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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?
2012 IP Survey -- Patents 3
THE USUAL QUESTIONS:
• HOW LONG WILL IT TAKE?
• WHAT CAN I DO WITH IT IF I GET IT?
2012 IP Survey -- Patents 4
ELIGIBILITY
• JUST ABOUT ANYTHING BELIEVED TO BE “NEW” – BASICALLY NOT KNOWN BEFORE
• COMPUTER SOFTWARE: NOW IN DOUBT
• BUSINESS METHODS: NOW IN DOUBT
2012 IP Survey -- Patents 5
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
2012 IP Survey -- Patents 6
INVENTORS
• THOSE WHO THOUGHT OF SOMETHING COVERED BY THE CLAIM
• NOT THOSE WHO LEARNED IT FROM SOMEONE ELSE
2012 IP Survey -- Patents 7
INVENTORS
• YOU DON’T REALLY KNOW WHO THEY ARE UNTIL THE CLAIMS ARE DRAFTED
• THOSE INVOLVED IN A MINISTERIAL OR MANAGERIAL WAY AREN’T
2012 IP Survey -- Patents 8
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
2012 IP Survey -- Patents 9
2012 IP Survey -- Patents 10
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
2012 IP Survey -- Patents 11
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
2012 IP Survey -- Patents 12
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
2012 IP Survey -- Patents 13
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
2012 IP Survey -- Patents 14
RETURN TO CAR EXAMPLE
• ASSUME: CLOSEST PREVIOUSLY KNOWN MACHINE WAS THE HORSE-DRAWN WAGON
2012 IP Survey -- Patents 15
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.
2012 IP Survey -- Patents 16
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
2012 IP Survey -- Patents 17
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
2012 IP Survey -- Patents 18
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
2012 IP Survey -- Patents 19
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?
2012 IP Survey -- Patents 20
2012 IP Survey -- Patents 21
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
2012 IP Survey -- Patents 22
ONLY CLAIMS ARE HELD VALID OR INVALID –
NOT “PATENTS”
• EACH CLAIM IS ADJUDICATED INDEPENDENTLY OF THE OTHER CLAIMS – LIKE A MINI-PATENT
2012 IP Survey -- Patents 23
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!”
2012 IP Survey -- Patents 24
2012 IP Survey -- Patents 25
• 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
2012 IP Survey -- Patents 26
HOW EFFECTIVE IS A PATENT?
• DEPENDS ON THE CLAIM SCOPE
• DEPENDS ON $$ TO FIGHT
• 45% OF CLAIMS ARE HELD INVALID
2012 IP Survey -- Patents 27
DO YOU HAVE TO DO A SEARCH BEFORE FILING?
• NO. BUT NOT SEARCHING ENLARGES RISK OF WRITING UNPATENTABLE CLAIMS.
2012 IP Survey -- Patents 28
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.
2012 IP Survey -- Patents 29
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
2012 IP Survey -- Patents 30
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.
2012 IP Survey -- Patents 31
2012 IP Survey -- Patents 32
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
2012 IP Survey -- Patents 33
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
2012 IP Survey -- Patents 34
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
2012 IP Survey -- Patents 35
– 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
2012 IP Survey -- Patents 36
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
2012 IP Survey -- Patents 37
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)
2012 IP Survey -- Patents 38
2012 IP Survey -- Patents 39
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
2012 IP Survey -- Patents 40
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.
2012 IP Survey -- Patents 41
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)
2012 IP Survey -- Patents 42
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
2012 IP Survey -- Patents 43
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]
2012 IP Survey -- Patents 44
2012 IP Survey -- Patents 45
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)
2012 IP Survey -- Patents 46
THE DISCLOSURE PORTION OF THE
APPLICATION
• REFERS TO DRAWINGS, SPECIFICATION (OTHER THAN CLAIMS)
• NORMALLY DOESN’T HAVE MAJOR IMPACT ON SCOPE
2012 IP Survey -- Patents 47
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
• ???
2012 IP Survey -- Patents 48
2012 IP Survey -- Patents 49
• 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!
2012 IP Survey -- Patents 50
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
2012 IP Survey -- Patents 51
ACTS OF INFRINGEMENT
• MAKING
• USING
• SELLING
• OFFERING TO SELL
• IMPORTING
§271 (a)
SOMETHING WITHIN
THE CLAIM
IN THE U.S.
DURING THE TERM
2012 IP Survey -- Patents 52
INDIRECT INFRINGEMENT
• INDUCING §271 (b)
• CONTRIBUTORY §271 (c)
• SHIPPING PARTS §271 (g)
• IMPORTING PRODUCT OF PATENTED PROCESS §271 (g)
2012 IP Survey -- Patents 53
TYPICAL MODERN BUSINESS TRANSACTION
• THREE OR MORE PLAYERS:– PARTS/MATERIALS VENDOR– MANUFACTURER/SELLER– RETAILER
• COULD BE MANY MORE:– CONSULTANT/ADVISOR– END USER
2012 IP Survey -- Patents 54
EACH PLAYER NEEDS TO BE ANALYZED FOR
LIABILITY
• CLAIM-BY-CLAIM ANALYSIS
• DON’T COUNT ON INDEMNITY– BUT …..
2012 IP Survey -- Patents 55
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
2012 IP Survey -- Patents 56
CONSIDER POSSIBLE INFRINGERS:
• VENDOR OF MOTORS TO TOOLCO
• TOOLCO
• RETAILER
• END USER
WHO IS LIABLE FOR WHAT?
2012 IP Survey -- Patents 57
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
2012 IP Survey -- Patents 58
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
2012 IP Survey -- Patents 59
LICENSING
• PERMISSION TO DO WHAT WOULD OTHERWISE BE ILLEGAL
• 3 GENERAL TYPES:– NONEXCLUSIVE– SOLE [does not exclude patent owner]– EXCLUSIVE [excludes patent owner]
2012 IP Survey -- Patents 60
IMPLIED WARRANTIES
• LICENSOR HAS SUFFICIENT TO GRANT THE LICENSE
• LICENSE TO MAKE INCLUDES “HAVE MADE”
2012 IP Survey -- Patents 61
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
2012 IP Survey -- Patents 62
NOT IMPLIEDLY WARRANTED:
• RIGHT TO SUBLICENSE 3RD PARTIES
• RIGHT TO ASSIGN THE LICENSE– PERILOUS UPON MERGER
2012 IP Survey -- Patents 63
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)
2012 IP Survey -- Patents 64
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