Patents

Issue Date

determines when patent is available to public

Filing Date

what prior art and references can be used to invalidate patent

Patent Disclosure Requirement

- claims must provide adequate disclosure

Patent Enablement Requirement

- Sufficient description to teach a PHOSITA in the art how to make and use the invention

Patent Description Requirement

- Sufficient description to show the possession (actually invented it) of the invention
- Prove to PHOSITA that one knew full context and implication of invention

Disclosure Requirement ensures that...

patents are issued to inventors that actually contribute fully to the development of knowledge

Utility Requirement ensures...

not only real invention, but in some cases that the patents are finished

Components of Patent Claims

- breaks invention down in major components
- trying to maximize overall amount of subject matter that patent can cover without including prior art

How to define claim terms

- what PHOSITA would understand that term to mean

Claims are

- independent
- Separately determined
- defines boundaries of invention

Only one claim...

needs to be violated to win case

Tuesday

day government issue documents about patents issued

What is within patent?

Title, Serial Number, Inventor & Assignee, Technology Fields, References Cited, Abstract, Drawings, Specification, Claims

Assignee

Company that patent is transferred to

Specification

- description of invention
- how it relates to prior arts
- improvements
- how to make and use
- best ways to use
- explain drawings

USPTO

- Alexandria
- part of US Department of Commerce
- Two tasks: review applications, review granted patents

Divergence between

amount of patents filed and granted

Pendency

time between filed and decision on patent (average 2 years)

Ex parte process

no opposition party, patent system is ex parte

how long can patent be private for

18 months

How to enforce

- find federal district court, file lawsuit
- Appeals to US Court of Appeals for the Federal Circuit

Private Litigation System

no one is tracking enforcement, patentee has to determine

Major Litigation Issues

- infringement, validity, damages

Life of Patent

Invention, application, patent issue, expiration

Patent Prosecution

The process of obtaining a patent which includes examination of the patent application by the PTO

Enforcement Phase

time when one can sue, have to pay maintenance fees

Patent value

- Negative cash value
- most have no cash value, small are very high value (pharmaceuticals)

Licensing Patents

Lending the right to make, use or sell your product for fee

Patent Prosecution Examinee Responses

- Office Actions (usually rejections)
- Interviews
- Notice of Allowance (met standard)
- Other Notices (clarification)
- Final Rejection

Standard for Patentability

- Fully and Appropriately Described
- Novel
- Nonobvious
- Work of the inventors
- Useful
- Within appropriate subject matter

How to evaluate Patentability

- Analyze the claim, determine whether claim meets the standards for patentability
- evaluate independently

PHOSITA

person having ordinary skill in the art

Disclosure should only teach...

what is new/needed to PHOSITA

Novelty Requirement

- must be new
- not identically described to public prior to patent filing date

Prior art

anything public before filing date

Nonobviousness Requirement

- nonovious means significant advancement over prior art according to PHOSITA
- "Ultimate Standard of Patentability"

What is Obvious

- varies by courts

- work of simple mechanic
- suggest by the problem to be solved
- widely known in other fields
- prompted by new technology

Inventorship Requirement

- Inventors must be human
- Inventor is joint owner of the patent
- all inventors must be listed on the patent, anyone who contributed to any claim

Inventorship ensures...

origin and ownership of the inventions is clear

Utility Requirement

- not scientifically implausible
- specific and substantial use

Scientifically Implausible Test

- does the invention violate laws of physics?
- rely on inherently flawed science

Subject Matter Exclusions

- Products of nature or natural phenomena
- Abstract Ideas

Products of Nature

- already exist in nature
- man-made versions of nature can be patented (genetically engineered plants or animals)

Abstract Ideas

- inventions that are too fundamental (i.e. math equation are too fundamental, describe things that already exist in the world)

Examples of too fundamental

- math
- well-known activities
- entirely mental steps

Why Abstract Ideas are excluded

- too broad
- balance of "public bargain" is needed

Patent Claims define...

- scope of the patented invention
- what is covered
- whether claim is valid

Claims Structure

- number
- preamble
- claim elements or limitations

Dependent Claims

must refer to a claim previously set forth and must further limit that claim

Interpreting Patent Claims

- Step 1: Dissect Claim into Parts
- Step 2: Open or Closed Claim?
- Step 3: Create a claim chart
- Step 4: Clarify any uncertain terms

Open claim

- Almost all patents are open claims, use the word "comprising" which means one would be infringement even if something is added

How does PHOSTIA define term

- variety of sources related to field, find "Ordinary Meaning"
- term in context of the specification
- expressed definitions within document

Cautions when determining Patent Coverage

- Title, abstract, drawings can be misleading

To determine patent coverage, always look at...

claims

Defense to infringement

- invalidity of patent is almost always used as defense

Pros of enforcing patent

- strengthens competitive position
- force licensing revenue
- strengthen technological position

Cons of enforcing patent

- High costs
- might lost the patent
- time consuming and distracting

Defendant Strategic Decision-Making

- very strong incentives to settle
- patent litigation often backwards (product was sold years ago)

Benefits of defendant winning

- invalidating a patent can change industry
- Avoiding infringement can establish technological roadmap

Approaches to enforcement

- win at all costs litigation
- licensing at fair levels

Statue of limitations

patent holders must file their infringement lawsuit within six years of the date of the alleged infringement in order to recover damages.

Acts of Patent Infringement

- Making
- Using
- Selling
- Offering to Sell
- Importing
- Filing
- ANDA (Abbreviated New Drug Application, filing generic drug)

Who chooses courts?

Patentee, can sue almost anywhere if large company

Patent Litigation Process

- Patentee files complaint
- Defendant Answers
- Discovery
- Trial
- Post-trial motions
- Appeal
- Judgment (injunction or finding non infringement)

Patent Infringement

- if an element is not within accused device, no infringement

Doctrine of Equivalents

in patent infringement law, if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.

Issues with Doctrine of Equivalents

- very complex, difficult without litigation
- courts have tried to limit doctrine, patentees rarely win

How to Avoid Infringement

- eliminate claim elements on your product
- create non-equivalent substitutes

Designing Around

process of working around another patent, can result in improved design

Accidental Infringement

not a defense

Willful infringement

lead to triple damages

Remedies for Infringement

Injunction

Monetary Damages

Goal of remedies is to

put the patentee in the position she would have been without infringement

How damages are measured

- Lost Profits: profit of what a patentee would have made
- Reasonable Royalty: What the license agreement would have been

Lost Profits vs Reasonable Royalty

Lost profits result in higher awards, harder to prove

Length of Patent

20 years from time patent was filed, takes 2 years to finish patent process

What happens when patent expires?

Public Domain

Pharma Patent Strategy

Patent on early stage prospects, smaller companies don't know which will work but stake claim, patent strategy switches over to bigger companies in which they patent heavily on the prospects they think will work out