilandMondays 4:00-6:00

How Patents Are Used

Corporate Product protection Corporate Value Defensive portfolio Licensing

Consultant Entrepreneurial Professional credibility

PatentEng-Berkeley-Lavian 2Week 4: The Patent Process


Recent Patent Verdicts & SettlementsOr – Why it is really important?

• Alcatel/ Lucent v. Microsoft. - (2007) - $1.5 Billion

• NTP – Settled with RIM for $612M (plus $53M litigation plus verdict)• Intergraph – over $880M in settlement from patent litigation with Intel, HP

and others• Eolas v. Microsoft (2003). $506M Jury verdict• Immersion v. Sony (2004). $82M jury verdict plus royalties

– increased (2007) to $150M– vibration game controller - Microsoft settlement on $26

• Freedom Wireless v. BCGI (2005) $128 jury verdict• Finisar v DirectTV (2006). 103M (79+24)Jury verdict plus injunction • Tivo v. EchoStar (2006). $74M jury verdict plus injunction • Acacia - $60M in licensing revenue (2004-2006)• Forgent - $100M in licensing revenue 2004-2006

PatentEng-Berkeley-Lavian 4

Who is an Inventor?

• A person who alone or in conjunction with others makes a material contribution to the conception of an invention (conceived the idea)

• A person who reduces the conception to practice if it requires extraordinary skill

• Non-Inventors: – Persons who implement the ideas of others– Persons who have obtained the entire idea of an

invention from another are not inventors– Persons who suggest concepts without contributing to

the means for carrying out the suggestion (“Wouldn’t it be nice if….”)

Week 4: The Patent Process


What can be patented?• “Everything under the sun made by man.”

– Products: things– Processes: ways to make things– Methods: ways to do things– Improvements: better things

• Defined Classes– Article of Manufacture– Machine– Composition– Process

• Some more:– Business Methods – Services – Software


What Is Not Patentable

• Laws of nature (wind, gravity)• Physical phenomena (sand, water)• Abstract ideas (mathematics, a

philosophy) – Algorithms per se

• Anything not useful, Novel and Non-Obvious (perpetual motion machine)

• Inventions which are offensive to public morality or designed for an illegal activity


Criteria – Legal Standards• Novelty

– Does not exist in the prior art– Not previously disclosed to public– OK if Modification/Improvement of an existing product/process, or use of something “old” in new/different way

• Usefulness - Utility - Performs a useful function• Non-obviousness

– Non-trivial - It would not have been obvious to one skilled in the art to combine multiple items in the public domain to arrive at or show the invention – Not Engineer’s normal sense of “obviousness”!

• Enabled

Patents Must Be Novel

Must be new - No “Prior Art”

Not done before in substantially the same way Not known to the public before it was

“invented” Not described in a publication (*) Not used or offered for sale publicly (*)

* more than one year before filing patent



Statutory Bars

• Patent rights to an invention will be lost if:– The invention is used publicly– The invention is sold or offered for sale– The invention is published in a printed

publication or a patent – Before the filing of a patent application

• (more than one year in U.S.)


Prior Art

• Information prior to the date of a patent application

• Existing relevant technology

• Can be your own technology or acts


Foreign Standards for Prior Art

• “Absolute novelty” • The invention must not have been disclosed

or available to the public at any time before the filing of the application

Patents Must be Useful

Useful – process, method Meets a need or solves a problem Current or anticipated Can be “reduced to practice”

operated or enabled (e.g. can be built and function)

Can be an improvement (better mousetrap)



Utility Patent Types

• Two types of US Utility Patents– Provisional application– Non-Provisional application

• Continuation• Divisional• CIP• PCT International


Other Types of Patents

• Design Patents– Novel, non-obvious – Ornamental design in an article of

manufacture • In other words, for its appearance

– The term of a design patent is 14 years from the date of grant

• Plant Patent– new or discovered asexually reproduced

plant

Design Patent Example



Types of Patents

Type Is for Term #s

Utility Function, use

20 years 6,214,874

Design Appearance 14 years D202,331

Plant Asexually reproduced

20 years PP10123

The Patent Process

Application Preparation Application Patent Office Rejections Patent Granting Patent Challenges


Application Preparation

Loop until perfect (order may vary): Clarify the invention Draft Claims Prior Art Search & Review Describe Preferred Embodiment Rough drawings

Prepare Final Drawings Prepare Application forms & fees “package”


Application Submission

Submit “package” by certified mail Get return receipt & acknowledgement from PTO

The long wait, at least a year, maybe two Depends on “art unit” work load and other factors

Protected from date of filing: maybe Easier for an application to be challenged than after

patent that has been granted. Application can be contested by evil-doer


Application Rejections The patent examiner will review the patent according to PTO

rules, often consults with other examiners and supervisor Patents are almost always rejected at first Need to respond by “overcoming” the rejection with:

Explain why rejection is invalid Prior art cited does not applyWhy it would not be obvious to one skilled in the art

Modify, add or delete claims Possible to talk with examiner, best done with attorney or patent

agent (keep record of what was agreed to & copy examiner) May loop through this process until patent granted or limit on

number of “office actions”


Patent Granted - Hooray!! Once notified that the patent is granted

Legal protection begins Presumed to be a valid invention Patent and “history file” becomes publicly available

Individual inventors deluged with sales offers: Buy engraved plaques, mugs, etc Sign up with companies to market your invention

(for a fee)


Week 4: The Patent Process

The Issued Patent

• Takes 1½ to 5+ years for a patent to issue from time of original application filing

• Is effective as a property right from date of issuance

• Confers exclusive right to owner to make, have made, use, sell, offer for sale or import patented invention or products/services incorporating invention (i.e., right to exclude others from doing such things)

• Typically, patents endure for 20 years from the date of earliest application filing

Copyright © 2008 Duane R Valz. All Rights Reserved

PatentEng-Berkeley-Lavian 26

The Patent ChallengeWhen the patent is “asserted” against a product, the accused

company will usually challenge the patent. Review the patent and history file

Look for prior art that would invalidate the patent Challenge PTO finding on obviousness or other errors Can patent be implemented by one skilled in the art If they can find something, they may:

use this to repel assertion ask PTO to “re-examine” the patent

May occur during negotiations or after a lawsuit is filed. A patent that survives a “legal” challenge becomes more valuable

because it has been “tested” But very expensive and risky.


PatentEng-Berkeley-Lavian Week 4: The Patent Process 1 Patent Engineering IEOR 190G CET: Center for...

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