What an Engineer Needs to Know About Patent

8/14/2019 What an Engineer Needs to Know About Patent

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What an engineer needs to know about

patent law: Part I The Basics

Shu Wang [email protected]

LG Electronics Mobile Research, USA
mailto:[email protected]


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Outline

Introduction to the patent business The value of patents and intellectual property.

US patents and patent applications numbers

Patent right and obligations

Patentability of inventions

Anticipation/Novelty Non-Obviousness

Patentable subject matters

Steps in invention Patentability search

Patent applications Application types Application content

Pre-granted publication (PG Pub or the 18 month rule)


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The Value of Patents

A U.S. appeals court on Wednesday set a sooner-than-expected end to Eli Lilly andCo.'s reign as the sole marketer of Prozac, the popular antidepressant drug, adevelopment that sent the pharmaceutical company's stock down by more than 30percent. -- Eli Lilly gets Prozac blues CNN Money, August 9, 2000.

It is about $36 billion in Lilly stock value, roughly a third of the pharmaceuticalgiants market capitalization.

Royalties from inventions earn an estimated $150B/year worldwide and are expected togrow 30% annually over the next 5 years. -- Trying to Cash in on Patents. NewYork Times, June 7, 2002.

From 1993 2003, IBM earned well over $10 Billion in revenue from licensing out itspatents and was awarded over 22,000 patents, more than the 10 largest U.S. ITcompanies combined, including Intel, Microsoft, Sun, Dell and Apple.

Microsoft, $8 Billion/year spent on Research and Development. 3,000 patent

applications filed each year in the U.S. BellSouths, now a part of AT&T, Patent Portfolio: 1998 50 patents, 2006 1,000

patents. Licensing out of BellSouths patent portfolio brings 100s of millions of dollarsto the bottom-line. -- Scott Frank, Esquire, President of BellSouth IP ManagementCorp. and BellSouth IP Marketing Corp. June 27, 2006.


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Intellectual Property: A Key Modern Corporate

Asset

Tangible assets as a percentage of US corporate value: 1982: 62%

2000: 30%

Recent a British study: 40% of a companys value is not shown in any way on its balance sheet.

More than 80% of the market value of these companies is said to be in IPassets:

Walt Disney

Microsoft

P&G


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Patenting Expense

It really depends on the complexity of the invention. One possible example is

preparing and filing application: $3,800

Corresponding with patent office: $1,800

USPTO fee schedule Basic filing fee Utility: $310.

Independent claims in excess of three: $210.

Claims in excess of 20: $50.

Multiple dependent claim: $370

Provisional application filing fee: $210 Utility issue fees: $1440

Maintenance fees: $930, $2360, $3910

Due at 3.5, 7.5 and 11.5 years after patent is issued.


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U.S. Patents granted, 18002004

Source: USPTO & Wikipedia


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Patent Office Statistics

Patent applications Year 1998: 260,889 applications filed.

Year 2002: 333,688 applications filed.

Year 2005: 384,228 applications filed.

Patents Issued:

66,000 in 1980. 176,000 in 2000.

152,090 in 2005.

Each week, the Patent Office issuesapproximately 3,500 new patents.

0

20000

40000

60000

80000

100000

120000

140000

160000

180000

200000

Patents Issued

1980

2000

2002


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Patent Right by Law

The Congress shall have Power ... to promote the Progress ofScience and useful Arts, by securing for limited Times to Authorsand Inventors the exclusive Right to their respective Writings andDiscoveries. -- US Constitutional Authority, Article 1, Section 8,Clause 8

The issue of patents for new discoveries has given a spring toinvention beyond my conception. -- Thomas Jefferson

The patent system added the fuel of interest to the fire ofinvention. -- Abraham Lincoln

Under such regional systems, an applicant requests protection for

the invention in one or more countries, and each country decidesas to whether to offer patent protection within its borders. -- WorldIntellectual Property Organization


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Patent Right and Obligation

Government grant right to exclude A U. S. patent provides its owner with the legal right to prevent

unauthorized making, using, selling, offering for sale in the U.S. and the importation into the U.S., of the invention set forthand claimed in the patent.

In exchange, the inventor must disclose how to make and use theinvention.

Not a Right to Practice But this right to exclude does not grant the right to practice the

invention (e.g., government regulation may interfere).


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Patent Rights: A Corporate Perspective

Use offensively as a right to exclude Exclusive use and sale may permit setting prices at a level not

possible without patent protection.

Erect barriers for entry into a market.

Revenue through licensing or assignment.

Use defensively as part of a patent portfolio to trade (crosslicense) right to exclude.

Maintain product differentiation

Develop reputation as innovator/prestige

Helps with credibility/advertising


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Patentable Application

Inventions patentable: 35 USC 101 A Process

A Machine

A Composition of Matter

A Manufacture

Specification and Drawings: 35 USC 112/113 First Paragraph: written description, enablement and best mode

Second Paragraph: requirements for the claims.

Sixth paragraph:

Novelty and Loss of Right to Patent: 35 USC 102

A person shall be entitled to a patent unless (a) ~ (g)

Non-Obvious Subject Matter: 35 USC 103 The Graham Factual Inquiries: Graham v. John Deere


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Patentable Subject Matters

35 USC 101 Whoever invents or discovers any new and useful process, machine,

manufacture, or composition of matter, or any new and usefulimprovement thereof, may obtain a patent therefor, subject to theconditions and requirement of this title.

Diamond v. Chakrabarty A nonnaturally occurring manufacture or composition of matter a

product of human ingenuity having a distinctive name, character,[and] use is patentable subject matter.

[T]he production of articles for use from raw materials prepared bygiving to these materials new forms, qualities, properties, or

combinations whether by hand labor or by machineryis amanufacture under 35 U.S.C. 101.


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Non-Patentable Subject Matter

Diamond v. Chakrabarty The laws of nature, physical phenomena and abstract ideas are not

patentable subject matter.

[A] new mineral discovered in the earth or a new plant found in thewild is not patentable subject matter. Likewise, Einstein could notpatent his celebrated E=mc2; nor could Newton have patented the law

of gravity. Such discoveries are manifestations of... nature, free to allmen and reserved exclusively to none.

Controversies, including naturally occurring biological material;

genetic sequences;

stem cells; computer programs. Gottschalk v. Benson, Parker v. Flook, Diamond

v. Diehr

business methods. State Street Bank decision


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Patent Types

Utility Patent Product/Apparatus: a cell phone

Machine: a machine for making the cell phone

Process: a method for assembling the cell phone

Compositions of Matter: the metal-feeling cell phone shell.

Design Patent Whoever invents any new, original and ornamental design for anarticle of manufacture may obtain a patent therefor, 35 USC171

Plant Patent Whoever invents or discovers and asexually reproduces any distinct

and new variety of plant, including cultivated sports, mutants, hybrids,and newly found seedlings, other than a tuber propagated plant or aplant found in an uncultivated state, may obtain a patent therefor, 35 USC 161.


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Steps of Invention

Conception Create the invention in general terms.

Complete when one perceives a specific result and a particular meansof accomplishing the result.

The criteria is the left reduction to practice is obvious to one of ordinaryskill.

Actual Reduction to Practice "[R]equires that the claimed invention work for its intended purpose.

Brunswick Corp. v. U.S.

Constructive Reduction to Practice "[O]ccurs upon the filing of a patent application on the claimed

invention." Brunswick Corp. v. U.S.


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Patentability Searches Why to Search?

Searches made to determine whether there is enough protection availableto go forward What is the risk of rejection by PTO?

Identifies the prior art and extent protection available over prior art

Helps with drafting process Aids preparer and makes for a stronger patent

Draft claims to reflect existing prior art

Identifies customary level of disclosure for a particular art

Helps the PTO examiner Guides the examiner to right technology

Helps accelerate the examination procedure if necessary.


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Patentability Searches What to Search for?

Look for identical or similar inventions on the internet

in publications and catalogs

in patents and published applications

Look for evidence that the invention is

not new or

obvious when multiple references are combined.


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Patentability Searches How to Search

Key word search Keywords that describe invention or product

It is good for starting a patent search

Classification search 436 utility classes, 100-500 sub-classes pre class

PTO index: www.uspto.gov/go/classification

Cross-reference search When a similar patent is found,

review cited patent

Review referenced by patents
http://www.uspto.gov/go/classificationhttp://www.uspto.gov/go/classification


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Patentability Searches Where to Search?

PTO website: www.uspto.gov/patft complex and used by PTO examiners.

word searches from early 1970 tile now.

classification searches for all patents

easy to navigate cross-references

Google Patents: www.google.com/patents

Easy to use

Now downloads

FreePatentsOnline.com
http://www.uspto.gov/patfthttp://www.google.com/patentshttp://www.google.com/patentshttp://www.uspto.gov/patft


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Anticipation/Novelty: 35 USC 102

Not first or true inventor 102(a): Before invention by applicant, invention is made known or usedby others in USA, or disclosed anywhere.

102(e): Another has disclosed invention in earlier filed US or PCTapplication that is published in English or, if not published, later issuesas a US patent

102(f): Invention was derived from another. 102(g): Another invented first in US and did not abandon, suppress or

conceal the invention, or another succeeds in an interferenceproceeding.

Not timely application 102(b): Disclosed anywhere or in public use or on sale in the US more

than one year before application. 102(c): Invention has been abandoned. 102(d): Applicant received a foreign patent before US filing on an

application filed more than a year before US filing.


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Non-Obviousness: 35 USC 103

Must not have been obvious Prior art discloses an invention that is so similar to the allegedinvention that it would have been obvious to one of ordinary skill in theart based on the knowledge of the prior art

The court determines obviousness by examining the differencesbetween the prior art and the claimed invention in view of what wouldbe readily understood by one of ordinary skill in the art

Objective evidence of non-obviousness Commercial success attributable to the invention Long felt but unsatisfied need for the invention Copying by competitors Acclaim by the industry, etc.

Generally non-obviousness is established by showing the advantages of the invention a lack of motivation for modifying prior art to result in the invention the prior art actually suggests not making the modification (teaching

away)


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Application Types

Provisional Patent Application Needs only a Specification, and drawings (if needed)

Non-Provisional Patent Application Requires Specification, drawings (if needed), and claims

Continuing Patent Application

Continuation patent application Continuation-in-part application

Divisional patent application. 35 USC 121


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Application Content

Title Cross-Reference to Related Application(s)

Background of the Invention

Brief Summary of the Invention

Brief Description of the Drawings

Detailed Description of the Invention

Claim(s)

Abstract


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Prepare An Application

Disclose enough to enable one skilled in the art to make and use theinvention

Disclose best mode of carrying out the invention (that is, if the inventorhas the subjective belief there is a best way to carry out the invention).

If possible, disclose more than required

Disclose all alternative embodiments

Interferes with others attempts to obtain improvement patents ordesigning around the patent Broadens possible scope of protection and provides retreat positions

for claiming invention

Applications lacking in detail sometimes get broader interpretations, butare easier to invalidate

Define the scope of the invention Must be clear Must not read on the prior art Must define a novel, non-obvious and useful invention Provides notice to the public


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Office Action

Responses to an Examiners actions can occur through: interviews,

written arguments,

amendments to the text of the application including claims, and

affidavits or other documentary evidence supporting patentability

Generally present arguments twice for each office action fee

If USPTO denies application patent, a patent applicant may appeal to theUSPTO Board of three Administrative Patent Judges, then onto eitherDistrict Court to present more evidence or directly to the Court of Appealsfor the Federal Circuit

Allowance of claims and issuance upon payment of issue fee and now an

application publication fee


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18 Month Publication of U.S. applications

Provide for provisional rights No injunctions, but can get monetary award (reasonable royalty) if

issued claims are substantially identical to the claims in the

published application

Must provide actual notice to infringer

Voluntary publication possible but generally application published as

filed

May cause competitors apprehension

Can block others from getting similar rights


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Interesting Patent Examples

7062320Device for the treatment of hiccups: Appears to be a glassthat shocks you when you drink from it, ostensibly stimulating specificnerves in an attempt to cure hiccups.

5878931Halloween Backpack A backpack that dispenses candy

4858627 Smokers Hat A hat with an air intake, which filters and thenexpels the air. Looks pretty much like wearing the exhaust hood for a

stove on your head.

4344424Anti-Eating Mouth Cage Just think Hannibal Lecter

4300473 Device For Moistening The Adhesive Coating On PostageStamps and Envelopes Describes a device containing an applicator tomoisten stamps. Check out this quote: "The applicator may be in the form

of a human tongue" Boy, that's novel.

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What an Engineer Needs to Know About Patent