PATENTS PROF JANICKE JULY 2007 F 2007 Patents

PATENTS PROF. JANICKE JULY 2007 F 2007 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? F 2007 Patents 2

THE USUAL QUESTIONS: • HOW LONG WILL IT TAKE? • WHAT CAN I DO WITH IT IF I GET IT? F 2007 Patents 3

ELIGIBILITY • JUST ABOUT ANYTHING BELIEVED TO BE “NEW” – BASICALLY NOT KNOWN BEFORE • COMPUTER SOFTWARE: GENERALLY YES • BUSINESS METHODS: YES F 2007 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 THING ANY MORE F 2007 Patents 5

INVENTORS • THOSE WHO THOUGHT OF SOMETHING COVERED BY THE CLAIM • NOT THOSE WHO LEARNED IT FROM SOMEONE ELSE F 2007 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 F 2007 Patents 7

INVENTORS • ARE ALWAYS THE INITIAL OWNERS OF THE PATENT RIGHT • USUALLY THEY ASSIGN TO A COMMON ENTITY, WHICH BANKROLLS THE APPLICATION F 2007 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 F 2007 Patents 9

PURPOSE OF A CLAIM: TO DEFINE COVERAGE AS BROADLY AS POSSIBLE • ANYONE WHO LATER OPERATES WITHIN THE LANGUAGE OF A CLAIM IS AN “INFRINGER” • OTHERS AREN’T F 2007 Patents 10

EXAMPLE OF CLAIMING: THE FIRST CAR • CLIENT SHOWS YOU A MACHINE SHE HAS DEVISED • IT HAS: – – – F 2007 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 F 2007 Patents 12

RETURN TO CAR EXAMPLE • ASSUME: CLOSEST PREVIOUSLY KNOWN MACHINE WAS THE HORSEDRAWN WAGON F 2007 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. F 2007 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 F 2007 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 F 2007 Patents 16

ONE EXCEPTION: NEW INFO ON PRIOR ART • YOU FIND OUT AT SOME POINT THAT THE LOCOMOTIVE PREEXISTED YOUR CLIENT’S DEVELOPMENT F 2007 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. F 2007 Patents 18

BROAD CLAIM COVERAGE IS ESSENTIAL • MOST PATENTS ARE DEAD LETTERS, BECAUSE THE CLAIM SCOPE IS NOT COMMERCIALLY MEANINGFUL • EASY TO DESIGN AROUND SUCH CLAIMS F 2007 Patents 19

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 F 2007 Patents 20

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 F 2007 Patents 21

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 F 2007 Patents 22

SOME MYTHS (cont’d) • IT HAS NOTHING TO DO WITH WHETHER THE IDEA IS A “GOOD” ONE • THE PROBLEM IS HIGH RISK F 2007 Patents 23

SOME ROUGH ESTIMATES • COST THROUGH U. S. ISSUANCE: $510 K AND UP • TIME TO ISSUANCE: 2 YEARS • EXCLUSIVITY IN MEANTIME: NONE F 2007 Patents 24

• FOREIGN COVERAGE NEEDED, TOO • EUROPE AND JAPAN: $30 K AND UP • MAINTENANCE FEES: ABOUT EQUAL TO PROCUREMENT COSTS F 2007 Patents 25

HOW EFFECTIVE IS A PATENT? • DEPENDS ON CLAIM SCOPE • DEPENDS ON $$ TO FIGHT • 45% ARE HELD INVALID F 2007 Patents 26

DO YOU HAVE TO DO A SEARCH BEFORE FILING? • [NO. BUT NON SEARCHING ENLARGES RISK OF WRITING UNPATENTABLE CLAIMS. ] F 2007 Patents 27

DO YOU HAVE TO BUILD AND TEST THE INVENTION BEFORE FILING? • NO. FILING APPLICATION ACTS AS “CONSTRUCTIVE” REDUCTION TO PRACTICE. NOT GOOD TO WAIT. F 2007 Patents 28

WHAT ARE THE CHANCES OF GETTING A PATENT ALLOWED? • IF YOU DON’T CARE ABOUT CLAIM SCOPE, MAYBE 90% • BUT MOST WILL BE DEAD LETTERS F 2007 Patents 29

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 F 2007 Patents 30

4 “PRIOR-ART” EVENTS: • PATENTING • DESCRIBING IN PRINTED PUBLICATION • OFFERING FOR SALE (IN U. S. ) • PUBLICLY USING (IN U. S. ) F 2007 Patents 31

NO WAY OUT (OTHER THAN EARLY U. S. FILING DATE) • EARLY INVENTION DATE WON’T HELP • FOREIGN PRIORITY DATE WON’T HELP F 2007 Patents 32

A CLOSER LOOK AT DESCRIBING IN A PRINTED PUBLICATION • REASONABLE ACCESSIBILITY REQ’D. – BUT DOESN’T HAVE TO BE WELL KNOWN – CAN BE IN A UNIVERSITY LIBRARY • ENABLING DISCLOSURE REQ’D. F 2007 Patents 33

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) F 2007 Patents 34

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 F 2007 – LEARNED HAND’S RULE RE. METHOD CLAIM SECRETLY USED IN PROFITABLE SERVICING: REBUILDING ENGINE PARTS Patents 35

SOME PRACTICAL PROBLEMS UNDER § 102(b) • [SEE FILE POSTED ON “R” DRIVE OR PAPER VERSION IN CLASS MATERIALS] F 2007 Patents 36

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) F 2007 Patents 37

THE DISCLOSURE PORTION OF THE APPLICATION • REFERS TO DRAWINGS, SPECIFICATION (OTHER THAN CLAIMS) • NORMALLY DOESN’T HAVE MAJOR IMPACT ON SCOPE F 2007 Patents 38

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 F 2007 Patents 39

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 F 2007 Patents 40

ACTS OF INFRINGEMENT • • • MAKING USING SELLING OFFERING TO SELL IMPORTING SOMETHING WITHIN THE CLAIM IN THE U. S. DURING THE TERM § 271 (a) F 2007 Patents 41

INDIRECT INFRINGEMENT • INDUCING § 271 (b) • CONTRIBUTORY § 271 (c) • SHIPPING PARTS § 271 (g) • IMPORTING PRODUCT OF PATENTED PROCESS § 271 (g) F 2007 Patents 42

TYPICAL MODERN BUSINESS TRANSACTION • THREE OR MORE PLAYERS: – PARTS/MATERIALS VENDOR – MANUFACTURER/SELLER – RETAILER • COULD BE MANY MORE: – CONSULTANT/ADVISOR – END USER F 2007 Patents 43

EACH PLAYER NEEDS TO BE ANALYZED FOR LIABILITY • CLAIM-BY-CLAIM ANALYSIS • DON’T COUNT ON INDEMNITY – BUT …. . F 2007 Patents 44

EXAMPLE: A POWER DRILL FOR HOME USE • PATENT HAS TWO CLAIMS: – 1. STRUCTURE OF DRILL – 2. METHOD OF DRILLING THROUGH CONCRETE F 2007 Patents 45

CONSIDER POSSIBLE INFRINGERS: • • VENDOR OF MOTORS TO TOOLCO RETAILER END USER WHO IS LIABLE FOR WHAT? F 2007 Patents 46

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 F 2007 Patents 47

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 F 2007 Patents 48

LICENSING • PERMISSION TO DO WHAT WOULD OTHERWISE BE ILLEGAL • 3 GENERAL TYPES: – NONEXCLUSIVE – SOLE – EXCLUSIVE F 2007 Patents 49

IMPLIED WARRANTIES • LICENSOR HAS SUFFICIENT TO GRANT THE LICENSE • LICENSE TO MAKE INCLUDES “HAVE MADE” F 2007 Patents 50

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 F 2007 Patents 51

NOT IMPLIEDLY WARRANTED: • RIGHT TO SUBLICENSE 3 RD PARTIES • RIGHT TO ASSIGN THE LICENSE – PERILOUS UPON MERGER F 2007 Patents 52

LITIGATION • THREE MAIN TYPES – INFRINGEMENT – DECLARATORY JUDGMENT OF INVALIDITY, NONINFRINGEMENT, OR UNENFORCEABILITY (BY ACCUSED INFRINGER) – DECLARATORY JUDGMENT OF INVALIDITY, NONINFRINGEMENT, OR UNENFORCEABILITY (BY LICENSEE) F 2007 Patents 53

PARTIES TO LITIGATION • PATENTEE IS NECESSARY, UNLESS SUBSTANTIALLY ALL RIGHTS ARE GONE TO EXCLUSIVE LICENSEE • ANY EXCLUSIVE LICENSEE HAS STANDING TO SUE (ALONE IF SHE HAS ALL RIGHTS; OTHERWISE JOINING PATENTEE) F 2007 Patents 54

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 F 2007 Patents 55