PATENTS PROF. JANICKE IP SURVEY COURSE 2012. IP Survey -- Patents2 THE USUAL QUESTIONS: CAN I GET A...

PATENTS

PROF. JANICKEIP SURVEY COURSE

2012

2012 IP Survey -- Patents 2

THE USUAL QUESTIONS:

• CAN I GET A PATENT ON ____?

• IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN IT?

• HOW MUCH WILL IT COST?


THE USUAL QUESTIONS:

• HOW LONG WILL IT TAKE?

• WHAT CAN I DO WITH IT IF I GET IT?


ELIGIBILITY

• JUST ABOUT ANYTHING BELIEVED TO BE “NEW” – BASICALLY NOT KNOWN BEFORE

• COMPUTER SOFTWARE: NOW IN DOUBT

• BUSINESS METHODS: NOW IN DOUBT


ACTUAL INVENTORS USUALLY “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 SINGLE THING ANY

MORE


INVENTORS

• THOSE WHO THOUGHT OF SOMETHING COVERED BY THE CLAIM

• NOT THOSE WHO LEARNED IT FROM SOMEONE ELSE


INVENTORS

• YOU DON’T REALLY KNOW WHO THEY ARE UNTIL THE CLAIMS ARE DRAFTED

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


INVENTORS

• ARE ALWAYS THE INITIAL OWNERS OF THE PATENT RIGHT

• USUALLY THEY ASSIGN TO A COMMON ENTITY, WHICH BANKROLLS THE APPLICATION

AIA CHANGE

• PURPORTED OR ACTUAL ASSIGNEE CAN FILE

• STILL NEED AN INVENTOR STATEMENT

• PROBABLY WILL SELDOM BE USED



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 – A FAMILY OF THINGS


PURPOSE OF A CLAIM: TO DEFINE COVERAGE AS

BROADLY AS POSSIBLE

• ANYONE WHO LATER OPERATES WITHIN THE FAMILY OF A CLAIM IS AN “INFRINGER”

• OTHERS AREN’T


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


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


RETURN TO CAR EXAMPLE

• ASSUME: CLOSEST PREVIOUSLY KNOWN MACHINE WAS THE HORSE-DRAWN WAGON


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.


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


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


ONE EXCEPTION: NEW INFO ON PRIOR ART

• YOU FIND OUT AT SOME POINT THAT THE LOCOMOTIVE PRE-EXISTED YOUR CLIENT’S DEVELOPMENT

• LOCOMOTIVE FITS WITHIN THE CLAIM LANGUAGE

• THIS MAKES THE WHOLE CLAIM INVALID


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.

IS THIS CLAIM VALID?

• IT COVERS THE CLIENT’S CAR

• BUT DOES IT ALSO COVER (“READ ON”) THE PADDLE-WHEEL STEAMBOAT??

• IF SO, INVALID; CAN WE AMEND FURTHER TO FIX THE PROBLEM?



A BROADLY CLAIMED FAMILY IS ESSENTIAL

• MOST PATENTS ARE DEAD LETTERS, BECAUSE THE CLAIM SCOPE IS NOT COMMERCIALLY MEANINGFUL

• EASY TO DESIGN AROUND SUCH CLAIMS


ONLY CLAIMS ARE HELD VALID OR INVALID –

NOT “PATENTS”

• EACH CLAIM IS ADJUDICATED INDEPENDENTLY OF THE OTHER CLAIMS – LIKE A MINI-PATENT


ONLY A CLAIM CAN BE INFRINGED

• ACCUSED INFRINGING PRODUCT/METHOD MUST BE WITHIN LANGUAGE OF THE CLAIM

• THE INFRINGING PRODUCT SELDOM LOOKS LIKE WHAT THE INVENTOR DEVISED OR SHOWED IN THE PATENT DRAWINGS

• “CLAIM SCOPE IS EVERYTHING!”



• MOST PATENTS CONTAIN MANY CLAIMS, OF VARYING SCOPE

• USUAL STYLE: NARROWER CLAIMS TELESCOPE DOWNWARD– ARE NEEDED ONLY IN THE EVENT THE

BROADER CLAIMS ARE HELD INVALID


HOW EFFECTIVE IS A PATENT?

• DEPENDS ON THE CLAIM SCOPE

• DEPENDS ON $$ TO FIGHT

• 45% OF CLAIMS ARE HELD INVALID


DO YOU HAVE TO DO A SEARCH BEFORE FILING?

• NO. BUT NOT SEARCHING ENLARGES RISK OF WRITING UNPATENTABLE CLAIMS.


DO YOU HAVE TO BUILD AND TEST THE INVENTION

BEFORE FILING?

• NO. FILING APPLICATION ACTS AS “CONSTRUCTIVE” REDUCTION TO PRACTICE.

• USUALLY NOT GOOD TO WAIT.


WHAT ARE THE CHANCES OF GETTING A PATENT

ALLOWED?

• IF YOU DON’T CARE ABOUT CLAIM SCOPE, MAYBE 90%

• BUT MOST WILL BE COMMERCIALLY INSIGNIFICANT DUE TO NARROW SCOPE – EASY TO DESIGN AROUND


LACK OF NOVELTY FOR A CLAIM AND LOSS OF RIGHT

TO A CLAIM

• WE NOW HAVE TWO LAWS ON NOVELTY REQUIREMENTS:– PATENTS WITH EFFECTIVE FILING

DATES ON OR AFTER 3/16/13 (“THE NEW LAW”

– PATENTS WITH EFFECTIVE FILING DATE EARLIER THAN 3/16/13 (“THE OLD LAW”)

• OLD LAW WILL DOMINATE PATENT LITIGATION UNTIL AT LEAST 2020

• NEW LAW ON NOVELTY TAKES EFFECT FOR FILINGS ON OR AFTER MAR. 16, 2013– NOT MUCH DIFFERENCE IN PRACTICE– PTO EXAMINERS WILL USUALLY CITE

PRIOR REFERENCES THAT WOULD HAVE BEEN CITABLE UNDER OLD LAW AS WELL.



PATENT-DEFEATING “PRIOR-ART” EVENTS:

• EXISTING LAW:

1. PATENTING ANYWHERE > 1 YEAR BEFORE U.S. FILING DATE

2. DESCRIBING IN PRINTED PUBLICATION ANYWHERE > 1 YEAR BEFORE U.S. FILING DATE

3. OFFER FOR SALE IN U.S.

4. PUBLIC USE IN U.S.

• NOTE: ALL FOUR EVENTS CAN BE BY INVENTOR HIMSELF, OR BY THIRD PARTIES


5. PRIOR INVENTING BY SOMEONE ELSE IN THE U.S., WHO DID NOT UNREASONABLY CONCEAL IT

• NOTE: THIS RARELY HAPPENS. THE SYSTEM LABEL “FIRST-TO-INVENT” IS A MISNOMER


NEW LAW(FOR APPLICATIONS FILED

3/16/13 AND LATER)

• PATENT-DEFEATING EVENTS:– 3RD PARTY PUBLIC USE ANYWHERE,

BEFORE HOME-COUNTRY FILING DATE– 3RD PARTY OFFER FOR SALE

ANYWHERE, BEFORE HOME-COUNTRY FILING DATE


– 3RD PARTY PUBLIC DISCLOSURE ANYWHERE, BEFORE HOME-COUNTRY FILING DATE

– 3RD PARTY APPLICATION FILING* (IN ANY PARIS CONVENTION COUNTRY),** BEFORE HOME-COUNTRY FILING DATE

*PROVIDED THE 3RD PARTY FOLLOWS UP WITH A U.S. APPLICATION.

** PARIS CONVENTION INCLUDES NEARLY ALL COUNTRIES OF THE WORLD


NEW LAW(FOR APPLICATIONS FILED

3/16/13 AND LATER)

• PATENT-DEFEATING EVENTS:– APPLICANT’S OWN PUBLIC

DISCLOSURE > 1 YEAR BEFORE FILING*– APPLICANT’S OWN OFFER FOR SALE >

1 YEAR BEFORE FILING*

* FILING IN ANY COUNTRY STOPS THE CLOCK, WITH USUAL PROVISOS


CONTEST UNDER NEW LAW

• A: IS FIRST TO PUBLICLY DISCLOSE

• B: IS FIRST TO FILE

• WHO WINS THE PATENT?– ANSWER: A WINS. PUBLIC

DISCLOSURE TRUMPS FIRST-TO-FILE (ANOTHER MISNOMER)



UNDER OLD AND NEW LAWS

• IF ANY ONE MEMBER OF THE CLAIMED FAMILY APPEARS IN THE APPLICABLE PRIOR ART, THE CLAIM IS INVALID– TRUE NO MATTER HOW REMARKABLE

THE OTHER SPECIES ARE– DISCOVERY OF GREAT PROPERTIES

WILL NOT SAVE THE CLAIM


A CLOSER LOOK AT “DESCRIBED IN A PRINTED

PUBLICATION”

• ACTUAL PRINTING NOT REQUIRED; REASONABLE ACCESSIBILITY IS SUFFICIENT– BUT DOESN’T HAVE TO BE WELL KNOWN

– CAN BE IN A UNIVERSITY LIBRARY

– ANY LANGUAGE

• “ENABLING” DISCLOSURE IS REQ’D.


A CLOSER LOOK AT THE ON-SALE BAR

• COMPLETED SALE NOT REQUIRED• OFFER IS ENOUGH– NEW LAW: PROBABLY HAS TO BE A

PUBLICLY ACCESSIBLE OFFER [UNCLEAR]

• INVENTION MUST BE “READY FOR PATENTING”

Pfaff v. Wells Electronics, 525 U.S. 55 (1998)


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


SOME PRACTICAL NOVELTY PROBLEMS UNDER EXISTING LAW

• [SEE FILE IN CLASS MATERIALS]

SOME NOVELTY PROBLEMS (AND ANSWERS) UNDER THE

NEW LAW

• [SEE JANICKE-DOLAK SET OF PROBLEMS, IN COURSE MATERIALS]



OBVIOUSNESS• THE CENTRAL GROUND OF

REJECTION IN MOST APPLICATIONS– NOT CHANGED BY NEW LAW

• KEYED TO THE PERSON “OF ORDINARY SKILL IN THE ART” AT THE TIME INVENTION WAS MADE

§103(a)


THE DISCLOSURE PORTION OF THE

APPLICATION

• REFERS TO DRAWINGS, SPECIFICATION (OTHER THAN CLAIMS)

• NORMALLY DOESN’T HAVE MAJOR IMPACT ON SCOPE


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.)

“BEST MODE” REQUIREMENT NOW IN DOUBT

• STILL IN § 112

• ALL PENALTIES FOR VIOLATION HAVE BEEN REMOVED BY AIA

• ???



• THE WRITTEN DESCRIPTION IS SPECIFIC, AND TELLS WHAT THE INVENTOR ACTUALLY DEVISED OR IMAGINED– IS A SMALL PART OF THE CLAIM

SCOPE– A CLAIM MUST INCLUDE WHAT

INVENTOR IMAGINED, i.e., ONE OR TWO MEMBERS OF THE FAMILY, BUT SHOULD COVER A BIGGER FAMILY

– THE INTENT IS TO COVER FUTURE INVENTIONS OF OTHERS!


INFRINGEMENT OF A CLAIM

• JUDGMENT IN A PATENT CASE IS CLAIM BY CLAIM, NOT “THE PATENT”

• ONE CLAIM STANDING VALID AND INFRINGED = A VICTORY FOR THE PATENT OWNER


ACTS OF INFRINGEMENT

• MAKING

• USING

• SELLING

• OFFERING TO SELL

• IMPORTING

§271 (a)

SOMETHING WITHIN

THE CLAIM

IN THE U.S.

DURING THE TERM


INDIRECT INFRINGEMENT

• INDUCING §271 (b)

• CONTRIBUTORY §271 (c)

• SHIPPING PARTS §271 (g)

• IMPORTING PRODUCT OF PATENTED PROCESS §271 (g)


TYPICAL MODERN BUSINESS TRANSACTION

• THREE OR MORE PLAYERS:– PARTS/MATERIALS VENDOR– MANUFACTURER/SELLER– RETAILER

• COULD BE MANY MORE:– CONSULTANT/ADVISOR– END USER


EACH PLAYER NEEDS TO BE ANALYZED FOR

LIABILITY

• CLAIM-BY-CLAIM ANALYSIS

• DON’T COUNT ON INDEMNITY– BUT …..


EXAMPLE: A POWER DRILL FOR HOME USE

• PATENT HAS TWO CLAIMS:

1. STRUCTURE OF A DRILL

2. METHOD OF DRILLING THROUGH CONCRETE, USING THAT DRILL


CONSIDER POSSIBLE INFRINGERS:

• VENDOR OF MOTORS TO TOOLCO

• TOOLCO

• RETAILER

• END USER

WHO IS LIABLE FOR WHAT?


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


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


LICENSING

• PERMISSION TO DO WHAT WOULD OTHERWISE BE ILLEGAL

• 3 GENERAL TYPES:– NONEXCLUSIVE– SOLE [does not exclude patent owner]– EXCLUSIVE [excludes patent owner]


IMPLIED WARRANTIES

• LICENSOR HAS SUFFICIENT TO GRANT THE LICENSE

• LICENSE TO MAKE INCLUDES “HAVE MADE”


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


NOT IMPLIEDLY WARRANTED:

• RIGHT TO SUBLICENSE 3RD PARTIES

• RIGHT TO ASSIGN THE LICENSE– PERILOUS UPON MERGER


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)


SUITS AGAINST THE UNITED STATES

• MUST BE IN COURT OF FEDERAL CLAIMS

• NO INJUNCTIONS ALLOWED

• NO SUITS OR REMEDIES OF ANY KIND ARE ALLOWED AGAINST FEDERAL CONTRACTORS

PATENTS PROF. JANICKE IP SURVEY COURSE 2012. IP Survey -- Patents2 THE USUAL QUESTIONS: CAN I GET A...

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