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PATENTS

PATENTS. PROF. JANICKE IP SURVEY COURSE 2011. THE USUAL QUESTIONS:. CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN IT? HOW MUCH WILL IT COST?. THE USUAL QUESTIONS:. HOW LONG WILL IT TAKE? WHAT CAN I DO WITH IT IF I GET IT?. ELIGIBILITY.

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PATENTS

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  1. PATENTS PROF. JANICKE IP SURVEY COURSE 2011

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

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

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

  5. 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 IP Survey -- Patents

  6. INVENTORS • THOSE WHO THOUGHT OF SOMETHING COVERED BY THE CLAIM • NOT THOSE WHO LEARNED IT FROM SOMEONE ELSE 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 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 IP Survey -- Patents

  9. 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 IP Survey -- Patents

  10. 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 IP Survey -- Patents

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

  12. 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 IP Survey -- Patents

  13. RETURN TO CAR EXAMPLE • ASSUME: CLOSEST PREVIOUSLY KNOWN MACHINE WAS THE HORSE-DRAWN WAGON IP Survey -- Patents

  14. 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. IP Survey -- Patents

  15. 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 IP Survey -- Patents

  16. 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 MINI-PATENT IP Survey -- Patents

  17. ONE EXCEPTION: NEW INFO ON PRIOR ART • YOU FIND OUT AT SOME POINT THAT THE LOCOMOTIVE PRE-EXISTED YOUR CLIENT’S DEVELOPMENT IP Survey -- Patents

  18. 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. IP Survey -- Patents

  19. 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 IP Survey -- Patents

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

  21. 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!” IP Survey -- Patents

  22. 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 IP Survey -- Patents

  23. HOW EFFECTIVE IS A PATENT? • DEPENDS ON THE CLAIM SCOPE • DEPENDS ON $$ TO FIGHT • 45% ARE HELD INVALID IP Survey -- Patents

  24. 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 IP Survey -- Patents

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

  26. 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 IP Survey -- Patents

  27. LACK OF NOVELTY FOR A CLAIM AND LOSS OF RIGHTTO A CLAIM • FOCUS ON §102 (b) – IT ACCOUNTS FOR 90% OF SITUATIONS ENCOUNTERED IN REAL LIFE IP Survey -- Patents

  28. 4 “PRIOR-ART” EVENTS: • PATENTING • DESCRIBING IN PRINTED PUBLICATION • OFFERING FOR SALE (IN U.S.) • PUBLICLY USING (IN U.S.) IP Survey -- Patents

  29. 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 IP Survey -- Patents

  30. NO WAY OUT(OTHER THAN EARLY U.S. FILING DATE) • EARLY INVENTION DATE WON’T HELP • FOREIGN PRIORITY DATE WON’T HELP IP Survey -- Patents

  31. 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. IP Survey -- Patents

  32. 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) IP Survey -- Patents

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

  34. SOME PRACTICAL PROBLEMS UNDER § 102(b) • [SEE FILE IN CLASS MATERIALS: “TIMEBAR PROBLEMS ON PATENT CLAIMS”] IP Survey -- Patents

  35. 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) IP Survey -- Patents

  36. THE DISCLOSURE PORTION OF THE APPLICATION • REFERS TO DRAWINGS, SPECIFICATION (OTHER THAN CLAIMS) • NORMALLY DOESN’T HAVE MAJOR IMPACT ON SCOPE IP Survey -- Patents

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

  38. 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! IP Survey -- Patents

  39. INFRINGEMENT IS OFA CLAIM • JUDGMENT IN A PATENT CASE IS BY CLAIMS, NOT “THE PATENT” • ONE CLAIM STANDING VALID AND INFRINGED = A VICTORY FOR THE PATENT OWNER IP Survey -- Patents

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

  41. INDIRECT INFRINGEMENT • INDUCING §271 (b) • CONTRIBUTORY §271 (c) • SHIPPING PARTS §271 (g) • IMPORTING PRODUCT OF PATENTED PROCESS §271 (g) IP Survey -- Patents

  42. TYPICAL MODERN BUSINESS TRANSACTION • THREE OR MORE PLAYERS: • PARTS/MATERIALS VENDOR • MANUFACTURER/SELLER • RETAILER • COULD BE MANY MORE: • CONSULTANT/ADVISOR • END USER IP Survey -- Patents

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

  44. EXAMPLE: A POWER DRILL FOR HOME USE • PATENT HAS TWO CLAIMS: • STRUCTURE OF A DRILL 2. METHOD OF DRILLING THROUGH CONCRETE, USING THAT DRILL IP Survey -- Patents

  45. CONSIDER POSSIBLE INFRINGERS: • VENDOR OF MOTORS TO TOOLCO • TOOLCO • RETAILER • END USER WHO IS LIABLE FOR WHAT? IP Survey -- 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 CO-OWNERS IP Survey -- 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 IP Survey -- Patents

  48. LICENSING • PERMISSION TO DO WHAT WOULD OTHERWISE BE ILLEGAL • 3 GENERAL TYPES: • NONEXCLUSIVE • SOLE [does not exclude patent owner] • EXCLUSIVE [excludes patent owner] IP Survey -- Patents

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

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