PATENTS PROF JANICKE IP SURVEY COURSE 2010 Patents

PATENTS PROF. JANICKE IP SURVEY COURSE 2010 Patents

THE USUAL QUESTIONS: • CAN I GET A PATENT ON ____? • IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN IT? • HOW MUCH WILL IT COST? 2010 Patents 2

THE USUAL QUESTIONS: • HOW LONG WILL IT TAKE? • WHAT CAN I DO WITH IT IF I GET IT? 2010 Patents 3

ELIGIBILITY • JUST ABOUT ANYTHING BELIEVED TO BE “NEW” – BASICALLY NOT KNOWN BEFORE • COMPUTER SOFTWARE: GENERALLY YES • BUSINESS METHODS: YES 2010 Patents 4

ACTUAL INVENTORS MUST “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 2010 Patents 5

INVENTORS • THOSE WHO THOUGHT OF SOMETHING COVERED BY THE CLAIM • NOT THOSE WHO LEARNED IT FROM SOMEONE ELSE 2010 Patents 6

INVENTORS • YOU DON’T REALLY KNOW WHO THEY ARE UNTIL THE CLAIMS ARE DRAFTED • THOSE INVOLVED IN A MINISTERIAL OR MANAGERIAL WAY AREN’T 2010 Patents 7

INVENTORS • ARE ALWAYS THE INITIAL OWNERS OF THE PATENT RIGHT • USUALLY THEY ASSIGN TO A COMMON ENTITY, WHICH BANKROLLS THE APPLICATION 2010 Patents 8

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 2010 Patents 9

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 2010 Patents 10

EXAMPLE OF CLAIMING: THE FIRST CAR • CLIENT SHOWS YOU A MACHINE SHE HAS DEVISED • IT HAS: – – – 2010 CHASSIS 4 WHEELS 10 -CYLINDER ENGINE BRAKE ON EACH WHEEL 3 -SPEED TRANSMISSION Patents 11

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 2010 Patents 12

RETURN TO CAR EXAMPLE • ASSUME: CLOSEST PREVIOUSLY KNOWN MACHINE WAS THE HORSEDRAWN WAGON 2010 Patents 13

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. 2010 Patents 14

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 2010 Patents 15

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 MINIPATENT 2010 Patents 16

ONE EXCEPTION: NEW INFO ON PRIOR ART • YOU FIND OUT AT SOME POINT THAT THE LOCOMOTIVE PREEXISTED YOUR CLIENT’S DEVELOPMENT 2010 Patents 17

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. 2010 Patents 18

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 2010 Patents 19

ONLY CLAIMS ARE HELD VALID OR INVALID – NOT “PATENTS” • EACH CLAIM IS ADJUDICATED INDEPENDENTLY • A “PATENT” IS NEITHER VALID NOR INVALID 2010 Patents 20

ONLY A CLAIM CAN BE INFRINGED • ACCUSED INFRINGING PRODUCT/METHOD MUST BE WITHIN LANGUAGE DEFINING THE FAMILY OF A VALID CLAIM • “CLAIM SCOPE IS EVERYTHING!” 2010 Patents 21

• 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 2010 Patents 22

SOME MYTHS • “HE HAS A PATENT ON THE IDEA OF PUTTING …. . ” • REALITY: FOR EACH CLAIM, HE HAS A PATENT COVERING THE FAMILY OF COMBINATIONS RECITED IN THE CLAIM 2010 Patents 23

SOME MYTHS • “THERE IS A GREAT MARKET FOR THE STRUCTURE I HAVE ACTUALLY DEVISED” • REALITY: MARKETS ARE NOT STRUCTURE-SPECIFIC; CLAIMS BROAD ENOUGH TO COVER FOLLOW-ON DESIGNS ARE CRITICAL 2010 Patents 24

SOME MYTHS • “WE’RE GOING TO LICENSE IT TO A BIG COMPANY!” • REALITY: BIG COMPANIES DON’T WANT AN OUTSIDE IDEA; IT IS A NUISANCE UNLESS IT ADVANCES THEIR FIVE-YEAR PLAN 2010 Patents 25

SOME MYTHS (cont’d) • IT HAS NOTHING TO DO WITH WHETHER THE IDEA IS A “GOOD” ONE • THE PROBLEM IS HIGH RISK 2010 Patents 26

SOME ROUGH ESTIMATES • COST THROUGH U. S. ISSUANCE: TYPICALLY $10 K AND UP • TIME TO ISSUANCE: 2 YEARS • EXCLUSIVITY IN MEANTIME: NONE 2010 Patents 27

• FOREIGN COVERAGE NEEDED, TOO • EUROPE AND JAPAN: $30 K AND UP • MAINTENANCE FEES: ABOUT EQUAL TO PROCUREMENT COSTS • TOTAL: $100 K-140 K AVERAGE 2010 Patents 28

HOW EFFECTIVE IS A PATENT? • DEPENDS ON THE CLAIM SCOPE • DEPENDS ON $$ TO FIGHT • 45% ARE HELD INVALID 2010 Patents 29

DO YOU HAVE TO DO A SEARCH BEFORE FILING? • NO. BUT NOT SEARCHING ENLARGES RISK OF WRITING UNPATENTABLE CLAIMS. • PTO NOW MOVING TO REQUIRE SEARCHES 2010 Patents 30

DO YOU HAVE TO BUILD AND TEST THE INVENTION BEFORE FILING? • NO. FILING APPLICATION ACTS AS “CONSTRUCTIVE” REDUCTION TO PRACTICE. • NOT GOOD TO WAIT. 2010 Patents 31

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 2010 Patents 32

LACK OF NOVELTY FOR A CLAIM AND LOSS OF RIGHT TO A CLAIM • FOCUS ON § 102 (b) – IT ACCOUNTS FOR 90% OF SITUATIONS ENCOUNTERED IN REAL LIFE 2010 Patents 33

4 “PRIOR-ART” EVENTS: • PATENTING • DESCRIBING IN PRINTED PUBLICATION • OFFERING FOR SALE (IN U. S. ) • PUBLICLY USING (IN U. S. ) 2010 Patents 34

RULE • IF ANY ONE MEMBER OF THE CLAIMED FAMILY APPEARS IN THE PRIOR ART, THE CLAIM IS INVALID – TRUE NO MATTER HOW REMARKABLE THE OTHER SPECIES ARE – DISCOVERY OF GREAT PROPERTIES, AND THEIR DISCLOSURE IN THE PATENT, WILL NOT SAVE THE CLAIM 2010 Patents 35

NO WAY OUT (OTHER THAN EARLY U. S. FILING DATE) • EARLY INVENTION DATE WON’T HELP • FOREIGN PRIORITY DATE WON’T HELP 2010 Patents 36

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 • ENABLING DISCLOSURE IS REQ’D. 2010 Patents 37

A CLOSER LOOK AT THE ON-SALE BAR • COMPLETED SALE NOT REQUIRED • OFFER IN U. S. IS ENOUGH • INVENTION MUST BE “READY FOR PATENTING” Pfaff v. Wells Electronics, 525 U. S. 55 (1998) 2010 Patents 38

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 2010 – LEARNED HAND’S RULE RE. METHOD CLAIM SECRETLY USED IN PROFITABLE SERVICING: REBUILDING ENGINE PARTS Patents 39

SOME PRACTICAL PROBLEMS UNDER § 102(b) • [SEE FILE IN CLASS MATERIALS: “TIMEBAR PROBLEMS ON PATENT CLAIMS”] 2010 Patents 40

OBVIOUSNESS • THE CENTRAL GROUND OF REJECTION IN MOST APPLICATIONS • KEYED TO THE PERSON “OF ORDINARY SKILL IN THE ART” AT THE TIME INVENTION WAS MADE § 103(a) 2010 Patents 41

THE DISCLOSURE PORTION OF THE APPLICATION • REFERS TO DRAWINGS, SPECIFICATION (OTHER THAN CLAIMS) • NORMALLY DOESN’T HAVE MAJOR IMPACT ON SCOPE 2010 Patents 42

THE DISCLOSURE PORTION OF THE APPLICATION • IS A BURDEN IMPOSED BY STATUTE • MUST TEACH HOW TO MAKE AND USE WHAT’S CLAIMED § 112 (1 para. ) • MUST SET FORTH THE “BEST MODE” – SUBJECTIVELY § 112 (1 para. ) st st 2010 Patents 43

• 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! 2010 Patents 44

INFRINGEMENT IS OF A CLAIM • JUDGMENT IN A PATENT CASE IS BY CLAIMS, NOT “THE PATENT” • ONE CLAIM STANDING VALID AND INFRINGED = A VICTORY FOR THE PATENT OWNER 2010 Patents 45

ACTS OF INFRINGEMENT • • • MAKING USING SELLING OFFERING TO SELL IMPORTING SOMETHING WITHIN THE CLAIM IN THE U. S. DURING THE TERM § 271 (a) 2010 Patents 46

INDIRECT INFRINGEMENT • INDUCING § 271 (b) • CONTRIBUTORY § 271 (c) • SHIPPING PARTS § 271 (g) • IMPORTING PRODUCT OF PATENTED PROCESS § 271 (g) 2010 Patents 47

TYPICAL MODERN BUSINESS TRANSACTION • THREE OR MORE PLAYERS: – PARTS/MATERIALS VENDOR – MANUFACTURER/SELLER – RETAILER • COULD BE MANY MORE: – CONSULTANT/ADVISOR – END USER 2010 Patents 48

EACH PLAYER NEEDS TO BE ANALYZED FOR LIABILITY • CLAIM-BY-CLAIM ANALYSIS • DON’T COUNT ON INDEMNITY – BUT …. . 2010 Patents 49

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 2010 Patents 50

CONSIDER POSSIBLE INFRINGERS: • • VENDOR OF MOTORS TO TOOLCO RETAILER END USER WHO IS LIABLE FOR WHAT? 2010 Patents 51

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 COOWNERS 2010 Patents 52

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 2010 Patents 53

LICENSING • PERMISSION TO DO WHAT WOULD OTHERWISE BE ILLEGAL • 3 GENERAL TYPES: – NONEXCLUSIVE – SOLE [does not exclude patent owner] – EXCLUSIVE [excludes patent owner] 2010 Patents 54

IMPLIED WARRANTIES • LICENSOR HAS SUFFICIENT TO GRANT THE LICENSE • LICENSE TO MAKE INCLUDES “HAVE MADE” 2010 Patents 55

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 2010 Patents 56

NOT IMPLIEDLY WARRANTED: • RIGHT TO SUBLICENSE 3 RD PARTIES • RIGHT TO ASSIGN THE LICENSE – PERILOUS UPON MERGER 2010 Patents 57

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) 2010 Patents 58

SUITS AGAINST THE UNITED STATES • MUST BE IN COURT OF FEDERAL CLAIMS • NO INJUNCTIONS ALLOWED • NO SUITS OR REMEDIES AGAINST CONTRACTORS ALLOWED 2010 Patents 59

PARTIES TO LITIGATION • PATENTEE IS NECESSARY, UNLESS SUBSTANTIALLY ALL RIGHTS ARE GIVEN OVER TO EXCLUSIVE LICENSEE • ANY EXCLUSIVE LICENSEE HAS STANDING TO SUE (ALONE IF SHE HAS ALL RIGHTS; OTHERWISE JOINING PATENTEE) 2010 Patents 60

PARTIES TO LITIGATION • NONEXCLUSIVE LICENSEE HAS NO STANDING TO SUE • PARTIES DEFENDANT: CAN INCLUDE INDIVIDUALS WORKING FOR CORPORATION – THIS IS TORT LAW – NO IMMUNITY FOR EMPLOYEES 2010 Patents 61