Patent Law

1. Patent Law Presented by: Walker & Mann, LLP 9421 Haven Ave., Suite 200 Rancho Cucamonga, Ca. 91730 www.walkermann.com 909.581.8300 Office 909.945.5970 Fax

2. A patent is a Constitutional right. It is granted by the U.S. Patent and Trademark Office. It is designed to encourage inventions that are useful to society. Patents w w w. w a l k e r m a n n . c o m

3. What is a Patent • A granted property right that allows the owner “ to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States” • Term is 20 years from filing application w w w. w a l k e r m a n n . c o m

4. Types of Patents • Utility • Design • Plant w w w. w a l k e r m a n n . c o m

5. Utility Patents • Processing Methods • Machines • Manufacture • Compositions of Matter • Improvements to One of These w w w. w a l k e r m a n n . c o m

6. Design Patents • Limited to the ornamental design of an invention • Unrelated to the function of the invention • Term is 14 years from date of issue w w w. w a l k e r m a n n . c o m

7. Patent Law Basics • An invention must be useful • An invention must be novel • An invention must be non-obvious • An invention must be fully disclosed w w w. w a l k e r m a n n . c o m

8. Useful • “Whoever invents or discovers any new and useful …” • Must have some usefulness (utility) • The invention must work • Very few patents are rejected as being non-useful w w w. w a l k e r m a n n . c o m

9. Novel • The invention must be new • Must be different from anything previously known • Cannot get a patent: • Known or used by others in US before date of invention • Patented or published anywhere in world before date of invention w w w. w a l k e r m a n n . c o m

10. Novel • In public use or on sale in US more than 1 year before patent filing date • Patented or published by inventor or others anywhere more than one year before patent filing date • Invented by someone else w w w. w a l k e r m a n n . c o m

11. Non-obvious • The invention must not be obvious to a person “skilled in the art” • Must not be easily created or suggested by combining two or more previously known inventions w w w. w a l k e r m a n n . c o m

12. Fully Disclosed • Patent protection is granted in exchange for disclosure of everything known about the invention • Patent application must have a full, enabling disclosure • Must disclose best mode of the invention w w w. w a l k e r m a n n . c o m

13. Three Steps to a patent: • Determine Patentability • Conduct a Patent Search • File for a Patent Application w w w. w a l k e r m a n n . c o m

14. Patentability • A. Is the utility invention: • A process or method? • A machine? • An article of manufacture? • A composition of matter? Or • An improvement of one in the first four categories? • B. Is the utility invention: • Useful? • Novel? • Non-obvious? w w w. w a l k e r m a n n . c o m

15. Patent Search • Patent search Online: www.uspto.gov; www.google.com/patents • Patent search Offline: Patent and Trademark Depository Libraries • Other sources for publications and scientific articles w w w. w a l k e r m a n n . c o m

16. Filing a patent • Preparing and Filing a Patent Application can be an Arduous Task • You must consider all the Uses and Variations on your Invention • Professional Assistance Provides the Fullest Protection w w w. w a l k e r m a n n . c o m

17. Anatomy of a Patent • Specification – thorough description of invention and uses • Claims – the legal language which defines the boundaries of the invention • Drawing w w w. w a l k e r m a n n . c o m

18. Inventor vs. Owner • An inventor is any person who has contributed to any claim of patent • Inventorship never changes • Ownership can change • Patents are property • Patents can be sold or assigned to others w w w. w a l k e r m a n n . c o m

19. Benefits of Licensing • Patent owner (licensor) promotes commercial development and generates income • Licensee is free from suit • Both parties avoid infringement litigation w w w. w a l k e r m a n n . c o m

20. Licensing Terms • License Grant • Authorized activities: make, use, sell … • Nature of grant: exclusive vs. non-exclusive • Geographic scope • Terms and Conditions • Limitations • Excluded fields of use • Others w w w. w a l k e r m a n n . c o m

21. Licensing Terms • Licensing Fees • Term and Termination • Expiration of patent • Termination for convenience • Termination for cause w w w. w a l k e r m a n n . c o m

22. Patent Lawsuits • Federal Court Jurisdiction • Process • Pleadings – Complaint & Answer • Discovery – Written & Depositions • Markman hearing • Summary Judgment • Trial • Appeals w w w. w a l k e r m a n n . c o m

23. Patent Infringement • Literal • Requires infringement of all elements of the claim • Doctrine of Equivalents • Insubstantial differences in the function, method or result w w w. w a l k e r m a n n . c o m

24. Challenge to Patent Validity • Prior Art – Anticipation or Obviousness • Indefiniteness • Enablement • Best Mode • Inoperable • Inequitable Conduct w w w. w a l k e r m a n n . c o m

25. Defenses to Infringement • Non-Infringement • Literal • Doctrine of Equivalents • Estoppel • Latches w w w. w a l k e r m a n n . c o m

26. Lawsuit Remedies • Injunctive Relief • Temporary Restraining Order • Preliminary Injunction • Permanent Injunction • Damages • Lost Profits • Reasonable Royalties • Costs and Attorney Fees • Punitive Damages w w w. w a l k e r m a n n . c o m

27. Cease and Desist w w w. w a l k e r m a n n . c o m

28. Cloth Purse w w w. w a l k e r m a n n . c o m

29. Thank you We, at Walker & Mann, would like to thank you for your time today. Please keep us in mind in the event that we may be of service. w w w. w a l k e r m a n n . c o m

30. Obtain your FREE Consultation when mentioning this Presentation and Contacting: Walker & Mann, LLP 9421 Haven Ave, 2nd Floor Rancho Cucamonga, CA 91730 909.581.8300 Office 909.945.5970 Fax w w w. w a l k e r m a n n . c o m