IT400 Midterm Terms (CH 4)

Definition of a Patent

A government-granted intellectual property right that allows an inventor to exclude others from making, using, selling, or importing their invention for a limited period

How long is a patent valid for

20 years from filing date

Purpose of the Patent System

Advancement of the arts and sciences, protection encourages creation and disclosure of inventions

TYPES OF PATENTS

Plant Patents, Utility Patents, Design Patents

Plant Patents

Protect unique characteristics of a plant

Utility Patent

A patent granted for a new and useful process, machine, manufacture, or composition of matter

Design Patent

A patent granted for a new, original, and ornamental design for an article of manufacture

Utility Patent: Types of Inventions Covered

Processes, Machines, Manufactures, Compositions of matter (e.g., new chemicals)

Business Method Patents

Cover inventions related to new methods of doing business, online transaction systens, business models, and methods of organizing/processing data

Internet Patents

For inventions related to internet technologies, like onllune services, e-commerce systems, softwares, or digital communication methods

USPTO (United States Patent and Trademark Office)

The agency within the U.S. Department of Commerce responsible for administering patents and trademarks

What is the most issued type of patent

Utility patents

REQUIREMENTS FOR PATENTABILITY

Novelty, Non-obviousness, and utility

What must also be included in a patent (aside from the 3 main requirements)

An adequate description of the invention that allows others skilled in the field to understand and reproduce it

Novelty

An invention must be new and not previously disclosed or made available to the public before a patent application is filed

Non-Obviousness

An invention must not be obvious to someone skilled in the relevant field based on prior art

Utility

An invention must be useful and have a practical application

First to Invent Doctrine

A system where patent ownership is based on who is the first to invent, rather than the first to file a patent application

Interference Proceedings

An administrative proceeding in the USPTO to determine who is entitled to a patent when two or more applicants claim the same invention

Conditions for Interference

• Two pending applications claiming the same invention

• One pending application and a patent issued within a year

TYPES OF PATENT INFRINGEMENT

Direct infringement, Literal infringement, Contributory infringement, Induced infringement

Direct Infringement

Occurs when someone makes, uses, sells, or imports a patented invention during the patent’s term without permission

Literal Infringement

Happens when each detail of a patent claim matches the details in the accused product or process

Contributory Infringement

Involves one party aiding another in the unlawful use or sale of a patented invention

Induced Infringement

Occurs when someone actively encourages another party to infringe a patent

Doctrine of Equivalents

Allows for infringement claims even if the accused product does not literally meet the claim’s details, if it is equivalent in function, way, and result

Purpose of the Doctrine of Equivalents

Prevents minor changes from avoiding infringement and protects the core ideas of the invention

REMEDIES IN PATENT INFRINGEMENT CASES

• Permanent Injunction (stop the sale or use of infringing device/method)

• Damages (compensate the patent owner for past infringement, such as: reasonable royalties, lost profits, willful infringement, or attorney’s fees)

Reasonable Royalties

The amount a licensee would pay to use the patented invention while still making a profit, used as a measure of damages in patent infringement cases

Lost Profits

Damages awarded to a patent owner to compensate for lost revenue due to infringement

Willful Infringement

Patent infringement committed with knowledge of the patent and without a reasonable basis to believe the use was permissible, which can result in enhanced damages

Markman Hearing

A legal proceeding where the judge determines the meaning of the language used in the patent claims

Trade Secret

A formula, practice, design, instrument, or compilation of information kept confidential, by which a business can obtain an economic advantage over competitors or customers

Are trade secrets protected under federal or state laws

Trade secrets are protected under state law, unlike patents which are governed by federal law

Uniform Trade Secrets Act (UTSA)

A model law governing trade secret protection, adopted by most U.S. states (45 states)

PROTECTING TRADE SECRETS with

Preliminary Injunction

Preliminary Injunction

An order from a court to have someone refrain from doing a specific act until a trial can be held

Preliminary Injunction: Courts evaluate the following factors

• Likelihood of Success (plaintiff ’s probability of winning the case)

• Irreparable Harm (if plaintiff will face significant harm without the injunction)

• Balance of Hardships (Weighs the harm to both parties if the injunction is granted or denied)

• Public Interest (how the injunction may affect the public)