Patent Law Midterm

What is intellectual property?

• Property rights recognized and protected by federal and state laws.

• It covers intangible property (products of the mind), as opposed to real property.

Earliest IP Example

Sybarites with recipes in 500BC

Two Goals of IP

• Reward innovation

• Accelerate technology and knowledge through disclosure

Constitutional basis for patents

• Congress may promote progress of science and useful arts by securing exclusive rights to the authors

First US Patent

• Granted to Samuel Hopkins for a pot ash/pearl ash process

Japanese official anecdote (~1890)

• Said that what made the US great was the patent system

Big Four Types of IP

• Patents

• Copyrights

• Trademarks

• Trade Secrets

What right does a patent give?

• The right to exclude

• They don’t necessarily have the right to make the product (color TV without TV rights can’t sell color TV’s)

Patent Types

• Utility (20 years)

  • Protects new and useful processes or devices

• Design (15 years)

  • Protects new and original ornamental designs for something manufactured

  • Non-functional

• Plant (20 years)

  • Protects a new distinct plant variety someone breeds

What is patentable?

• “Anything under the sun” except for laws of nature, natural phenomena, and abstract ideas

What is the dirty secret of patents?

• They are too easy to file, too easy to defend, and too easy to use for hobbling legitimate competition

• Lately, tipped too muc in favor of the patent-holder'

• Americans have lost their ability to choose

• Recently, the allowance rate for patents has dropped significantly

Copyrights

• Protects the creative expression of ideas, not the actual ideas

• Artwork, music, photos, code

• Automatically applicable without filing, but must be registered to sue

Trademarks

• Protects the identifiers of a product’s company

• Brand names, logos, slogans, sometimes colors

• Advantage to consumer because they’re not confused about who made something

• Advantage to producer because no one is ripping off their product’s identity

• Can be lost if it becomes generic word for product

  • Aspirin

  • Escalator

Trade Secrets

• Any information not available to the public that provides a competitive advantage with reasonable measures to maintain secrecy

• Lasts indefinitely if not reverse engineered

  • Good because patents can be time consuming and difficult

• Coca-cola, Premarin (Drug where method of making was still trade secret after patent expired)

Requirements for Patentability

• Useful

  • Functional

    • No perpetual motion machine

  • Not an abstract ide, law of nature, or natural phenomenon

• Novel

  • Is it new?

  • Can anything be found in the past that describes your invention/idea?

• Non-obvious

  • Is the change or idea that you have sufficiently creative?

  • Standard chair has 4 legs, and you try to patent a chair with 3 legs

Prior Art

• The entire existing body of publicly available human knowledge at the time a patent application is filed

  • Used to prove against novelty of your patent

• Patents filed aren’t publicly available for 18 months, but examiners can use these non-public patent filings prior to yours as prior art

How can you create prior art against yourself?

• “Self-Defeating Disclosures”

• If someone puts your independently puts your same idea into prior art before you patent it, you can’t get a patent

• If you put your invention into prior art, then you get a one-year grace period to file a patent

  • Publish it

  • Public use

  • Sale

  • Public Presentation

What is absolute novelty?

• When publicly disclosing your document doesn’t give you a grace period and IS used against you

  • Not in the US

• Even though you have a one-year grace period in the US, you’ve likely given up your idea for countries outside the US

  • There are some countries that have a similar grace period, but most apply absolute novelty like China

• Always file your patent application before you have public disclosure

When do you need an NDA?

• You need someone to test theory of invention

• Want to approach someone about commercializing invention

• Need to outsource a product covered by a trade secret

Does discussing an idea behind an NDA start the one-year patent timer?

• Due to the disclosure, it doesn’t start the timer unless there is a sale or offer for sale

How does an NDA affect a trade secret?

• NDA’s maintain the “integrity” of the trade secret

Common NDA provisions…

• “…and all inventions and developments which arise there from…” means that any inventions that they make as a result of the technology you’re showing them belong to you as well

Patent Anatomy

• Front Page

  • Patent Number

  • Patent Issue Date

  • Inventors

    • If someone is listed who shouldn’t be or someone isn’t listed who should be, there is grounds for the patent to be invalidated

  • Assignee

    • The party to whom the inventors assign the rights of the patent

      • Ex: Amazon

  • Legal Representation

    • Attorney and firm

  • Examiner

  • Cited References

    • Everything the examiner found that is relevant to the case

    • “Duty of disclosure” means if you are found to intentionally leave something out that might invalidate your patent, that is grounds to automatically invalidate your patent

  • Abstract

    • Summary of patent

• Drawings

  • Liberal format

  • Not to scale

  • Various types

    • Illustrations

    • Flowcharts

    • Block diagrams

• Detailed Description

  • Background

  • Summary

  • Description of drawings

  • Detailed description of idea

    • Must be detailed enough that someone in the field can replicate the invention

      • NOTE! This is called the invention being “enabled”

• Claims

  • Each claim is one really long sentence

  • They define the scope of what the patent covers

  • Types of claims

    • Apparatus/System

    • Method

      • Claim of a method

    • CRM

    • Independent vs. Dependent

Independent vs Dependent Claims

• Dependent claims are strung onto independent claims as a “fallback”

• For example, a dependent claim might say “Device of claim one contains everything in claim 1 and also ___” so you’re actually adding on a thing to have a claim against additional elements

• The idea is this: you can create one broad independent claim that is really powerful because its broad, but if for whatever reason they prove that there was prior art for that broad claim, you have dependent claims (broad claim + small detail), which are less likely to be invalidated because they’re more specific (less chance prior art has all elements)

• Ex:

  • Broad: Chair comprising a seat and legs

  • Dependent: Chair comprising a seat, legs, wheels, and a reclining back rest

  • If someone proves there was a char with seat and legs previously, you’re broad claim would be invalidated, but because you still have that dependent claim, you still keep the right to exclude chairs with that description

What if someone gets a patent for an improvement which overlaps another patent?

• If there is overlap, they still don’t have the right to produce the product with that improvement, but they do have the right to exclude others from producing the product with that improvement

• Most of the time they would work together to buy/sell one of the patents or partnership

• T.V. → Color T.V.

How can you tell if a device infringes on your patent?

• If any single claim is completely infringed

  • All elements are present in the new device

What if they don’t know that they’re infringing or do it overseas?

• Anyone making, using, selling, offering for sale, or importing a patented item knowingly or unkowingly, is subject to patent infringement

• Importing a produce made by a patented method overseas is also patent infringement

Induced Infringement

• To be sued, the person must be knowingly inducing infringement

• This is essentially encouraging infringement of a patent

  • Selling Aspirin with dosage instructions of a patented method to cure cancer

  • Posting directions for how to create something patented online

Contributory Infringement

• You sell or provide an item that has no other substantial use than to allow for infringement of a patent

• A paperweight describing how to change your TV to a color TV

• Selling a plant extract that isn’t used for anything but a patented method to cure cancer

Construing Claims

• “How do we define the terms of the claims?”

• We define terms in light of the specification

  • You can define terms in the spec to play into how things are interpreted in court

• “Markman Hearings” are opportunities for lawyers to have an open discussion about how a patent is interpreted

  • Judge decides in the end how it will be interpreted

Doctrine Equivalents

• Any change I make that has the same function/way/result as the original idea is “insubstantial” and deemed equivalent

• Concrete cutter with hard wheel → Concrete cutter with soft wheel

  • Patent infringement by doctrine of equivalents

• Only applies if you keep all elements of a claim and switch one of them out for something insubstantial

  • You can still drop an element altogether

Designing around a patent…

• Look at claims

• Find something that can be omitted

• If we can’t omit something, find something we can change (substantial change)

What are the three kinds of claims?

• Apparatus/System Claim

  • Claims a physical thing (device, machine, or system)

• Method Claim

  • Claims a series of steps for doing something (process rather than object)

• CRM (computer-readable medium) claim: claims a storage medium holding software instructions that, when executed by a computer, perform the steps