Patent Considerations for Engineers Angela M. Davison Ross Operating Valve Company [email protected] February 16, 2005

Patent ConsiderationsPatent Considerationsforfor

EngineersEngineers

Angela M. DavisonAngela M. Davison

Ross Operating Valve CompanyRoss Operating Valve Company

[email protected]@rosscontrols.com

248-764-1873248-764-1873

February 16, 2005February 16, 2005

Differences Between a Patent and the other Differences Between a Patent and the other Four Types of IPFour Types of IP

TrademarkTrademark Definition: A word, slogan, design, picture, or Definition: A word, slogan, design, picture, or

any other symbol used to identify and any other symbol used to identify and distinguish goods or servicesdistinguish goods or services

Purpose: communicate to the public the origin Purpose: communicate to the public the origin of the goodsof the goods

Word: “McNugget”—think McDonald’sWord: “McNugget”—think McDonald’sSlogan: “Just do it”—think NikeSlogan: “Just do it”—think Nike

Design: Design: --think Hewlett Packard--think Hewlett Packard Think “Sales & Marketing”Think “Sales & Marketing”


CopyrightCopyright Definition: A right owned by every author of Definition: A right owned by every author of

a work to exclude others from doing any of a work to exclude others from doing any of the following activities in connection with the the following activities in connection with the work: (1) reproduction, (2) Adaptation, (3) work: (1) reproduction, (2) Adaptation, (3) Distribution to the public, (4) Performance in Distribution to the public, (4) Performance in public or (5) Display in publicpublic or (5) Display in public

Think “Creative arts,” exception: software Think “Creative arts,” exception: software programsprograms

Note: Copyrighting your lab notebooks Note: Copyrighting your lab notebooks protects only your unique wording, layout protects only your unique wording, layout and presentation; it does not protect the and presentation; it does not protect the factual or technical contentfactual or technical content


Trade SecretTrade Secret Definition: Business information that is Definition: Business information that is

the subject of reasonable efforts to the subject of reasonable efforts to preserve confidentiality and have value preserve confidentiality and have value because it is not generally known in the because it is not generally known in the tradetrade

Examples: formulae, devices, Examples: formulae, devices, manufacturing processes, customer lists & manufacturing processes, customer lists & preferencespreferences

Uses: good alternative to a patent if Uses: good alternative to a patent if invention cannot be reverse-engineered invention cannot be reverse-engineered [i.e. recipe & formulation of Coca-Cola][i.e. recipe & formulation of Coca-Cola]

Think “Business”Think “Business”


Trade DressTrade Dress Definition: A specialized type of Definition: A specialized type of

trademark for packaging where trademark for packaging where the totality of all elements of the the totality of all elements of the packaging that is capable of packaging that is capable of identifying and distinguishing identifying and distinguishing goods or servicesgoods or services

Examples: shape of Coca-Cola Examples: shape of Coca-Cola bottle, Barbie pink, Tiffany’s “little bottle, Barbie pink, Tiffany’s “little blue box,” Taco Bell restaurantblue box,” Taco Bell restaurant

Think “Sales & Marketing”Think “Sales & Marketing”


PatentPatent Definition: A grant by the federal Definition: A grant by the federal

government to an inventor of the government to an inventor of the right to exclude others from right to exclude others from making, selling, or using the making, selling, or using the inventioninvention

Types: Provisional, Utility, Design Types: Provisional, Utility, Design and Plantand Plant

Think “Innovation”Think “Innovation”


Types of U.S. PatentsTypes of U.S. PatentsProvisionalProvisional

Valid for only 1 year after filing dateValid for only 1 year after filing date Used when (1) 102(b) event or (2) save Used when (1) 102(b) event or (2) save

the date prevents filing of utility the date prevents filing of utility applicationapplication

Contains a minimum of a specification, Contains a minimum of a specification, can have drawings and claimscan have drawings and claims

Must file utility patent within one year, or Must file utility patent within one year, or lose earlier filing datelose earlier filing date


Types of U.S. PatentsTypes of U.S. PatentsUtilityUtility

What people usually think of as being a What people usually think of as being a patentpatent

20 year term20 year term Covers devices, methods & processesCovers devices, methods & processes Protection is geared to the functionality of Protection is geared to the functionality of

the invention described, not necessarily its the invention described, not necessarily its appearanceappearance

Contains specification & claimsContains specification & claims Claims are the specific phrases that lay Claims are the specific phrases that lay

out the metes & bounds of an invention, out the metes & bounds of an invention, like a fence lays out the boundaries of like a fence lays out the boundaries of land.land.

Specification is everything else, including Specification is everything else, including the drawingsthe drawings


Types of PatentsTypes of Patents

DesignDesign Protects only the appearance of an Protects only the appearance of an

object, not its functionalityobject, not its functionality Contains only drawings [which serve as Contains only drawings [which serve as

the claims]the claims] 14 year term14 year term


Types of PatentsTypes of Patents

PlantPlant Granted to anyone who discovers or Granted to anyone who discovers or

asexually reproduces a new variety asexually reproduces a new variety of plant; cannot be tuber-propagatedof plant; cannot be tuber-propagated

Very rareVery rare 20 year term20 year term

Differences Between a Patent and the Differences Between a Patent and the other Four Types of IPother Four Types of IP

Multiple types of protectionMultiple types of protection A single invention often requires multiple A single invention often requires multiple

types of protectiontypes of protectionEx: Ross Controls’ L-O-X valve [a Ex: Ross Controls’ L-O-X valve [a

lock-out lock-out tag-out device] has a utility tag-out device] has a utility patent, a design patent, a design patent and a patent and a trademark on the L-O-X name, trademark on the L-O-X name, and a and a copyright on the underlying copyright on the underlying schematicsschematics

Trade secrets & patent protection are Trade secrets & patent protection are mutually exclusive; treat all info as if it mutually exclusive; treat all info as if it were secret until patent issueswere secret until patent issues

Differences Between a Patent and the Differences Between a Patent and the other Four Types of IPother Four Types of IP

Need to think about what types of Need to think about what types of protection your invention will need during protection your invention will need during & after the inventing process & the steps & after the inventing process & the steps you will need to take to obtain the you will need to take to obtain the protection protection

Federal Trademark registrations must be Federal Trademark registrations must be filed with USPTO, Federal Copyright filed with USPTO, Federal Copyright Registration must be filed with US Registration must be filed with US Copyright Office, preserving confidentiality Copyright Office, preserving confidentiality via confidentiality agreements, proper via confidentiality agreements, proper marking of documents, need-to-know marking of documents, need-to-know secrecysecrecy

Keeping the Invention NotebookKeeping the Invention Notebook

Legal importance of the notebookLegal importance of the notebookEvidenceEvidence

In the event of an infringement suit or an In the event of an infringement suit or an interference, a properly annotated interference, a properly annotated notebook is good evidence of the dates of notebook is good evidence of the dates of invention & the substance of an invention. invention & the substance of an invention. The notebook will add credibility to oral The notebook will add credibility to oral assertions of dates & substanceassertions of dates & substance

Proof of no misconduct on part of inventor Proof of no misconduct on part of inventor or inventor’s employeror inventor’s employer

Pre-date prior art—swear behind a Pre-date prior art—swear behind a referencereference

Determination of inventorshipDetermination of inventorship


Keep contents of notebook a secret Keep contents of notebook a secret (trade secrets must be subject to (trade secrets must be subject to reasonable efforts to keep info reasonable efforts to keep info secret)secret)

Record access to notebookRecord access to notebook Limit access to those with need-to-Limit access to those with need-to-

knowknow Non-disclosure agreementNon-disclosure agreement Lock notebook up at nightLock notebook up at night


Contents of notebookContents of notebook Equipment used, illustrations of set-upEquipment used, illustrations of set-up Theory underlying experimentsTheory underlying experiments Ideas for additional experimentsIdeas for additional experiments Potential new product usesPotential new product uses Why—all of the above are evidence of Why—all of the above are evidence of

conceptionconception Word choice—avoid editorial comment Word choice—avoid editorial comment

[i.e. good, bad, failure], caution on [i.e. good, bad, failure], caution on charged word choice [i.e. use “thermal charged word choice [i.e. use “thermal event” not “fire”]event” not “fire”]


Contents of notebookContents of notebook Alterations—use strikethrough, not White-Out; Alterations—use strikethrough, not White-Out;

never tear out a pagenever tear out a pageall destroy credibility of all destroy credibility of notebooknotebook

Keep in chronological orderKeep in chronological order No blank sections or pages—cross-out unused No blank sections or pages—cross-out unused

spacespace Attesting the notebook (witness)Attesting the notebook (witness) Do it periodically—weekly, bi-weeklyDo it periodically—weekly, bi-weekly ““Read and Understood by X, date”—witness must Read and Understood by X, date”—witness must

be capable of understanding the technologybe capable of understanding the technology Two witnesses are better than one, rotate the Two witnesses are better than one, rotate the

witnesseswitnesses Electronic notebooks—are often convenient, but Electronic notebooks—are often convenient, but

as of today, there are no court cases ruling on as of today, there are no court cases ruling on the evidentiary value of such methods, so there the evidentiary value of such methods, so there is risk in using them.is risk in using them.

Things Inventors do that Jeopardize Things Inventors do that Jeopardize AbilityAbility

to Obtain Patentto Obtain PatentActions before Critical DateActions before Critical DateDefinition—the date exactly one year before Definition—the date exactly one year before the filing date of the patent applicationthe filing date of the patent application The Law—35 U.S.C. §102(b)—the The Law—35 U.S.C. §102(b)—the “statutory bar” or the “on-sale bar”“statutory bar” or the “on-sale bar”

If the invention was:If the invention was: patented or the subject of printed patented or the subject of printed

publication anywhere in the world ORpublication anywhere in the world OR on sale or in use in the USon sale or in use in the US before the critical date, you cannot before the critical date, you cannot

get a patentget a patent


to Obtain Patentto Obtain Patent

What does “the invention” mean?What does “the invention” mean? The invention as actually reduced The invention as actually reduced

to practice [the product]to practice [the product] ““ready for patenting”—the ready for patenting”—the

invention is substantially completeinvention is substantially complete


to Obtain Patentto Obtain PatentWhat does “printed publication” mean?What does “printed publication” mean? Anything that is catalogued—doesn’t have to Anything that is catalogued—doesn’t have to

be paper, can be computer disk, program, be paper, can be computer disk, program, websitewebsite

Doctoral thesis in a German library’s card Doctoral thesis in a German library’s card catalogcatalog

Advertisements for the invention [even ones Advertisements for the invention [even ones you don’t authorize]you don’t authorize]

Instruction manual for inventionInstruction manual for invention A pictureA picture



What does “on-sale” mean?What does “on-sale” mean? You literally sold the inventionYou literally sold the invention You offered to sell the invention [i.e. You offered to sell the invention [i.e.

submitted a contract to another submitted a contract to another party to sell the invention]party to sell the invention]

You advertise the inventionYou advertise the invention Licensing is OK [for now!]Licensing is OK [for now!]


to Obtain Patentto Obtain PatentWhat does “in use” mean?What does “in use” mean? It’s already in the public domain [i.e. It’s already in the public domain [i.e.

can’t patent the Internet now]can’t patent the Internet now] You showed your invention at a trade You showed your invention at a trade

showshow You showed your invention at a senior You showed your invention at a senior

design invention review day that was design invention review day that was open to the public where the public was open to the public where the public was not asked to sign a non-disclosure not asked to sign a non-disclosure agreementagreement



Other countriesOther countries Laws different than U.S.Laws different than U.S. Many have a Many have a complete barcomplete bar——

can’t do any of the above until a can’t do any of the above until a patent is filed; if you do, you patent is filed; if you do, you cannot get a patent under any cannot get a patent under any circumstancescircumstances



Protections against 102(b) Protections against 102(b) issuesissues

The provisional patent The provisional patent applicationapplication

Confidentiality / Non-Confidentiality / Non-disclosure agreementsdisclosure agreements

InventorshipInventorship

Definition: An inventor is one who Definition: An inventor is one who conceives of subject matter that is the conceives of subject matter that is the subject of a claim in a patent subject of a claim in a patent application. One is not an inventor if application. One is not an inventor if she merely suggests the desired results she merely suggests the desired results but does not provide any substantive but does not provide any substantive information on how to achieve the result information on how to achieve the result [ideas alone are not enough][ideas alone are not enough]

InventorshipInventorshipBecause inventorship depends upon what is Because inventorship depends upon what is claimed in a patent, one cannot technically claimed in a patent, one cannot technically determine inventorship until the patent is determine inventorship until the patent is completely draftedcompletely drafted..

Example: Moe, Larry and Curly develop a Example: Moe, Larry and Curly develop a new stapler. Moe developed a feature that new stapler. Moe developed a feature that makes the stapler walk. Larry developed a makes the stapler walk. Larry developed a feature that makes the stapler talk, and feature that makes the stapler talk, and Curly developed a feature that makes the Curly developed a feature that makes the stapler type. They file a patent for their stapler type. They file a patent for their new stapler. However, the only features new stapler. However, the only features that appear in the claims of the patent are that appear in the claims of the patent are the talking and the typing. Hence, only the talking and the typing. Hence, only Larry and Curly are inventors. Larry and Curly are inventors.

InventorshipInventorshipConceptionConception

the mental development and the mental development and disclosure of an idea for an inventiondisclosure of an idea for an invention

an invention is “conceived” when an invention is “conceived” when the inventor thinks of the solution the inventor thinks of the solution [i.e. the invention] to a problem and [i.e. the invention] to a problem and discloses the solutiondiscloses the solution

an idea is properly “disclosed” when an idea is properly “disclosed” when a person of ordinary skill in the art a person of ordinary skill in the art can practice [i.e. build, use, etc] the can practice [i.e. build, use, etc] the inventioninvention


ConceptionConceptionone is a “person of ordinary skill in the one is a “person of ordinary skill in the art” is someone who has ordinary level of art” is someone who has ordinary level of proficiency in the technical area of the proficiency in the technical area of the invention [i.e. for an invention consisting invention [i.e. for an invention consisting of a new hair trap for plumbing pipe, a of a new hair trap for plumbing pipe, a person of ordinary skill in the art is a person of ordinary skill in the art is a plumber, not a Ph.D. civil engineering plumber, not a Ph.D. civil engineering professor]professor]


Joint inventorshipJoint inventorship Inventors must collaborate with each otherInventors must collaborate with each other collaboration occurs when inventors work collaboration occurs when inventors work

together for a common goal that is achieved by together for a common goal that is achieved by the united efforts of all of the inventorsthe united efforts of all of the inventors

JI’s don’t have to be physically co-locatedJI’s don’t have to be physically co-located JI’s don’t have to work on the invention at the JI’s don’t have to work on the invention at the

same timesame time JI’s don’t have to make the same amount of JI’s don’t have to make the same amount of

contribution to the inventioncontribution to the invention JI’s don’t have to jointly invent every claim in the JI’s don’t have to jointly invent every claim in the

patentpatent Usually arises in the context of determining Usually arises in the context of determining

whether a supervisor or a lab technician is an whether a supervisor or a lab technician is an inventorinventor

InventorshipInventorshipInventorship & OwnershipInventorship & Ownership

Inventor is presumed to be the owner of a patentInventor is presumed to be the owner of a patent Joint inventors by default are co-equal owners of Joint inventors by default are co-equal owners of

the patent, even if they made unequal the patent, even if they made unequal contributions to the inventive subject matter.contributions to the inventive subject matter.

Employers usually require engineers to assign all Employers usually require engineers to assign all inventions made for the company to the inventions made for the company to the company as a condition of employmentcompany as a condition of employment

If you want to invent something that you also If you want to invent something that you also own in the same field of your employment, keep own in the same field of your employment, keep the inventive process entirely separate from the inventive process entirely separate from employment [i.e. do not use work computer, employment [i.e. do not use work computer, work copier, work equipment, etc.]. If not, by work copier, work equipment, etc.]. If not, by default, employer has shop right [non-exclusive, default, employer has shop right [non-exclusive, royalty-free license] in the invention. Some royalty-free license] in the invention. Some employers will require you to contract an employers will require you to contract an ownership interest.ownership interest.


Correcting inventorship errorsCorrecting inventorship errors Usually allowed by the PTO & Usually allowed by the PTO &

courts, even after the patent courts, even after the patent issuesissues

Worse-case scenario—patent will Worse-case scenario—patent will be invalidated if inventorship is be invalidated if inventorship is inaccurateinaccurate

Intellectual Property Intellectual Property ContractsContracts

Employment AgreementEmployment Agreement Assign all inventions made on the job to the Assign all inventions made on the job to the

employer in exchange for having a jobemployer in exchange for having a job Grant a shop right to all inventions made Grant a shop right to all inventions made

using company equipmentusing company equipment If you want to keep your inventions free & If you want to keep your inventions free &

clear of ownership or use rights by employer, do clear of ownership or use rights by employer, do so on your own time & your own equipmentso on your own time & your own equipment

Promise to not take trade secrets [i.e. customer Promise to not take trade secrets [i.e. customer lists, manufacturing methods, secret formula]lists, manufacturing methods, secret formula]

Covenant not to compete—can only be valid in Covenant not to compete—can only be valid in limited geographic areas and for a limited timelimited geographic areas and for a limited time


Non-disclosure/Confidentiality Non-disclosure/Confidentiality AgreementAgreement

Agreement where confidant promises not to Agreement where confidant promises not to share any of the discloser’s [i.e. inventor’s] share any of the discloser’s [i.e. inventor’s] proprietary & technical informationproprietary & technical information

Used when an inventor approaches a company Used when an inventor approaches a company with an investment opportunity in the inventionwith an investment opportunity in the invention

Used when a manufacturer approaches a supplier Used when a manufacturer approaches a supplier with an invention for the supplier to construct & with an invention for the supplier to construct & produceproduce

In the event the confidant does not keep the In the event the confidant does not keep the information secret, suit for breach of contract, information secret, suit for breach of contract, trade secret theft, etc.trade secret theft, etc.


Licensing AgreementLicensing Agreement Holy Grail for the solo inventorHoly Grail for the solo inventor Agreement where owner retains Agreement where owner retains

ownership of the patent but allows the ownership of the patent but allows the licensee to practice the invention in licensee to practice the invention in exchange for percent of profits, exchange for percent of profits, royalties, etc.royalties, etc.

Can be exclusive; if exclusive, licensee Can be exclusive; if exclusive, licensee can sue for infringement can sue for infringement


Joint Venture AgreementJoint Venture Agreement Two entities agree to mutually develop a Two entities agree to mutually develop a

technology for the benefit of each entitytechnology for the benefit of each entity Terms of investment: who is responsible for Terms of investment: who is responsible for

start up costs, R&D costs, patent start up costs, R&D costs, patent procurement costs, staff costs, equipment procurement costs, staff costs, equipment costs, manufacturing costs, etc.costs, manufacturing costs, etc.

Terms of ownership: Allocation of ownership Terms of ownership: Allocation of ownership of the technology, equipment, licensing of the technology, equipment, licensing rightsrights


AssignmentAssignment Usually required by employerUsually required by employer Must be filed with the USPTOMust be filed with the USPTO All rights are assigned over [inventors can All rights are assigned over [inventors can

infringe their own patents!]infringe their own patents!]

Questions???Questions???

Engineering Entrepreneurship, Judi Engineering Entrepreneurship, Judi DohnDohn

4 pm today, CBC C1264 pm today, CBC C126

Delineating the scope of patent claims Delineating the scope of patent claims & Assessing potential technological & Assessing potential technological claims [patent searching & design claims [patent searching & design around]around]

Documents

Patent Considerations for Engineers Angela M. Davison Ross Operating Valve Company [email protected] February 16, 2005