PATENTS PROF. JANICKE IP SURVEY COURSE 2014. IP Survey -- Patents2 THE USUAL QUESTIONS: CAN I GET A...

PATENTS

PROF. JANICKEIP SURVEY COURSE

2014

2014 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

CASES

• ALICE BANK (software)

• MYRIAD (“product of nature”)


WHAT WE KNOW AT THE MINUTE

• SOFTWARE METHOD CLAIMS:– ARE ELIGIBLE FOR PATENTING IF

THEY RECITE SIGNIFICANT APPLICATION OF THE PRINCIPLES INVOLVED

– OTHERWISE, THEY ARE ABSTRACT AND INELIGIBLE



• CLAIMS TO MATERIALS FOUND IN, OR DERIVED FROM, NATURE– ELIGIBLE IF THE CLAIMS DEFINE

CHANGED MATERIALS (e.g., MODIFIED BACTERIA; cDNA FROM HUMANS)

– OTHERWISE, INELIGIBLE



• CLAIMS TO DIAGNOSTIC METHODS:– APPEAR TO BE INELIGIBLE IF HUMAN

THOUGHT OR OBSERVATION, OR EQUIVALENT ACTION BY COMPUTER, IS INVOLVED

– SEE MAYO v. PROMETHEUS, S.Ct. 2012, INVALIDATING CLAIMS TO METHOD OF DIAGNOSING VITAMIN DEFICIENCY


MOVING TO MORE TRADITIONAL SUBJECTS . .



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:– A CHASSIS– 4 WHEELS– A 10-CYLINDER ENGINE – A BRAKE ON EACH WHEEL– A 3-SPEED TRANSMISSION


HOW TO CLAIM?

• RULE #1: CLAIM MUST EMBRACE SOME STRUCTURE THE INVENTOR ACTUALLY THOUGHT OF

• RULE #2: CLAIM SHOULD BE WORDED AS BROADLY AS POSSIBLE, BUT MUST NOT COVER ANY PREVIOUSLY KNOWN CONFIGURATION

• NEARLY ALL PATENT CLAIMS BEGIN WITH: “A ____, COMPRISING”

• THIS MEANS “A ____, INCLUDING AT LEAST”

• I.E., CLAIM IS OPEN-ENDED


• A CLAIM WORDED TO COVER ONLY WHAT THE CLIENT THOUGHT OF:

– IS MALPRACTICE

– COMPETITORS WILL DESIGN AROUND THAT CLAIM LANGUAGE


INFRINGEMENT IS DEPENDENT ON CLAIM WORDING

• EACH CLAIM STANDS ON ITS OWN, FOR INFRINGEMENT PURPOSES

• EACH CLAIM OPERATES LIKE A “MINI-PATENT”

• IF ONE CLAIM IS INFRINGED, THE PATENTEE WINS THE CASE!


WHY ARE THERE MANY CLAIMS IN A PATENT?

THE UNIVERSAL CUSTOM:

•START WITH A BROAD CLAIM;

•THEN WRITE AN INTERMEDIATE-SCOPE CLAIM

•THEN EVEN NARROWER CLAIMS2014 IP Survey -- Patents 22

THE REASON:

•WE’RE NOT SURE THE BROADEST CLAIM WILL BE ALLOWED;

•OR IF ALLOWED, NOT SURE IT WILL BE FOUND VALID IN COURT;

•SO, WE WRITE NARROWER CLAIMS FOR INSURANCE PURPOSES


EXPLANATION

• HOW CAN A BROAD CLAIM BE INVALID, YET A NARROWER CLAIM BE VALID?

• [CONSIDER THE EXAMPLE, INVENTING THE FIRST CAR – 7 SLIDES BACK]



RETURN TO CAR EXAMPLE

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


POSSIBLE 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.

• DOES THIS WORDING COVER WHAT THE CLIENT DEVISED?

– YES.

– NOTE THE “COMPRISING” WORD - - = “INCLUDING AT LEAST”


CAN THIS CLAIM BE VALID?

• TEST IS: DOES THE LANGUAGE READ ON ANYTHING OLD, AS WELL AS SOMETHING NEW?

• (WE COULD NOT HAVE CLAIMED SIMPLY “A VEHICLE” OR “A WHEELED VEHICLE” FOR THIS REASON)


• HERE THE CLAIM READS ON WHAT THE CLIENT “INVENTED,” BUT IT ALSO READS ON THE OLD STEAM ENGINE.

• CLAIM IS 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??

• PROBABLY NOT; STEERING DEVICE NOT ATTACHED TO A PADDLE-WHEEL


SOME INSURANCE

• TO BE SAFE IF THIS CLAIM TURNS OUT TO BE INVALID,

–WRITE NARROWER CLAIMS

–MAYBE RECITE THE BRAKES, OR THE TRANSMISSION



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

BIG PHARMA PATENTS

• ALWAYS CLAIM, IN CLAIM 1, A GROUP OF COMPOUNDS:

– “COMPOUNDS HAVING THE STRUCTURE


R1R2

“WHERE R1 IS ALKYL, ARYL, OR A HALOGEN ATOM, AND R 2 IS HYDROGEN, A GROUP II METAL, OR AMINO”

•THIS CLAIM COVERS THOUSANDS OF COMPOUNDS

•IF ANY ONE OF THEM IS OLD, THE CLAIM IS INVALID


• BIG PHARMA PATENTS ALWAYS ACCOUNT FOR THIS, BY INCLUDING NARROWER CLAIMS

• TELESCOPING DOWN

• THE COMMERCIAL DRUG IS APT TO BE RECITED ALONE IN A NARROW CLAIM 9, OR CLAIM 13, ETC.

• THEY HOPE CLAIM 1 IS VALID, BUT IF NOT, THE IMPORTANT PRODUCT IS COVERED IN A VALID NARROW CLAIM


• IN OUR EXAMPLE, THE FDA-APPROVED DRUG IS APT TO BE

2 PROPYL – benzene ring – 1,3 DIAMINO xxx

• COVERED BY BOTH 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


HOW EFFECTIVE IS A PATENT?

• DEPENDS ON THE CLAIM BREADTH

• DEPENDS ON $$ TO FIGHT

• 40% OF COURT-TESTED CLAIMS ARE HELD INVALID – TOO BROAD

PTO EXAMINERS

• THEY “ALLOW” OR “REJECT” EACH CLAIM

• THEY OFTEN GET IT WRONG

• THAT IS WHY MANY ISSUED CLAIMS ARE RULED INVALID



DO YOU HAVE TO DO A SEARCH BEFORE FILING?

• NO. BUT NOT SEARCHING ENLARGES RISK OF WASTED EFFORT, BY WRITING UNPATENTABLE (INVALID) 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 VERY NARROW CLAIM SCOPE, MAYBE 90%

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

EXERCISES IN CLAIM-WRITING

• _____



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 APPLIES TO PATENTS WITH FILING DATE UP TO MAR. 16, 2013

• NEW AIA APPLIES FOR FILINGS ON OR AFTER MAR. 16, 2013



PATENT-BARRING “PRIOR-ART” EVENTS:

• OLD LAW: THE FOLLOWING EVENTS ARE A BAR TO VALID FILING, IF IT HAPPENED > 1 YR. BEFORE OUR APPLICANT’S U.S. FILING DATE:

1. PATENTING ANYWHERE

2. DESCRIBING OF ANY EMBODIMENT WITHIN THE CLAIM LANGUAGE– IN ANY KIND OF PRINTED

PUBLICATION ANYWHERE


3. OFFER OF ANY EMBODIMENT FOR SALE IN U.S.

4. PUBLIC USE OF ANY EMBODIMENT IN U.S.

• NOTE: THESE BAR EVENTS CAN BE TRIGGERED BY INVENTOR HIMSELF, OR BY THIRD PARTIES


NEW LAW(FOR APPLICATIONS FILED

3/16/13 AND LATER)

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

BEFORE OUR APPLICANT’S FILING DATE

– 3RD PARTY OFFER FOR SALE ANYWHERE, BEFORE OUR APPLICANT’S FILING DATE


– 3RD PARTY PUBLIC DISCLOSURE (PRINTED OT PHYSICAL) ANYWHERE, BEFORE OUR APPLICANT’S FILING DATE

– 3RD PARTY APPLICATION FILING (IN ANY PARIS CONVENTION COUNTRY)*, BEFORE OUR APPLICANT’S FILING DATE

* [VIRTUALLY ALL COUNTRIES ARE MEMBERS]



UNDER OLD AND NEW LAWS

• IF EVEN ONE CONFIGURATION WITHIN THE CLAIMED FAMILY APPEARS IN THE PRIOR LITERATURE, THE CLAIM IS INVALID– TRUE NO MATTER HOW REMARKABLE

THE OTHER CONFIGURATIONS ARE– DISCOVERY OF GREAT PROPERTIES

WILL NOT SAVE THE CLAIM

THE PROBLEM OF AN OLD COMPOUND

• ASSUME: COMPOUND X EXISTED IN NATURE

• X WAS KNOWN TO BE USEFUL FOR TREATING BURNS

• YOU DISCOVER IT WILL ALSO PREVENT MEASLES, IF INGESTED

• WHAT TO DO?



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– AN OPEN WEBSITE IS ENOUGH

• “ENABLING” DISCLOSURE IS REQ’D.

– SAYING “A ROCKET THAT CAN GO TO THE MOON” WILL NOT COUNT


CASE

• IN RE HALL



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) >>

CASE

• PFAFF v. WELLS



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

CASE

• CITY OF ELIZABETH



SOME PRACTICAL NOVELTY PROBLEMS

UNDER 1952 LAW

• [SEE FILE IN CLASS MATERIALS]

SOME NOVELTY PROBLEMS (AND ANSWERS) UNDER THE

NEW LAW

• FOR PATENTS FILED AFTER MAR. 15, 2013

• [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)

• CASE:– GRAHAM v. JOHN DEERE



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

• ???



INFRINGEMENT OF A CLAIM

(NO CHANGE UNDER NEW LAW)

• 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

DOCTRINE OF EQUIVALENTS

• CASE:–WARNER-JENKINSON


FDA EXEMPTION

• EXEMPTION FROM INFRINGEMENT WHERE MAKING, USING, ETC., ARE FOR FDA CLINICAL TRIALS OR RESEARCH §271(e)


CASE

• ELI LILLY



INDIRECT INFRINGEMENT• INDUCING INFRINGEMENT§271 (b)

• CONTRIBUTORY INFRINGEMENT§271 (c)

• SHIPPING PARTS FOR INFRINGEMENT ABROAD §271 (f)

• IMPORTING or SELLING PRODUCT OF PATENTED PROCESS, WHERE PROCESS WAS CARRIED OUT ABROAD §271 (g)

DANGER: PATENT EXHAUSTION

• “FIRST SALE DOCTRINE”

• FIRST AUTHORIZED SALE (BY PATENTEE OR LICENSEE) EXHAUSTS THE PATENT RE. THE ITEM SOLD



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?

• 1. A POWER DRILL ASSEMBLY, COMPRISING:

(a) AN ELECTRIC MOTOR, SAID MOTOR HAVING GRIPPING JAWS FOR HOLDING A DRILL BIT; AND

(b) A DRILL BIT OF GENERALLY CYLINDRICAL SHAPE, HAVING AN END PORTION AND A DRILLING PORTION, SAID END PORTION ADAPTED FOR INSERTION INTO SAID JAWS, SAID DRILLING PORTION HAVING AT LEAST ONE HELICAL GROOVE IN ITS EXTERIOR SURFACE.


2. A METHOD OF DRILLING IN CONCRETE, COMPRISING:

(a) CONTACTING SAID CONCRETE WITH A DRILL ASSEMBLY, SAID ASSEMBLY COMPRISING AN ELECTRIC MOTOR AND A GENERALLY CYLINDRICAL DRILL BIT, SAID BIT COMPRISING [… recite as in claim 1] AND

(b) ROTATING SAID BIT WITH SAID MOTOR.2014 IP Survey -- Patents 82


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 (ALL MUST JOIN)

• 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


PATENT LITIGATION

• TWO MAIN TYPES

– INFRINGEMENT ACTION

– DECLARATORY JUDGMENT OF INVALIDITY, NONINFRINGEMENT, OR UNENFORCEABILITY (BY ACCUSED INFRINGER or BY A LICENSEE)


ALSO: INFRINGEMENT SUITS AGAINST THE UNITED STATES

• BROUGHT ONLY IN THE COURT OF FEDERAL CLAIMS, FOR COMPENSATION

• NO INJUNCTIONS ALLOWED

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

CASES

• TITANIUM

• LIQUID DYNAMICS


PATENTS PROF. JANICKE IP SURVEY COURSE 2014. IP Survey -- Patents2 THE USUAL QUESTIONS: CAN I GET A...

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