Ethical to Endorse Coca Cola? Consumer Group Center for Science
in the Public Interest asked Taylor Swift to drop her endorsement
because it believes diet Coke causes cancer.
Slide 2
Patent Law Using your common sense and whatever patent
knowledge you have, should this be patentable? Why? An apparatus
for use as a toy by an animal, for example a dog, to either fetch
carry or chew includes a main section with at least one protrusion
extending there from that resembles a branch in appearance.
Slide 3
It Got a Patent - US Patent No. 6,360,693 -Patent Law
OverviewUS Patent No. 6,360,693 Patentable subject matter Anything
man made Useful Novel Non-obvious Adequately described
Slide 4
Pass around patent samples Buttocks support device US Patent
No. 6,360,375 Issued March 26, 2002 Beerbrella US Patent No.
6,637,447 Issued October 28, 2003 Useful Patents?
Slide 5
6,681,419
Slide 6
Patent Law Overview Continued Grant of Exclusive Monopoly.
Exclusive monopoly for a limited period of time 20 years Reveal
Secret. Must reveal to the public the secret Federal law not state
Court of Limited Jurisdiction. US Court of Appeals for the Federal
Circuit (rather than patent cases spread among all federal circuit
courts) Conflict Between Antitrust and Patent Law. The Congress
shall have the 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 - US
Constitution Soon passed The Patent Act
Slide 7
Deep Secrets Revealed! What is it? Interestingly, it is an
improvement on three previous patents on roughtly the same idea.
U.S. Pat. Nos. 6,023,792; 6,081,941; and 6,125,480. This patent
extends the umbrella to add a leash to the dog. Previous patents
for pet umbrellas did not include the leash U.S. Pat. Nos.
5,546,970 and 5,918,611
Slide 8
Key Sections of The Patent Act 101.Whoever 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, subject to the conditions and requirements of
this title 102. If the invention lacks novelty, i.e. public is
aware, then no patent shall issue. 103. Non-Obvious
Slide 9
Change in Direction KSR v. Teleflex. 2007 US Supreme Court Case
Struck down patent on a gas pedal as nothing more than obvious
combination of existing technologies.KSR v. Teleflex Bilski v. Doll
- discussed later under business process patents
Slide 10
Non-Obvious Standard. Would have been obvious at the time of
the invention was made to a person having ordinary skill in the art
to which said subject matter prevails. Example. Inventor invents A
+ B. A is known art B is know art Upon looking at A and then
looking at B, would someone of skill in the art consider A + B to
be already know? If yes, obvious. If no, then non-obvious
Subjective Standard. 1/19/13 St. Cloud Times
Slide 11
Non-Obvious? Towel for Hair Styling
Slide 12
Non-Obvious Patent? Copied from actual patent
Slide 13
Types of Patents Utility Utility. Useful inventions process
machines manufactured goods composition of matter improvements (a
better mousetrap) 20 years
Slide 14
Subset of Utility Patents - Business Process Patent State
Street Bank Case Oral Presentation Grading Rubric
Slide 15
State Street Bank Case Business process patent Both State
Street and Signature Work as custodians for mutual funds Mutual
funds pooled into larger groups to save administrative costs and
enable daily valuations Complex process to do so getting values and
then distributing those values back to the spokes Relies heavily on
math formulas as well as process State Street sought license from
Signature and sued for declaratory judgment of patent invalidity
when talks broke down Mutual Fund Valuation Hub Pooled assets
Mutual Fund
Slide 16
State Street Bank Legal Issues Can you patent a business
process? Yes since this case if it results in a useful, concrete,
and tangible result Can you patent a math algorithm? Sort of no if
its pure math, but yes if its a process employing a law of nature,
natural phenomenon, or abstract idea that produces a useful,
concrete and tangible result Why not allow patents on math
itself?
Slide 17
More on Business Process Patents Patent for Janitorial Services
Show patent Illustrations
Slide 18
Slide 19
Change in Direction for Business Process Patents? Bilski v.
Doll on business method of hedging. Ruled June 28, 2010 Sarcastic
Comments About Business Process patents. Justice Roberts comment: I
buy low and sell high thats my patent for maximizing wealth. speed
dating Sonia Sotomayor Great method to teach antitrust Breyer IBM
Comment it is the leader in business process patents it thinks they
should be reduced. New Standard. Business process patent ok if if
(1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing
(could be okay otherwise as well). State Street Bank standard of a
useful, concrete, and tangible result is no longer adequate.
Slide 20
Types of Patents - Design Patents Design Covered Ornamental
features Exclusions Novel Non-obvious Years. 14 years Weak protects
what is drawn Marketing Value patent pending patent issued Multiple
Design Patents help protect Design Patent and Utility Patent on
Same Invention Two: Aug 28, 2007 Issued Design Patents, Ideas?
First design patent False sideburn sunglasses Design Patent #
376,811
Slide 21
End-of-Chapter Question 2 Design Patent on Ink Cartridge Patent
Infringement Suit. Seiko Epson Corp sued Nu-Kote International for
design patent infringement Court Held No Infringement. District
court held design patent not valid The cartridge is not visible
after installation and during use the design was not a matter of
concern to consumers. and The design is not aesthetically pleasing
What are your thoughts? Should Seiko Epson be entitled to a design
patent on an ugly design that cannot be seen?
Slide 22
End of Chapter Question 4 Design Patent on Cigarette Package
New Feature Package opens from bottom Quote: I was motivated to
design a new cigarette package when I happen to see workers pull
out cigarettes from the packages holding their filter tip top with
dirty fingers during work to smoke them. Some even used their teeth
to pull them out so as not to contaminate the filter-tip end with
dirty fingers, and some others tore open the bottom part of the
package to take out cigarettes from the bottom. In re: Uie S. Chung
2000 US App Lexis 24916 (Fed. Cir. Oct 2000) Note: this is not the
same patent as this case but close
Slide 23
Plant Patent Novel, Non-obvious and Distinct Living Organism
Duplicated Through Asexual Reproduction. A living plant organism
which expresses a set of characteristics determined by its single,
genetic makeup or genotype, which can be duplicated through asexual
reproduction, but which can not otherwise be "made" or
"manufactured." Hybrids and Natural Plants. Sports, mutants,
hybrids, and transformed plants are comprehended; sports or mutants
may be spontaneous or induced. Hybrids may be natural, from a
planned breeding program, or somatic in source. While natural plant
mutants might have naturally occurred, they must have been
discovered in a cultivated area. Algae and macro fungi are regarded
as plants, but bacteria are not. That the plant is not a plant
which is excluded by statute, where the part of the plant used for
asexual reproduction is not a tuber food part, as with potato or
Jerusalem artichoke. That the person or persons filing the
application are those who actually invented the claimed plant;
i.e., discovered or developed and identified or isolated the plant,
and asexually reproduced the plant. That the plant has not been
sold or released in the United States of America more than one year
prior to the date of the application. That the plant has not been
enabled to the public, i.e., by description in a printed
publication in this country more than one year before the
application for patent with an offer to sale; or by release or sale
of the plant more than one year prior to application for patent.
That the plant be shown to differ from known, related plants by at
least one distinguishing characteristic, which is more than a
difference caused by growing conditions or fertility levels, etc.
The invention would not have been obvious to one skilled in the art
at the time of invention by applicant.
Slide 24
Patent Statistics from US Patent Office 2011 TypeU.S.% Granted
Utility503,58246%* (77,501 to US, 80,271 Foreign 50%)
Design30,34770%* Plant1,13972%*
http://www.uspto.gov/web/offices/ac/ido/oeip/taf/reports.htm *The
percentage of patents granted is approximate as I am simply
dividing total patents issued in a year by total applications
submitted. Patents applications generally take more than a year so
this is not an accurate measure but at least provides rough
guidance.
Slide 25
Patent timelines
Slide 26
Large patent infringement awards
Slide 27
2011 Patent Reform America Invents Act 1.First to File. For
patents filed after March 16, 2013. 2.Patent Office to Keep Fees
Charged. This will help get the patent office funding to deal with
backlog of cases (sort of funds put in fund and released by
Congress). 3.Allow Post Grant Dispute Process. The measure allows
inventors or companies to contest the validity of a patent for nine
months after it issues. 4.Allows Putting Patent Number on Product
After Patent Expires. Except the government can sue or a competitor
if actually hurt by markings. 5.Expands the Definition of Prior
Art. Actions and prior art that bar patentability will include
public use, sales, publications and other disclosures available to
the public anywhere in the world as of the date of filing, other
than publications by the inventor within one year of filing.
6.Prior User Rights Defense. If an individual/entity begins using
an invention more than a year before a subsequent inventor files
for a patent on the same invention, the original user will have the
right to continue use. This rule used to only apply to business
process patents. 7.Cheaper Fees for Mirco-Entity. Previous calendar
year gross income of less than three times the national median
household income and has filed no more than 4 patents. 8.Business
Method Patent Transitional Program. Creates an Administrative
program for review of business-method patents. Transition Program
for Covered Business Method Patents. No nine month review
limitation. 9.Bans Tax-Strategy Patents. Expired patent lawsuits
person suing gets to keep with the rest going to the federal
government well no more. $500 per offense.
Slide 28
Patent Issues First to Invent/First to File. Application
Process Prior art search Cost Fully disclose invention as price of
getting patent Must file within 1 year of first commercial use
Notice Pat. patented Patent number Idea made public after 18 months
unless withdrawn (U.S. used to not make public until granted
recently change to match more of the world) Patent Searches Made
Easy US Patent Office Web Site
http://www.uspto.gov/patft/index.htmlUS Patent Office Web Site
http://www.uspto.gov/patft/index.html Free Patent Search Web Site
http://www.freepatentsonline.com/search.htmlFree Patent Search Web
Site http://www.freepatentsonline.com/search.html bigw 862221 Meat
cutting
Slide 29
Patent Invalidation/Infringement Directly infringe Induce
another to infringe Actual infringement by a third-party is a
necessary element Sales literature, etc. to get another to infringe
Contributory infringe Sell a key element of patented product, that
has no use except as a component of a patented product Action
contributes to anothers direct infringement Manufactures or sells
components to be assembled abroad Imports, sells or offers to sell
or uses a product made abroad through patented processes Note:
retailers are potentially liable but not liable if an adequate
remedy against the primary manufacturer Attorneys Fees. The winning
party to recover legal fees from the losing party in exceptional
cases like intentional infringement. Treble Damages. The court may
award treble damages if the defendant willfully infringed or acted
in bad faith. update Proctor and Gamble sold Folders (to Smuckers)
and settled
Slide 30
Recent Patent Case Heinz Ketchup
Slide 31
Recent Patent Case Apple v. Samsung One Key Feature for
Discussion: Pinch to zoom Bounce back scrolling Rounded corners
design patent Icon style and layout Should you be able to patent
how people interact with a machine?
Slide 32
Inducement to Infringe Inducement. Assist a person to infringe
Contributory. Sells a material component. Snuba International v.
Dolphin World, Inc. 800 start here tues
Slide 33
Ebay v. MercExchange Supreme Court Case - 2006 From ebay Patent
Damages Injunction not using the patent and license it to others
1.Based on four factors when an injunction usually issues NTP v.
RIM Patent for push email technology 3 million users shut
down?
Slide 34
Injunction Monetary Lost profits Reasonable royalty Attorneys
fees (sometimes) Treble damages if willful or reckless Personal
Liability. Corporate officers and managers can be held personally
liable. Famous Music Corp v Bay State Harness Horse Racing &
Breeding Assoc, 423 f. Supp. 341 (1977) Similar Case: Amazon
patented single action or one-click purchasing over the internet.
BN started express lane doing basically the same thing. Patent
Damages Continued
Slide 35
Defenses to Patent Infringement Invention not novel,
non-obvious and useful Not novel, non-obvious and ornamental for a
design patent Patent misuse. Antitrust more than patent was meant
to do Inequitable conduct. Experimental use defense Not a defense
patent not used (ok to sit on invention) Question 1, p. 421. LG
Electronics licenses use its patent to Intel for Intel to make
computer chips. Quanta Computer bought Intel chip and LG wants
Quanta to pay patent royalty. Quanta argues LG cannot collect
patent fees twice what else would you use an Intel computer chip
for?
Slide 36
Slide 37
Patent Infringement CHINA Copy of iphone minione Easy ways to
clone: Ghost shift Shadow factory Read patents hire 20 to 40
engineers to reverse engineer Often not the same Cheaper materials
crash tests on copied cars performed much worse than original
Chinese government slow to enforce. May 29, 2007, Zheng Xiaoyu
sentenced to death for accepting bribes. The bribes were given in
part to secure approval of a counterfeit drug antibiotic that later
killed 10 people. CHERYCHEVY Source: Popular Science, Sept. 2007
Sony PlayStation Hit With $90 Million Judgment. Japanese Company,
Sony, hit with $90.7 million judgment to pay patent holder of
tactile feedback feature. Sony used the feature on its PlayStation
consoles Dual Shock controllers.
Slide 38
Ownership of Patent Ownership of patent employee versus
employer Shop rights Invention assignment agreements IBM, Sony,
Pitney Bowes, and Nokia announce patent sharing plan. Will not
assert patents against anyone who is using them in an
environmentally friendly way. IBM is donating.one for recyclable
protective-packaging material for delicate electronic parts. Unlike
commonly used foam peanuts, the material can be recycled in the
same waste stream as the cardboard box that contains it. In 2014,
Tesla releases its patents
Slide 39
Cost of a Patent Filing Timing. Generally all fees are not due
up front because Patent Office backlogged generally sits first 18
months. This will allow some budgeting and planning. Filing fee -
$165 for small inventor ($330 for a large inventor) plus a search
fee of $270 ($540) and an Examination fee of $110 ($220). Total of
$545.* Issue Fee an additional $755 ($1,510) Multiple Filings.
Often the patent office will award some claims and not others you
may decide to issue those patents, thus the issue fee, and continue
to pursue the other claims thus more filing fees. Drawing Fee. You
need drawings, generally $100 plus per drawing. Attorney Fees.
National average $250-275 per hour. Attorney will generally do a
patent search for around $300. Next step is a patentability opinion
which would cost around $1,000 on the low end. More. Plus more fees
for a variety of items. The fees are actually quite a bit more
complicated as this slide sticks to the basics. 97% of Patents Lose
Money The U.S. Patent & Trademark Office estimates that only 3%
of the patents issued by the Patent Office actually make more money
than it cost to get the patent. Source: PatentCafe.com 2007 *2009
Numbers
Slide 40
Filing Cost for Patents Pre-2011 Law Small Entity Fees Post
2011 Mirco Entity Cost
Slide 41
Average Cost of Patent Process Type of InventionExamplesCost
SimpleCoat hanger, diapers, ice cube try$4,00-$6,000 Minimal
ComplexityBoard game, umbrella, toothbrush$6,500-$9,000 Moderately
ComplexPower hand tool, lawn mower, camera, cell phone
$9,000-$12,000 Intermediate ComplexVideo game, ride on lawn mower,
solar concentrator $12,000 to $16.000 Relatively ComplexShock
absorbing prosthetic device, internet implemented business method
with computer system $16,000-$25,000 Highly ComplexMRI scanner,
telecommunication networking system $25,000++ Source: Quinn, The
Cost of Obtaining a Patent, IPWatchdog.com (July 26, 2007)
Slide 42
Worldwide Patent Protection Each country has its own laws Paris
Convention 160 countries National treatment to foreign patents
Patent Cooperation Treaty 108 members - Cheaper than dealing with
each country individually Novartis Article Facts. Novartis gave up
patent fight in India for its drug Gleevec Issue. India is not as
supportive of patent laws Brazil, Russia, India, China and Turkey
could account for half Novartiss revenue growth in the next five
years "Big pharma in rich countries is slowing Poor countries
cannot afford the medicine thus relying on growing economies Newly
industrializing countries are also more interested in protecting
patents as their companies begin developing unique drugs and
solutions Law. India now allows patents on drugs developed after
1995 Comment. Inventors, at least in the pharmaceutical industry,
need to be conscious of foreign patent rules International Patent
Issues Q: Is it worth it to get a patent in China? A: The big risk
if another company gets a patent
Slide 43
International Issues Continued New India Law. 1970 law allowed
Indians to reverse engineer drugs to promote better publish health
(e.g. aids drugs for $200/year v. $10,000/year in U.S. of aids
drugs come from India) Now must wait 3 years and pay reasonable
royalty to patent holder (4%? Is that reasonable? 45% - what German
company wants?) Difference between U.S. law and other countries
(U.S. used to patent for 17 years now 20 to harmonize with Europe.
U.S.World (primarily Europe) Filing First to Invent until 2013First
to File Worked No requirementYes, some countries Business Methods
Patentable, 2011 law restricted this somewhat. No Europe Yes - Asia
Grace Period Yes, can reveal secret and still file 1 year No, once
secret revealed no longer patentable Challenge 2011 Law made
consistent with world. Opposition challenge within 9 months Secret
Public after 18 months with some exceptions No, published after 18
months
Slide 44
Group Presentation: Groups 1 and 2 Diamond v., 447 U.S. 303
(1980)) Chakrabarty
Slide 45
Group Presentation: Groups 1 and 2 Diamond v. Chakrabarty, 447
U.S. 303 (1980)) Chakrabarty created a new bacterium Judged in this
light, respondents micro-organism plainly qualifies as patentable
subject matter. His claim is not a hitherto unknown natural
phenomenon, but to a non-naturally occurring manufacture or
composition of matter a product of human ingenuity giving a
distinctive name, character [and] use. [T]he patentee has produced
a new bacterium with markedly different characteristics from any
found in nature and one having the potential for significant
utility. His discovery is not natures handiwork, but his own;
accordingly it is patentable subject matter under 101.