1 United States Patents An Overview. 2 What is a patent? Fournier

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United States Patents An Overview

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What is a patent?

Fournier

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Patent Definition

A patent, in the United States is an intellectual property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

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• Patents can generally only be enforced through civil lawsuits .

• Typically, the patent owner will seek monetary compensation for past infringement, and will seek an injunction prohibiting the defendant from engaging in future acts of infringement.

• Forms of protecting intellectual property include: patents, registered design, copyright and trademark.

Patent Definition

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How long does a patent last?

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Patent Duration

In the United States, a patent term lasts for a

period of 20 years from date of the filing of

the patent application.

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What types of patents are there?

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Patent Types

There are three types of patents

• Utility – may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof

• Design – may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture

• Plant – may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant

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Patent Types

There are two types of patent applications that canfilled with the USPTO (United States Patent andTrademark Office):• Provisional (patent pending) - Provisional patent

applications are not examined by the USPTO and never directly become an actual patent.– They are placeholders used as a way to get a filing date

for the technical description that is contained in the application.

– All provisional applications must have a non-provisional application filed in their place within one year of the provisional filing date.

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Patent Types (continued)

• Non-provisional applications (utility or design), unlike provisional applications, are examined by the USPTO. If all of the requirements for patentability are satisfied, the non-provisional application will mature into a patent.

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Patent Types (continued)

• Both provisional and non-provisional applications must include a complete written description or specification of the invention. The written description must fully comply with the requirements discussed earlier, being a complete and clear description of how to make and use the invention. – It is very important to consider, especially when

filing a provisional application, whether all of the technical details of the invention are developed enough to be included in a complete description, because the non-provisional application and ultimate patent will have to depend on it.

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Recent Changes with Patents

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Patent Changes

• Recently the America Invents Act was passed.

• Made changes to the patent process/law

• First to file system– No longer “first to invent”– Aligns US with the rest of the world

• Post Grant Review– 9 month window for a patent to be

reviewed/challenged

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Patent Changes

• Patent Provisions– No patents for reducing, avoiding, or deferring tax

liability, or to claims covering human organisms. – A 15% surcharge added to all patent- related fees

and patent-maintenance fees

• Filing Fees– New “micro entity” fee for independent inventors– 25% large entity fee

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What does a patent consist of?

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Patent Content

A patent includes a complete technical description

of the invention, together with other older

related inventions and devices, which will be

helpful for the reader to understand the new

invention.– The description must be in enough detail that

readers who are skilled in the field of the invention can make and use the invention themselves. The patent document also may contain detailed drawings.

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Patent Content (claims)

The patent ends with the recitation of the actual

boundaries of the invention, known as the

“claims.” Claims are one-sentence descriptions of

the precise features, which make up the invention.

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Patent Content (claims example)

A stool might be claimed as: “A device for supporting a person in a sitting position, having a flat seat supported some distance from the ground by legs.”

A chair, on the other hand, might be claimed as: “A device for supporting a person in a sitting position, comprising a flat seat, aback support attached to the seat, and legs supporting the seat some distance from the ground.”

The chair would be patentable “over” the stool, as it has a unique element not found in the stool, namely, the back. The stool, would, however, not be patentable in light of the chair.

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Patent Content (claims example)

Infringement is found when another device, sometimes called the

“accused product,” includes all of the elements listed in the claims.

Using the chair example, the chair would infringe the stool claim,

Because it has all of the elements, but the stool does not infringe

the chair claim, because it doesn’t have a back.

It is important when creating the claims to balance the number of

elements necessary to get a patent allowed (since including more

elements makes the invention more patentable because the elements are

not shown in a prior device) and the minimum number of elements that

describe the invention (since including less elements makes it easier to

find infringement in other devices).

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What are the criterion?

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• Novelty – when the combination of claimed features cannot be found in a single document

• Inventive Step – the idea should not be obvious to a person of ordinary skill experienced in the particular technology

• Capable of Industrial Application – able to be manufactured and useful

• Not an excluded category – not a discovery, scientific theory, surgery, immoral, offensive, threat to national security, plant variety, literary works, aesthetics

Patent Criteria

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What kind of invention can get patent protection?

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Receiving a Patent

In the United States, there are several

requirements to receive a patent for an invention.

An invention must fall within one of four specific

technical categories and must also meet three

requirements: utility, novelty and non-obviousness.

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• Utility means usefulness. Each invention must be useful for some purpose. – majority of inventions are usually not challenged as

lacking utility– prevents the patenting of fantastic or inoperative

devices• Example – Perpetual Motion Machines (produce more work

or energy than they consume)

Receiving a Patent (continued)

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• Novelty relates to the uniqueness of the invention, in that the elements of the invention (found in the claims, described earlier) have not already been developed and/or described by someone else.

An invention is considered to be not “new” or “novel” if:1. It was known or used by others in the U.S. before the

applicant “invented” it.2. It was patented or described in a printed publication

anywhere before the applicant “invented” it.3. It was patented or described in a printed publication

anywhere more than one year before the applicant filed an application for a patent in the U.S..

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4. It was in public use or on sale in the U.S. more than one year before the applicant filed an application for a patent in the U.S..

5. It was described in a U.S. patent granted to someone else that was filed before the applicant “invented” it.

6. It was not actually invented by the applicant.

7. Before the applicant’s “invention,” it was made by someone else in the U.S. who did not abandon, suppress or conceal it.

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• Non-obviousness means that the invention is not just an obvious small improvement to a known device or process.

– In practice, this is evaluated by an examiner. The examiner will usually show obviousness by combining two existing inventions to find all of the elements of the invention being examined.

– For example, if the inventor is trying to patent a chair with arms and the prior art shows a patent for chairs without arms and another patent for sofas with arms, the examiner will state that putting arms on a chair is an obvious improvement, since arms were already put on other seating devices.

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There are four specific technical categories of invention:1. Processes2. Machines3. Articles of manufacture (things that are made, like a pencil)4. Compositions of matter (chemical compounds).

Not all new and useful inventions can be patented; instead, only those inventions that fall within these categories are eligible for patent protection. Things such as laws of nature, naturally occurring products of nature and physical phenomena are noteligible for patent protection because they do not fall within one of the identified classes of invention.

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Flowchart for the common utility patent application:

http://www.uspto.gov/patents/process/index.jsp

Find full texts of patents at:

http://www.google.com/patents

http://www.uspto.gov/

Patent Information

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What was the first patent in the US issued for…any guesses?

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First US Patent

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First US Patent…Potash?!?

On July 31, 1790 Samuel Hopkins was issued

the first patent for a process of making potash,

an ingredient used in fertilizer. The patent was

signed by President George Washington.

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First US Patent…Potash?!?

This first patent, as well as the more than 6

million patents issued since then, can be seen

on the Department of Commerce's U.S. Patent

and Trademark Office website at:

www.uspto.gov.

The original document is in the collections of

the Chicago Historical Society.

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How much does it cost to get a patent?

(ok maybe not this much)

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Patent Cost

Many different companies offer a variety ofservices to help inventors obtain patents.

The US Patent Office charges a $110 patent application filling fee.

The lowest prices we found through variouspatent services were:

1. Patent search: $3992. Provisional patent application: $499

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Patent Cost (continued)

So unless you are an attorney, you are

Looking at a minimum cost of $3000 to file a

US patent.

Some patent services were MUCH higher

ranging over $15000.

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What are some actual patent legality examples?

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Intermittent Windshield Wipers

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The journey to the intermittent windshield wipers invention began on Robert Kearns' wedding night in 1953, when a champagne cork popped and struck his left eye, which eventually went almost totally blind. Nearly ten years later, in 1963, Kearns was driving his Ford Galaxie through a light rain, and the constant movement of the wiper blades irritated his already tenuous vision. He modeled his invention on the human eye, which automatically blinks every few seconds. In 1967 he received a patent.

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Kearns won one of the best known patent infringement cases against Ford Motor Company. Having invented and patented the intermittent windshield wiper mechanism he tried to interest the “Big Three" auto makers in licensing the technology. They all rejected his proposal, yet began to install intermittent wipers in their cars beginning in 1969.

The Ford case went to trial in 1990 and there were two trials. Ford lost, although the court held that Ford's infringement was not willful (meaning that damages for infringement would not be enhanced). Ford agreed to settle with Kearns for 10.1 million with an agreement of no further appeals.

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The iPod

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The iPod

Hitchin, Hertfordshire, U.K.: Kane Kramer left school at 15. But that didn't stop him from-- apparently -- inventing the iPod.

Kramer is now 53. The father of three had to sell his home last year and move his wife and kids to a rental home after he was forced to shut-down his struggling furniture business.

Kramer conceived and built a "Portable Data Processing and Storage System" in 1979, at age 23. He received a UK patent in 1985 and a US patent in 1987.

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The iPod

He called it the IXI, and it stored just 3.5 minutes of music on to a chip – but Kramer figured the capacity would improve over time.

Kramer tried to commercialize his device, but in 1988, unable to raise about $100K in U.S. dollars and feuding with his partners, he couldn't renew patents across 120 countries and the technology became public property.

Today Apple sells about 100 iPods a minute.

Kramer is at least now seeking to negotiate with Apple to gain some compensation from the copyright that he owns on the drawings.

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The iPod

His sketches reflected a credit-card-sized player with a rectangular screen and a central menu button to scroll through a selection of music tracks – seem familiar?

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Thank You

Presented by:Russell Brax

Luke EftaMike MuellerLiz Tansey

Documents

1 United States Patents An Overview. 2 What is a patent? Fournier