BYU Patent Law

What are the 3 main courses of action if a patent is rejected?

1. Amend the application, pay the fees, and the process starts over. 2. Can file an appeal with the Board of Payment Appeals and Interference. 3. Give up and abandon the application.

What are the three parts of a claim?

1. An introduction 2. A transitional phrase 3. A Body

What should an assignment reference?

1. Application number 2. Date of filing 3. Name of the inventor 4. Title of the invention as stated in the application.

What two events take into account the actual process of producing a useful invention?

1. Conception 2. Reduction to practice.

What are the dangers of filing a provisional patent applications?

1. Disclosing something that you intended to retain as a secret. 2. not disclosing enough information to meet the legal requirements for patenting the invention.

What cannot be patented?

1. Laws of Nature 2. Natural Phenomena 3. Abstract Ideas

How can you infringe a patent?

1. Making it 2. Using a device or performing a method 3. Selling or Offering 4. Importing a product 5. Importing a product made using a patented process.

What are the benefits to recording an assignment?

1. Others know you own it. 2. Protects you from fraudulent actions done by original seller.

What does a NDA stipulate?

1. Party A has confidential information. 2. Party A needs to disclose information to Party B. 3. Party B understands its a secret and will only use it for Party A's intended use.

The front page of the patent includes what?

1. The Patent Number 2. The date of patent issued 3. Title of the invention 4. The inventors 5. Assignee 6. References 7. Patent examiner 8. Legal Examiner 9. Abstract 0. Mini Figure

What are the parts of Patent Text?

1. Title and then a statement of the field 2. Background of the Invention 3. Summary of the Invention 4. Brief Description of the Drawings 5. Detailed Description on the invention. 6. The claims.

What are the three Legal Requirements to Patent?

1. Useful 2. New 3. Unobvious

Patent Types

1. Utility Patents 2. Design Patents 3. Plants Patents

Examination Outline (Patent Examiner Outline of Events)

1. Verify all parts of application are present. 2. Classified to the technical field. 3. The examiner may wait up to a year, but then thoroughly examines the patent. 4. Search Prior Art 5. Prepare an Office Action

How long did it take to issue the first million US patents?

121 years.

How long does an application under the PCT delay filing for?

30 months from the earliest application that is claimed priority from.

What is an Obligation to Assign?

A contract that usually requires that the employee-inventor to execute an assignment for the invention, patent application or patent at the request of the employer.

What is a Power of Attorney?

A document saying that a lawyer can represent clients at the Patent Office, and in court.

What is a Markman hearing?

A hearing held before the judge in a patent infringement suit to determine how the claims will be construed. Occurs before a patent infringement case.

How is an assignment different from a license?

A license allows the licensee to make, use or sell the invention with authorization from the patent owner. A license does not typically transfer ownership rights in the patent.

What is a national stage application?

A patent application in any of the countries that are members of the PCT and were designated as countries of interest when the PCT application was filed.

How long is a patent valid for?

A patent is valid and enforceable from the date it is issued by the U.S. Patent office until 20 years from the date on which the patent application for the patent was filed. (More like 17 years than 20)

Trade Secret

A piece of information that is not publicly available and that gives its owner a competitive advantage in the business world.

What mechanism determines who was first-to-invent?

A proceeding called an "interference" that is conducted in the U.S. Patent Office by the Board of Patent Appeals and interferences (BPAI)

Who can grant licenses?

A single inventor can grant a non-exclusive license. All the inventors must authorize an exclusive license.

What is Prosecution?

A term used to describe the process of shepherding a patent application through the examination process at the U.S. Patent Office to issuance as a U.S. patent.

What is a provisional patent?

A written document that describes the invention. Protects the invention for one year. Cannot be enforced against an infringe. This does not mature into a patent. It mostly gives priority to the date that it was filed.

Who has the majority share in a patent with Joint Inventorship?

All inventors hold the same rights of the patent.

How does a trademark protect a consumer?

Allows consumers to relate quality with name.

What is the purpose of the PCT?

Allows the inventor or invention owner a significant amount of time in which to explore the commercial potential of the invention.

What is the Paris Convention?

An application filed in most any country in the world can claim priority from an earlier U.S. patent application. It will be treated as having been filed at the same time the earlier U.S. patent application was filed.

What is an agent "of record"?

An attorney or agent who has Power of Attorney in an application.

What is an IDS?

An information disclosure statement (often abbreviated as IDS) refers to a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during the patent prosecution process. 1. An IDS form, which lists all documents that are being cited 2. A copy of each of the documents being cited 3. An explanation of why any non-English language documents cited are thought to be relevant to the patent application. 4. You are disclosing the information that you are aware of to the USPTO. 5. You must disclose any new info you learn.

What is a Patent Cooperation Treaty?

An inventor can file a single "international" patent application.

What is absolute novelty.

Any public disclosure anywhere in the world will bar an applicant from seeking and obtaining a patent.

What happens when a patent expires?

Anyone is free to make, use, sell, etc the invention described in the patent.

What can be patented?

Anything under the sun that is made or done by mankind.

When can an inventor sell his or her rights?

Anytime. Before the idea is thought of, while it is pending, before it is filed, after it is issued. It can be done without consulting the other inventors.

What can one do if the examiner claims that it is obvious from prior art?

Argue that the prior art documents cited do not, in fact, show all the features of the claimed invention. The claims can be amended to recite additional feature or elements that are not showing in the cited prior art references.

Constitution Article

Article VIII: Congress shall have power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

What legal protections does a Trade Secret hold?

As longs as the owner takes care to protect the secret, courts can award damages, and prevent others from using the secret.

What can a patent agent do?

Can only represent clients at the Patent Office, drafting applications and responding to actions taken on those applications.

What is the open ended Transitional Phrase?

Comprising of......

What is the close ended Transitional Phrase?

Consisting Of

Who can exploit the invention?

Each inventor has an independent right, without the authorization of the other inventors and without accounting to the other inventors.

Patent

Gives the owner exclusive right to exclude others from making, using, selling, offering for sale or importing the invention covered by the patent. This is the fundamental idea of a patents.

When is a patent infringed?

If any one of claim of a patent is infringed. It is not necessary that every claim of the patent be infringed.

When is a claim infringed?

If each and every element, step, function, relationship, etc. recited by the claim is found in the device or method under consideration for infringement.

What is the "best mode" requirement?

If the inventors are aware of any components or methods for implementing the invention that are particularly advantageous, these should be disclosed to the patent attorney.

What undergraduate degree must a patent attorney have?

In a scientific or technical subject.

How long is a Trade Secret protected?

It is protected for as long as the trade secret is kept a secret.

What is an employment agreement?

It transfers the rights to a patent to the employer, and the US Patent Office will recognize the right of the employer.

What date is claimed when filing patents in other countries?

It would claim priority from the earliest filed application.

What can one do if a "final" office action is sent?

Minimal changes can be made in response to why the patent was denied.

What other schooling must a patent attorney complete?

Must complete law school, pass the bar exam. Must also pass the patent bar.

What are some of the areas protected by copyright?

News reporting, books, music, performance arts, graphic arts, architecture, and software.

Do I need to place my lawyer under an NDA?

No.

Does a patent filed under the PCT mature into a patent?

No.

Is it required to record an assignment with the Patent Office?

No.

What happens in the public domain?

Once a patent is in the public domain, it can never be re-patented.

Where is a patent valid?

Only in the country where it is issued.

If disclosed, who allows a grace period.

Only the U.S., All other countries will deny the patent applications, even under the PCT.

What is a Plant Patent?

Protects an asexually bred plant.

What is a Utility Patent?

Protects the functionality or hardware of an invention.

Trademark

Protects the reputation of a person or business that provides goods or services in the marketplace.

Copyrights

Protects the specific manner in which ideas are expressed.

What is a Design Patent?

Protects the way something looks.

What must one show to change the list of inventors?

Provide evidence that the misstatement as to the identity of the inventors was inadvertent and not done with any deceptive intent.

Federal Trademark Rights

Registered with the federal government. Prevents anyone in the entire country from using.

Common Law Trademark Rights

Rights acquired by using a mark in commerce in a geographical region. Others can use it if it is not in that region.

What is Contributory Patent Infringement?

Selling an item that has no other use than to infringe another patent.

What is an inventor?

Someone who has contributed an idea to the invention, and that idea is set forth in a least one claim of the patent.

What is induced Patent Infringement?

Someone who induces someone else to infringe a patent, is as guilty as if he/she had committed the infringement personally.

What is a patent agent?

Someone who passes the patent bar, and not the bar exam.

Life of a patent

Starts when the patent is issued, stops 20 years after the application was filed.

A question of ownership is governed by who?

State Law

What does working diligently to "reduce to practice" mean?

That the inventor continued to work with the idea after conception to refine the idea into a useful form.

Who manages the PCT?

The World Intellectual Property Organization (WIPO)

What can one do if the application is incomplete and does not explain the invention enough to be duplicated?

The applicant cannot add NEW information. The response will have to detail how the application does fully explain the invention.

Who is issued the patent if it has been assigned before the patent fee has been paid?

The assignee.

Why copyright?

The idea is to secure for those who produce a copyrightable work the opportunity to exploit the commercial value of that work.

What is a "final" office Action?

The last office Action that an examiner will issue.

When can you correct inventorship?

The list of inventors can be corrected before the application issues while it is pending.

What is an NDA

The non-disclosure agreement allows the inventor or the trade secret owner to disclose the invention or trade secret for legitimate purposes without adverse legal consequences.

Who can file a PCT application?

The owner of the rights to the invention without the cooperation of the inventors.

What happens if inventorship is wrongly listed?

The patent is invalid.

Who can provoke an interference?

The patent office - When they notice two patent applications, or a recently issued patent and an application. A patent applicant

What is "prior art"?

The universe of publications and public knowledge that exists before an alleged invention is made.

How are assignments done?

They are made by a written sales contract. Which is also refereed to as an assignment.

Upon receipt of the Office Action, the applicant can respond to the rejections made. What does this entail?

This may entail making changes to the application.

Trade Secret VS. Patent

Trade secrets can be things that can't be patented. But can also be things that can be patented. Patents expire, trade secrets do not. Patents are legally upheld above Trade Secrets. Client list is a trade secret but could not be patented.

United States code 17

United states copyright law

What is an assignment?

When a patent is sold or the rights of any one owner of the patent are transferred.

What is Patent Infringement Under the Doctrine of Equivalents?

When there is no literal infringement, but two elements perform the same function, in the same way, to achieve the same result.

Can a dependent claim be infringed?

Yes, a dependent includes all the features of the claim from which it depends.

Is reverse engineering permitted?

Yes, it is not illicit and is permitted.

Can someone take the Patent Bar without a law degree?

Yes, the only requirement is a scientific or technical undergraduate degree.

Can a patent or trade secret still be sought after a breach of an NDA?

Yes.

Can you use a patent as collateral for a loan?

Yes.

Can an employment contract demonstrate an obligation to assign?

Yes. An employer can submit a copy of the employment contract demonstrating the obligation of the inventor to assign the invention to the company. They will then allow the employer to pursue a patent without the inventor.