BLAW PPT 27, Intellectual Property Rights: Patents

patent definiton

"A property right granted by the U.S. government that gives an inventor the "right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention."

Remedies for Patent Infringement

-1. Injunction - usually temporary -Can only be awarded a permanent injunction IF the patent holder proves 1) irreparable injury and 2) public would not be disserved by a permanent injunction 2. Damages for Royalties and Lost Profits -TREBLE (triple) Damages if infringement is deemed "willful" 3. Attorney's Costs and Fees (sometimes)

First-Inventor-To-File Receives Patent Protection as of DATE OF FILING for:

-20 years: utility patents -15 years: design patents AFTER term expiration, patent passes into the public domain

Conditions for Obtaining a Design Patent:

-An ornamental design embodied into or applied to an article of manufacture -Novel (new) -Non-Obvious

process

-Any process, act, or method -Primarily includes industrial or technical processes

patents

-Governed by Statutes (laws) contained in Title 35 of the U.S. Code -Significant recent amendments to Title 35:America Invents Act -You can patent practically anything that is human-made and the process for making the product

CANNOT BE PATENTED:

-Laws of Nature -Physical Phenomenon -Abstract Ideas -Mere ideas or suggestions -Inventions created solely to utilize special nuclear material or atomic energy in an atomic weapon

Microsoft v. AT&T

-MICROSOFT LIABLE for Patent Infringement IN THE UNITED STATES when code was incorporated Into computers MADE or SOLD IN THE U.S. -MICROSOFT NOT LIABLE for Patent Infringement when code was incorporated into computers MADE or SOLD In FOREIGN COUNTRIES

Example of Non-Obviousness

-McGinley v. Franklin Sports, Inc. -Training Baseball with color-coded markings where fingers should be placed is "non-obvious" invention and patentable

Patents and Foreign Countries

-U.S. Patent Law (Title 35 of U.S.C.) governs patents on inventions made and/or sold in the U.S. -An inventor from "Country A" who wants patent protection for a product made or sold in a foreign country ("Country B" ) must apply for and receive patent protection in Country B.

Searchable Patent Databases

-United States Patent and Trademark Office (USPTO.gov) -European Patent Office (EPO.org)

Conditions for Obtaining a Utility Patent: Useful (Usefulness) Invention must serve a USEFUL purpose

-Useful purpose includes "operability" -Example: If a machine has been designed to perform a task, the machine must actually be able to perform that task to be deemed "useful.

The tort of patent infringement occurs if another makes, uses, or sells:

-a whole part of another's patented 1. design 2. product -the entirety of another's patented 3. process -without the patent owner's permission

Examples of Non-Patentable Differences (too obvious)

-changes in color -changes in size

composition of matter

-chemical compositions -includes mixtures and new chemical compounds

manufacture

-refers to all articles that are made

Conditions for Obtaining a Utility Patent: To be patentable, an invention must be

-useful -novel (new) -non-obvious (in light or prior discoveries)

Three Types of Patents:

-utility patents -design patents -plant patents (not on exam)

To be novel, prior to the date the inventor made the invention, the invention must NOT have:

1. Been known or used by others in U.S. 2. Been described in a printed publication in ANYWHERE in the world Invention must be "novel" (new)

Novelty and the One-Year Statutory Bar: The inventor only has ONE YEAR to apply for a patent from the date the invention is first

1. described in any publication available to the public 2. used publicly 3. placed on sale

Statement that defines general field of patentable subject matter and conditions of patentability

Any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent."

A single item can be granted multiple patents:

Example: MP3 Player— -Utility patent for a novel and non-obvious memory device and -Design patent for appearance

Design Patents

May be granted to anyone who invents a new, original, configuration, shape, or ornamental design for an article of manufacture

Utility Patents

May be granted to anyone who invents or discovers any new and useful -Process -Machine -Article of manufacture -Composition of matter -Or any improvement of any of the above

First-Inventor-to-File (FITF)

Protection begins on DATE OF FILING patent application

Conditions for Obtaining a Patent: Non-Obviousness

Subject matter sought to be patented must be sufficiently different from what has been previously used or described, such that it would have been "nonobvious" to a person of ordinary skill in the area of expertise related to the invention

Scientist created a product and claimed in the patent application that the product could "restore hair growth." When tested, the product improved hair growth by 25%. Would the patent examiners (USPTO) likely grant the patent? a. Yes, the patent examiners would likely GRANT the patent b. No, the patent examiners would DENY the patent

a. Yes, the patent examiners would likely GRANT the patent

Kaan invented a widget on Jan 1, 2021. This widget had never before been written about anywhere in the world, nor had anyone in the U.S. ever heard of such a thing. However, a small Amazon tribe deep in the jungle had invented and used a widget for over a thousand years. Does Kaan's widget meet the U.S. patent test for "novel/novelty" so that he may potentially patent his widget in the U.S.? a. yes b. no

a. yes

An inventor created a "perpetual motion machine" which inventor argued could defy law of thermodynamics and produce energy output greater than energy input. When tested, the machine could not live up to this claim. Would the patent examiners (USPTO) likely grant the patent? a. Yes, the patent examiners would likely GRANT the patent b. No, the patent examiners would likely DENY the patent

b. No, the patent examiners would likely DENY the patent

After Kaan invented his widget on Jan. 1, 2021. He published a paper on his widget in a scientific journal on March 1, 2021. Thereafter, he gave public demonstrations and published additional papers on a regular basis. Kaan was so busy promoting his widget, however, that he did not file a patent application for his widget until July 1, 2022. Will the USPTO grant Kaan's patent application? a. yes b. no

b. no