PATENTS PROF JANICKE IP SURVEY COURSE 2012 THE

PATENTS PROF. JANICKE IP SURVEY COURSE 2012

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 2

THE USUAL QUESTIONS: • HOW LONG WILL IT TAKE? • WHAT CAN I DO WITH IT IF I GET IT? 2012 IP Survey -- Patents 3

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 4

• CASES: – CHAKRABARTY – PROMETHEUS – BILSKI 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 2012 IP Survey -- Patents 9

AIA CHANGE • PURPORTED OR ACTUAL ASSIGNEE CAN FILE • STILL NEED AN INVENTOR STATEMENT • PROBABLY WILL SELDOM BE USED 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: – – – 2012 CHASSIS 4 WHEELS 10 -CYLINDER ENGINE BRAKE ON EACH WHEEL 3 -SPEED TRANSMISSION 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 HORSEDRAWN 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 MINIPATENT 2012 IP Survey -- Patents 18

ONE EXCEPTION: NEW INFO ON PRIOR ART • YOU FIND OUT AT SOME POINT THAT THE LOCOMOTIVE PREEXISTED 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. 2012 IP Survey -- Patents 20

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 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 2012 IP Survey -- Patents 24

• “CLAIM SCOPE IS EVERYTHING!” 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”) 2012 IP Survey -- Patents 31

• 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 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 2012 IP Survey -- Patents 33

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 34

5. PRIOR INVENTING BY SOMEONE ELSE IN THE U. S. , WHO DID NOT UNREASONABLY CONCEAL IT • NOTE: THIS RARELY HAPPENS. THE SYSTEM LABEL “FIRST-TOINVENT” IS A MISNOMER 2012 IP Survey -- Patents 35

NEW LAW (FOR APPLICATIONS FILED 3/16/13 AND LATER) • PATENT-DEFEATING EVENTS: – 3 RD PARTY PUBLIC USE ANYWHERE, BEFORE HOME-COUNTRY FILING DATE – 3 RD PARTY OFFER FOR SALE ANYWHERE, BEFORE HOME-COUNTRY FILING DATE 2012 IP Survey -- Patents 36

– 3 RD PARTY PUBLIC DISCLOSURE ANYWHERE, BEFORE HOME-COUNTRY FILING DATE – 3 RD PARTY APPLICATION FILING* (IN ANY PARIS CONVENTION COUNTRY), ** BEFORE HOME-COUNTRY FILING DATE *PROVIDED THE 3 RD PARTY FOLLOWS UP WITH A U. S. APPLICATION. ** PARIS CONVENTION INCLUDES NEARLY ALL COUNTRIES OF THE WORLD 2012 IP Survey -- Patents 37

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* * 2012 FILING IN ANY COUNTRY STOPS THE CLOCK, WITH USUAL PROVISOS IP Survey -- Patents 38

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 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

• CASE: – IN RE HALL 2012 IP Survey -- Patents 42

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 43

• CASE: – PFAFF 2012 IP Survey -- Patents 44

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 2012 – LEARNED HAND’S RULE RE. METHOD CLAIM SECRETLY USED IN PROFITABLE SERVICING: REBUILDING ENGINE PARTS IP Survey -- Patents 45

• CASE: – CITY OF ELIZABETH 2012 IP Survey -- Patents 46

SOME PRACTICAL NOVELTY PROBLEMS UNDER 1952 LAW • [SEE FILE IN CLASS MATERIALS] 2012 IP Survey -- Patents 47

SOME NOVELTY PROBLEMS (AND ANSWERS) UNDER THE NEW LAW • FOR PATENTS FILED AFTER MAR. 15, 2013 • [SEE JANICKE-DOLAK SET OF PROBLEMS, IN COURSE MATERIALS] 2012 IP Survey -- Patents 48

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 49

• CASE: – GRAHAM v. JOHN DEERE 2012 IP Survey -- Patents 50

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 51

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. ) st 2012 IP Survey -- Patents 52

“BEST MODE” REQUIREMENT NOW IN DOUBT • STILL IN § 112 • ALL PENALTIES FOR VIOLATION HAVE BEEN REMOVED BY AIA • ? ? ? 2012 IP Survey -- Patents 53

INFRINGEMENT OF A CLAIM (NO CHANGE UNDER NEW LAW) • 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 54

ACTS OF INFRINGEMENT • • • MAKING USING SELLING OFFERING TO SELL IMPORTING SOMETHING WITHIN THE CLAIM IN THE U. S. DURING THE TERM § 271 (a) 2012 IP Survey -- Patents 55

DOCTRINE OF EQUIVALENTS • CASE: – WARNER-JENKINSON 2012 IP Survey -- Patents 56

FDA EXEMPTION • EXEMPTION FROM INFRINGEMENT WHERE MAKING, USING, ETC. , ARE FOR FDA CLINICAL TRIALS OR RESEARCH § 271(e) 2012 IP Survey -- Patents 57

• CASE: – ELI LILLY 2012 IP Survey -- Patents 58

INDIRECT INFRINGEMENT • INDUCING INFRINGEMENT§ 271 (b) • CONTRIBUTORY INFRINGEMENT§ 271 (c) • SHIPPING PARTS FOR INFRINGEMENT ABROAD § 271 (f) • IMPORTING or SELLING PRODUCT OF PATENTED PROCESS, WHERE PROCESS WAS CARRIED OUT ABROAD § 271 (g) 2012 IP Survey -- Patents 59

DANGER: PATENT EXHAUSTION • “FIRST SALE DOCTRINE” • FIRST AUTHORIZED SALE (BY PATENTEE OR LICENSEE) EXHAUSTS THE PATENT RE. THE ITEM SOLD 2012 IP Survey -- Patents 60

• CASE: – INTEL v. ULSI 2012 IP Survey -- Patents 61

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 62

EACH PLAYER NEEDS TO BE ANALYZED FOR LIABILITY • CLAIM-BY-CLAIM ANALYSIS • DON’T COUNT ON INDEMNITY – BUT …. . 2012 IP Survey -- Patents 63

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 64

CONSIDER POSSIBLE INFRINGERS: • • VENDOR OF MOTORS TO TOOLCO RETAILER END USER WHO IS LIABLE FOR WHAT? 2012 IP Survey -- Patents 65

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 2012 IP Survey -- Patents 66

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 67

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 68

IMPLIED WARRANTIES • LICENSOR HAS SUFFICIENT TO GRANT THE LICENSE • LICENSE TO MAKE INCLUDES “HAVE MADE” 2012 IP Survey -- Patents 69

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 70

NOT IMPLIEDLY WARRANTED: • RIGHT TO SUBLICENSE 3 RD PARTIES • RIGHT TO ASSIGN THE LICENSE – PERILOUS UPON MERGER 2012 IP Survey -- Patents 71

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 72

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 2012 IP Survey -- Patents 73

• CASES: – TITANIUM – LIQUID DYNAMICS 2012 IP Survey -- Patents 74