Patents Copyright © 2009 - Jeffrey Pittman. Pittman - Cyberlaw & E- Commerce 2 Legal Framework of Patents The U.S. Constitution, Article 1, Section 8:

Patents

Copyright © 2009 - Jeffrey Pittman

Pittman - Cyberlaw & E-Commerce

2

Legal Framework of Patents

The U.S. Constitution, Article 1, Section 8:"The Congress shall have power to . . .

promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries"


3

The Patent Act, as amended by The American Inventors Patent Act

• "[W]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore."


4

Patent Protection

– The original length for patent protection was 4 years

– The current length is 20 years for utility and plant patents; 14 years for design patents


5

Patent Law Administration

– Patent law is an exclusive federal field; the states have no control over patent issues

– The United States Patent & Trademark Office (USPTO) administers the Patent Act (See www.uspto.gov)

• The USPTO is an agency of the U.S. Department of Commerce

• The role of the USPTO is to grant patents for the protection of inventions and to register trademarks

• The Court of Appeals for the Federal Circuit hears all patent appeals, followed by the Supreme Court


6

Patent Law as it Relates to Business Practices

Patentable subject matter– Any invention or discovery, e.g., a

machine, article, process, or composition ("anything under the sun that is made by man") that is:• Novel• Useful, and• Nonobvious


7

Novel

Novel - A patent will not be granted if– “(a) the invention was known or used by others

in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or

– “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States”


8

Useful

• There must be a practical benefit to the invention– The subject matter must have a useful

purpose and also operate, that is, a machine which will not operate to perform the intended purpose is not useful


9

Nonobvious

• The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention – Even if the subject matter sought to be

patented is not exactly shown by the prior art, a patent may still be refused if the differences would be obvious


10

Items not Eligible for Patent Protection

• The laws of nature• Physical phenomena• Abstract ideas, and • A mere idea or suggestion (A complete

description is required of the actual machine or other subject matter for which a patent is sought)


11

Battles over Patent Ownership

– The U.S. operates under a "first-to-invent" system of patent law; most countries use a "first-to-file system" of priority for patents


12

Types of Patents

• Utility patents – 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 patents – Granted to anyone who invents a new,

original, and ornamental design for an article of manufacture

• Plant patents – Granted to anyone who invents or discovers

and asexually reproduces any distinct and new variety of plant.


13

Software Patents

• In 1981, Diamond v. Diehr, the Supreme Court recognized patents for computer software– Note the overlap between copyright law

and patent law– Patent law protects the idea, while

copyright law only protects the particular software language used


14

Business Methods Patents

• In State Street Bank & Trust (1998), the Court of Appeals first recognized business methods patents

• In a broad sense, business methods patents potentially protect any method of doing or conducting business (35 U.S.C. §273(a)(3))


15

Patent Ownership Issues

• Who invented the patented item?• Are there prior contractual

arrangements between the parties regarding ownership

• Shop rights – did the inventor use employer resources to develop the patent


16

Enforcing Patent Rights

• Literal infringement - a copycat invention in all aspects

• The doctrine of equivalents - insignificant changes made to patent


17

Defendant’s Case

• Noninfringement – no literal or equivalent infringement

• Invalidity – the patent is not valid


18

Remedies

• Equitable remedies – assign patent, rewrite inventorship, enjoin violations

• Damages – reasonable royalty, lost profits, treble damages for intentional violations

• Attorney’s fees


19

Patent Analysis

• Using ustpo.gov, analyze the following patents:– U.S. Patent No. 6,241,641 (exercise

devices)– U.S. Patent No. 5,851,117 (janitorial

training)– U.S. Patent No. 6,349,820 (choosing

spices)– U.S. Patent No. 6,494,210 (mouth guard

advertising)

Documents

Patents Copyright © 2009 - Jeffrey Pittman. Pittman - Cyberlaw & E- Commerce 2 Legal Framework of Patents The U.S. Constitution, Article 1, Section 8: