EAS 507 - Patents Midterm

Novelty

* no other single prior art defined in Section 102 a source exactly shows the new invention *anticipation of a patent claim by prior art reference requires that each and every element in a claim is found (expressly or inherently) in a single prior art reference

Possession of IP

*An idea alone is not 'possession' of IP... possession is shown through creation

Method/Software Patents

*Judicial exceptions to exclusions (some things can get patents even though they do not fit into one of the 101 categories)

Plant Patents Lifespan

- 20 years from filing date - no maintenance fees due

Drawing Requirements

- Black ink. Black and white drawings. - photographs are not usually permitted in utility and design patent applications - must contain as many views as necessary to show the invention

Patents expire before 20 years?

- If maintenance fees are not paid

PCT (Patent Cooperation Treaty)

- Treaty between all signatory countries for a streamlined patent application process in those countries - Part of the treaty is to treat a PCT application filing date as the actual filing date in those countries

Ornamental Design

- Visual characteristics - Subject matter of a design patent application is for: - shape of an article - surface ornamentation applied to an article - or the combination of shape & and surface ornamentation. Both design & utility patents may be obtained for an invention if BOTH are new and nonobvious

Responses to Final Rejection

- advisory action - minor amendment puts application in condition for allowance - request for continued exam - continuation in part application (new amendments or arguments are made) - appeal to board

What can you do w/ your patent property?

- can be only seller in market - can sell/auction it - can rent it out / license - can leave it in a will - can lose it if taxes not paid - can sue another for infringement - can leverage it -

Utility Patents

- lifespan = 20 years - patent protection begins on date patent issues - patent protection ends on date 20 years from FILING date of first nonprovisional / PCT application in chain (not provisional date) - patent pending - time btwn filing applicaiton and patent issuance - protection is not in effect during this time

Diamond v Diehr

-direct digital control of rubber molding presses - first SC holding that software can be a process - court - math formulas in abstract are not eligible for patent protection... BUT algorithm in this case is integrated into a larger process that controlled the rubber machinery (not preemptive) - claim is not to the formula, but to the process of curing rubber

Anticipation

1. Express Anticipation: a single other prior art reference directly & expressly shows each & every exact part or step listed in a claim 2. Inherently Anticipation: a part or step may be inherent in the prior art - not expressly shown but is an understood as a required part/step.

Patent Eligibility TEST (for ALL patents)

1. claim directed to one of the four subject categories (process, machine, manufacture, or composition of matter) 2. Is claim directed to an abstract idea - is the process ineligible b/c it's abstract? 3. Can you get past the judicial exceptions to patentability? Does process have a physical/tangible component making it more than abstract... or does it transform something

Abstract

500 words or less. Similar to a scientific/engineering publication abstract. Simple explanation of invention so others can find it during a patent search YOU WANT IT TO BE FOUND

What happens after the 20years?

All patents expire and the technologies then go into the public domain - no exceptions (free market policy)

Inventor's Oath

An application... shall include, or be amended to include, the name of the inventor for any invention claimed in the application...each individual who is the inventor ... shall execute an oath or declaration in connection with the application. * must be aware of the duty to disclose to the office all info known to the person to be material to patentability

Patent Lingo

Common structural connection terms: Mounted Fixed to Engaging Positioned between Connected pivotably Annular If a solid piece Unitarily Molded Locations Proximal, distal Upper surface (top side), Lower surface (bottom) Along a Longituduinal axis (for length)

Unfair Competition

Competitive actions that cause an economic injury to a bsuiness or person... patent/trademark/copyright infringement, trade secret theft...

Prosecution History Estoppel

During application process, applicants often amend claims to overcome prior art rejection. Later, patent owner may not be able to claim infringement for area he gave up or most equivalents *gives up broadness during amendments and devices that are not identical to the narrowed limitation area may not be infringing

If claims found to be not patentable

Examiner writes a summary of the examination called an "Office Action"

Non-provisional Patent Application

Full patent application from which a patent might issue

Requirement: NEW

NEW = Novel and Not Obvious (compared to prior art)

Limitation

Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.

Brief Description of the Drawings

One sentence of what views are shown in each drawing - ONE OF THE EASIEST SECTIONS - AND PEOPLE GET IT WRONG A LOT>

Patent Court System

Patent Trials start in the US District Court, then go to US Court of Appeals for the Federal Circuit, then to the US Supreme Court

Patents and possession

Patent application demonstrates possession... "Written Specification that Enables" - detailed written description and drawings that have enough info for a person of ordinary skill in the art (PHOSITA) to make and use the invention w/o undue experimentation ... 'enables' a skilled person to make your invention... too vague will get rejected

Roslin v Sequenom

Roslin v Sequenom - cffDNA case -Detecting fetal DNA in mother's blood - using well known method for natural phenomenon - not patentable. 2 judicial exclusions: a natural phenomenon (cffDNA) and an abstract idea (diagnostic steps) but combined them to give a novel and useful result. However, the CAFC, applying Mayo v Prometheus case law: adds nothing innovative to the process. Would preempt use of diagnostic method.

Natural Laws

SC - Analysis should ask if claims are to laws of nature themselves - which not patent eligible to specific applications of such laws - might be patent eligible. To transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than "apply it" the law of nature

Method Patents

ex. Joseph E Seagram v. Marzell - patent on "blind testing" whiskey blends for consumer perferences would put serious restraint upon the advance of science and industry ... refused

Plant Patent Law

"Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title."

Utility Patent Law

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, subject to the conditions and requirements of this title."

Infringement Law

"Whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." 2 Ways to Infringe: - literal - non-literal: Doctrine of equigvalents 2 types of groups that infringe: - direct infringement (the party themselves infringed) - indirect infringement (helped/encouraged someone else to infringe)

Rights of Co-owners

"[I]n the absence of any agreement to the contrary, each owner may make, use, offer to sell, or sell the patented invention within the Unites States, or import the patented invention into the United States without the consent of and without accounting to the other owners." * like each person owns the patent 100%

Process Patents

"methods of business" ruled not patentable historically... * early process patents for MFG (ex. making textiles)

Design Patent Law

(a) IN GENERAL.—Whoever invents any new, original, and ornamental (can be seen) design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

Material to patentability

* There is no duty to submit info which is not material to the patentability.. - info included - it establishes, by itself or in combination w/ other info - case of unpatentability of a claim OR - refutes, or is inconsistent, with a position the application takes in (opposing an argument of unpatentability relied on by the office or asserting an argument of patentability * if USPTO already knows about some prior art, then applicant doesn't have to submit the redudant prior art

Paris Convention

* agreement that allows for filing a second application within 12 months of a first patent application (6 months for trademarks) - 1st patent application/publication will not be considered to be prior art - If you miss the deadline you ARE prior art to yourself **MANY other countries don't have grace period and ANY public disclosure is a complete ban

USPTO Searching

* secret prior art - pending apps not published for public viewing until about 18 months after filing date * provision apps are not published *THERFORE there might be a pending app that hasn't been published yet

Lifespan > 20 years

** can't renew patents after 20 years - technology goes into public domain - extra time sometimes granted b/c of backlog in patent application processing - "Patent term adjustment"

International Patent Protection

*Patent rights are honored between countries through conventions or treaties that these countries have signed - Paris Convention (if filed w/i 1 year applicants EFD is the date of first app) - 176 / 195 countries * if u don't file w/i a year prior art may bar you from filing in other countries (don't have grace periods) - Patent Cooperation Treaty (PCT) **there is NO international app

Strategy for Patent Apps

*launching a startup want to focus patent app on cost-effectively protecting one core innovation 2 main issues: - timing and cost **File early and often!! if u can *plan early or else could miss the opportunity to protect your invention in foreign countries *some countries bar apps if any public disclosure ... doesn't include prior patent filings as long as you file in these countries w/i 1 year

Notice to the public

*may give notice to the public that the patented article is patented either by fixing thereon the work 'patent' or the abbreviation 'pat.' together w/ the number of the patent *or mark "patent pending" on a product *notice by posting on website for virtual inventions *limit on damages does not apply if patent markings were inadequate

Prior Art Criteria (in a search)

*not the same as determining if it would infringe a live patent Criteria - Novelty - a single source includes ALL features of the invention - expressly or inherently - Obviousness - 1 or more combined sources show the invention to be obvious or only has a minimal amount of inventiveness

Provisional Application

- A low(er)-cost way to establish an earlier effective filing date for a later-filed non-provisional patent application with fewer formalities - Utility and plant patents - not for design patents - Does not mature into a patent - Is not examined and never published - Does not require: - An oath/declaration - A claim - An information disclosure statement (prior art) - Allows you to say 'patent pending' - But if you do not file the nonprovisional in time - must stop saying that and remove such markings **Problem when inventors improve/modify in the 12 months and want to add this new material into the nonprovisional (results in 2 EFD's)

Comparing Flook and Diehr

- Flook - process not patentable b/c method involved use of a formula w/o an inventive concept - Diehr - process patentable b/c combination of steps was NOT obvious and additional steps of the process integrated the equation into the process as a whole

Subject Matter for Design Patents

- Ornamental for any of the utility patent subjects * Improper - design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentally (no unique or distinctive shape or appearance) * must be original * subject matter can't be offensive

Patent Rights Give an Entrepreneur

- Protection over the idea - Long-term competitive edge - Investors (not as risky if there are patents) - Marketing (consumer confidence) - Profits - License or franchise to others w/o risk

How to write a claim:

- a single sentence - each claim can be directed to only one of the classes of subject matter at a time (can't have a device AND a method in a single claim) 1st - figure out exactly what features of your device are the inventive parts POINTS OF NOVELTY - why is your thing new and good? What is the most important thing to protect? - try to be as broad as possible so potential infringer can't just tweak it - write claims to get past prior art (more narrow claims, but might be necessary to not infringe) 2nd - draft an independent claim that defines your invention in broad terms describing one or more points of novelty, leaving out any and all unnecessary options. ex: What I claim is: 1. A chair for resting (preamble) comprising (transitional word) a seat and a plurality of legs affixed to the seat. (body) 3rd - include dependent set of claims that further defines your invention with as much specificity and with every option you can think of. ex: 2. The chair of claim 1 wherein the seat is kidney shaped. 3. The claim of claim 1 wherein the seat is square shaped. 4. The chair of claim 2 wherein the legs are made of wood.

US EFD

- actual filing date of patent or application in US - filing date of the earliest application - patent or application is entitled to a right of priority (assert your invention as prior art against later filed inventions) **if earliest filing date is in foreign country must file w/i 1 year in USA or PCT to claim right of priority - if not filed w/i a year becomes prior art!!

State Street Bank v. Signature Financial Group

- confirmed business methods as eligible subject matter as a process (including software) - involved loophole - way to avoid taxes (used software to do the calculations .. - SS bank wanted patent invalid b/c abstract - FC ruled method was patent eligible b/c it involved the transformation of data representing discrete dollar amounts - produces a useful concrete tangible result (final share price) *UPDATED TEST - cant be automating mental steps - method must involve a specific machine or - transformation of data w/ useful, concrete, tangible result

Diagnostic / Software Methods Advice

- emphasize a novel result and improved/different method - emphasize the improvement to a technical process and/or physical changes to computer memory

Duty to Disclose

- have to disclose information material to patentability * Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.

Updated Software Test

- if software process invention involves "transforming data or reducing an article to a different state or thing" it is patent-eligible - UPDATED TEST - not merely mental steps AND process uses specific machine or transforms data/thing

When is it better to publish first and then file a patent application?

- if the patent application is filed w/i 1 year of the date of disclosure - the disclosure/publication and patent app have a substantially identical disclose - patent protection outside of US is not desired **BOTTOM LINE - file FIRST b4 you do anything *if you can't file or don't want to then publish the detailed info to prevent someone else from filing for a patent

Software as Process Patents

- initially did not allow software patents - software is not a process (considered a computer implemented method..) - originally just protected by copyright but only protects against copying source code - not rewriting the code & using the algorithm

Parker v Flook

- method claim in patent app for updating an alarm limit in a process for catalytic conversion of hydrocarbons using a computer to monitor a variable and analyze if process is complete (if conditions during process are not met an alarm goes off) - patent involved an algorithm to calculate an updated alarm limit value - COURT - Mental Step process - NO INVENTIVE CONCEPT - Method is Abstract (merely uses a formula w/o any other inventive part)

Temporary Secret Prior Art

- patent applications are kept secret when initially filed but published later (w/i a year) - applicant can't find it in a search - prior to publication, applications can be withdrawn (IF withdrawn or abandoned b4 publishing - NOT prior art) - if not withdrawn, but publishes after the EFD - it is PRIOR ART as of its own EFD *If foreign publication publishes AFTER EFD of another US app, that publication is NOT PRIOR ART *foreign app published b4 EFD - always prior art

Gottschalk v. Benson - 1972

- patent software that converts signals from binary coded decimal form into pure binary form - SC ruled unpatentable b/c application tried to claim a math formula ... the conversion of BDC to pure binary can be done mentally

Claims

- separate sheet of paper - What I (We) claim is... a device for carrying on a person's belt a fragile, disposable cup having walls tapered from an upper end of a first preselected.... 1st claim is one long sentence (independent claim) *next claims are dependent

Mental Steps Test

- software methods that simply digitize what can be done by a person using pen/paper are not patent eligible under Section 101 (method is not a process under 101) -this holding should not be construed as excluding computer programs from patentable subject matter (from Gottschalk case)

Not Inventorship

- someone whose only contribution is reducing an invention to practice by exercising ordinary skill in the art ex - technician who assembles the invention - supervisor or department manager of inventor - someone whose only contribution is an obvious element to the invention

Design Patents & Continuation Apps

- used when solid lines in the parent application are amended to broken lines in order to claim a part of the design (rather than the entire design) - parent app for entire thing - child app has solid lines for a part and amends to broken lines for the rest -"broaden" the scope of the design patent - the single feature gets its own protection *can illustrate more than one embodiment of a design invention in a single app if they involve a single inventive concept and are not patentably distinct from one another

Myriad Genetics

- using known methods on naturally occurring DNA sequences. Preemption problem - cannot claim patent rights over known methods that would stop others from using those methods. Naturally occurring things - DNA sequences are natural even if isolated

Patentability

- what CAN be patented and what BARS you from getting one (NOT same thing as infringement) *USPTO doesn't consider infringement when deciding IF something is patentable

Current Eligibility Test

1. Does the invention fit into a statutory category? 2. If yes, is there a judicial exclusion to patentability (physical phenomenon, natural item or law, abstraction (software) etc.)? 3. If not allowed, ask if it is allowable anyway (allowed exception): Something extra than programming mental steps Something that would not preempt others from using known methods Something that transforms data/thing for a physical result/change

Background of the Invention

1. Field of the Invention - sentences that simply state the broad field of the technology 2. description of related art - broadly describes related things used in the past and problems w/ them *don't direction discuss prior art

3 Types of Patents

1. Utility (new FUNCTION) 2. Design (new LOOK for product) 3. Plant

Design Patent Infringement

1. designs plainly dissimilar (if yes - no infringement) 2. substantially similar to prior art (yes - infringement) 3. looks more like patent than prior art? (yes - infringement)

Infringement Rules

1. only LIVE patents can be infringed 2. infringement can only occur in countries where patents have issued and are still live 3. infringement is analyzed for the INDEPENDENT claims of a live patent (if it doesn't infringe independent claim 1 it therefore CANNOT infringe dependent claim 2)

Liability for exporting components of a patented invention

2 parts: - whoever without authority supplies... from the US all or a substantial portion of the components of a patented invention ... shall be liable as an infringer - whoever without authority supplies... from the US any component of a patented invention that is especially made or adapted for use in the invention and not suitable for substantial non-infringing use... knowing that such component is so made and intending that the component will be combined outside of the US in a manner that would infringe the patent Takeaways!! - If you send components to another country and parts are NOT from the US - you are not liable. - Software is considered to be a 'component' Component does not have to be a tangible item - Can be liable even if components shipped are never actually combined - Under part 2 - a single part can make you liable IF it has no other use than for infringement - Does not apply to method patents

Indirect/Direct Infringement

2 types of groups that infringe: - direct infringement (the party themselves infringed) - indirect infringement (helped/encouraged someone else to infringe) * inducement infringement - inducing another to infringe (sells a product w/ advertising or instruction about an infringing use) * contributory infringement - giving a part/component to someone knowing the completed item will infringe (sells a material part of the invention which has no other use than to help infringe a patent) *MUST have INTENT to be liable for indirect infringement (for direct infringement the infringer can infringe w/o even knowing about the patent)

Secondary Apps Lifespan

20 years from the filing date of the 1st non-provisional

What to do if someone infringes?

35 USC 281 - A patentee shall have remedy by civil action for infringement of his patent. Note - not criminal to infringe Patent owner can sue - that's it Can ask for damages ($) and/or injunction (Stop it!) *must sue in a federal district court! - 2 limitations - where it is fair to sue a defendant: 1. personal jurisdiction - reasonable and fair location - state... cant get sued in Cali if lives in PA) - defendent must have purposefully directed its activiites - claims arise out of or relate to those activities , venue)

Generic Template for Independent Claim

A. OPENING PHRASE: What I (we) claim is: (Note - "What is claimed is" is currently in disfavor) Each claim starts with a number, beings with a capital letter, defines the statutory category ending with the word "comprising", then lists the parts A (class of thing) comprising: a part for a function; another part connecting to the part above for its function; and a last part connecting to parts above for its function. * don't include part numbers for figures (that's in the spec) *start w/ one part and introduce other parts with respect to prior ones ... when first introducing something refer to it with "a" or "an", after that can use "the" or "said" .. each part has to be interrelated * describe what it is, where it is, and what it does

Nonliteral Infringement - Doctrine of Equivalents

All elements rules still applies BUT elements do not need to be identical - only equivalent. Reason - stop others from 'designing around' a patent. Gives owner broader protection than what is strictly in his patent Triple identity test! 1. performs substantially the same function 2. in substantially the same way 3. to yield substantially the same result

Patentability - determined by prior art search

Analyze results of prior art search - patentable features onyour invention disclosed by prior art? - look at claims, drawings, & written descriptions... any single piece of prior art that makes your invention not novel - if prior art makes you likely not patentable then determine if your invention has improvements, advantages, or can acquire new results

Paris Convention

Applicant must file individually in any country of interest & pay the individual country costs and send a translation if necessary Many countries also do NOT allow an inventor to file himself/herself. MUST use a registered agent - more costs. Patent fees vary widely between countries Each country also have maintenance fees like the US -called annuities there.

Continuation in Part App

Application that adds onto parent with new matter/revisions. Invention has been modified/updated. - Commonly used to get priority date of a provisional application where invention has been modified and inventor wants to protect the newer version - Inventor ends up with 2 prior art (priority) dates - Should be filed prior to issuance of the parent application * If not - then parent is prior art to the CIP application and then the new matter would have to be inventive (novel and nonobvious over the first features) in and of itself.

Employer - Shop rights

Arise when a student / employee uses employer's resources to create and invention AND employee's job did not involve the invention or employee came up w. idea but used company resources or invention does not necessarily fit into the line of business * shop rigts = employer can use a patented invention for its own business b/c it is a fair exchange for inventor using the employer's resources to develop the invention (employer gets royalty free use of invention...) employer DOESNT own the the patent (employee still does)

Examples of Obviousness

Automating a manual activity Making a fixed thing portable or separate parts uniform For processes elimination of a step Changing sequences of the steps Changes in size or shape Changing the amounts needed by a small bit Reversing or duplicating parts Purifying an old product Enlarging or shrinking a device Using different materials that are not crucial to the claim

Infringement of a Method/Process Patent

Because a process or method is a sequence of actions, a process claim is infringed only when every step is performed Thus - sale of a product/machine that performs a patented method is not infringement of the process patent under this law The product would infringe if a second patent covered it.

Restraining Orders

Before trial starts - patent owner can ask the court to stop the infringement - issue a temporary restraining order - must be vv likely that infringement will be found - likely to suffer irreparable harm in absence of preliminary relief

Provisional then non-provisional and PCT

Benefits: - limited front end costs - PCT search may get earlier results than US case Concerns: - must invest in US filing w/o benefit of search - more expenses come sooner

Continuation Application

Child application based on the parent which uses the same specification/drawings as the parent Must be filed BEFORE the parent issues into a patent (otherwise the parent is prior art to the new application) Revisions can only be for the claims - cannot add anything NEW what was in the parent application. Why file one? - to argue w/ USPTO if the patent application gets a final rejection - when some claims allower and others were rejected (applicant wants the allowed claims to be issued into a patent... also wants to argue/amend rejected claims hope they can get a patent) - add new claims not previously included (ex. patent app claims a method of MFG a new product, file a continuation app to later claim the product itself)

Searching other countries

China / European / Japan database * WIPO for PCT apps

8 Step Search strategy

Classification 1. brainstorm keywords (two or three main components that make your invention unique) 2. determine the initial classification 3. verify relevancy 4. read classification definitions Access Full Text 5. Search issued patents and published applications - USPTO and foreign databases Review and Reference 6. Review claims, specifications, and drawings 7. check all references 8. GOOGLE for other prior art

Literal Patent Infringement

Each and every element recited in an independent claim has identical correspondence in the allegedly infringing device or process (similar to novelty test for patentability) *all claimed parts of patent NOT in the other product

European applications - EPO

European Patent Convention - allows applicants to file 1 application (similar to PCT) The EPC 'grants' the patent - but then it must be 'validated' in each country (each country has own patent laws) EPO filings are costly and inefficient: Initial EPO application filing fee is expensive Annuity fees are due even before patent issues Once allowed - must pay validation costs in each EU country of interest Patent must be translated into the official language of each country in which validation is sought. Patents have to be enforced in each state separately - multiple litigations - non-uniform laws. **Possible one patent for all EU countries (2018 tentative starting date) - translations not required - single renewal/maintenance fees - single court (Unified Patent Court) - uniform protection w/ same set of patent laws **needs to be ratified by UK and Germany .... otherwise might fall through

Searching other things

Everyhting counts against you if prior to your EFD!!! even if not patented!!! * includes literature (internet, journals, publications, social media... things not patented), google search

Experimental Use Defense

Experimental use exception available to non-commercial uses of a patented invention "for amusement, to satisfy idle curiosity, or for strictly philosophical (scientific) inquiry" University Experimental Use Defense - (ex. Madey v. Duke University) * Madey invented and owned patents on free electron laser which he set up in Duke's lab * After he left Duke continued to use the equipment * Madey sued Duke * Court look at whether Duke used "in furtherance of the alleged infringer's legitimate business" - if used for business can't qualify as experimental use * since Duke is a major academic institution and in the business of research and education... patented invention was in part used for business (Madey won)

Freedom to Operate Opinion & Analysis

FTO analysis involves hiring an attorney to provide an opinion that identifies and analyzes the patents of others that may subject your company to patent-infringement liability. *done before developing and launching a new product (limits the risk of future litigation) *provides opportunity for company to modify design to avoid infringement early in the design process *prevents finding willful infringement which results in triple monetary damage *No FTO analysis is ever perfect!!

America Invents Act

First-to-File (not first to invent) ... must file the patent application to claim rights

Knowledge Economy

Focus on IP through R&D ... economies based on the production, distribution and use of knowledge and info

Value of IP

IP is an asset - worth cash (can be bought and sold) - company net worth goes up with more IP ... - without patents hard to get investors... - v. important for to maintain competitive advantage

Request for Continued Examination

If a patent application gets a final rejection - applicant can instead file a "Request for Continued Examination" (RCE) RCE is a method to ask for one last examination after a final rejection. It is not an application. It usually modifies the claims one last time to try to get the patent to issue.

Enablement

If a person of skill could make/use the invention without undue experimentation, then this proves enablement - full disclosure = 'possession' of the invention

Design Patent Apps

In general terms, a "utility patent" protects the way an article is used and works (35 U.S.C. 101), while a "design patent" protects the way an article looks 35 U.S.C. 171 - Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. - submit forms, drawings, oaths, and very simple specification (2 parts only - title and brief description of the drawings) -Claim: SAME FOR EVERY APPLICATION What I claims is the ornamental design for a ________________ as shown and described. **never published prior to issuance **can't be searched until they issue **expire 15 years from date of issuance (after May 13,2015 if before then 14 years) *can claim more than 1 feature

Patent Cooperation Treaty (PCT)

International patent law treaty that provides a procedure for filing applications in any of the contracting states through a single application A patent application filed under the PCT is called an international application, or PCT application. NO INTERNATIONAL PATENT EVER ISSUES - THIS DOES NOT EXIST It is just an application like a provisional application never issues into a patent Applicant must still file the PCT application in each country of interest * initially filed in a receiving office - in US - USPTO *filed w/i 1 year of local app

US Grace Period

Inventor is allowed a 1 year grace period to file a patent after his/her own publications, sales, disclosures. **Exception to prior art!! (disclosure made 1 year or less b4 EFD of invention, claimed invention is not prior art) **but another inventor's disclosure at any time b4 EFD IS prior art If more than 1 year passes, his/her activities become prior art to himself/herself

Co-Inventors

Joint inventorship - When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. - didn't have to work physically together at the same time - didn't have to have same type or amount of contribution - both didn't have to contribute to every claim

Title

Must be less than 500 total characters Use words that search by competitor will reveal - you want the world to find your invention Recommended: As few words as possible Do NOT use your product name/brand/trademark

Invention Eligibility

Must fit into a category - process - machine - article of manufacture - composition of matter Non-patentable: - discoveries - products of nature (not invented!!) - newly discovered star/galaxy - abstract concepts - formula

McRO v Bandai

NEW METHOD For automating lip synchronization software for animation Faster and more accurate than coding the facial transitions by hand. COURT : patent not for an abstract idea but a novel application of an abstract idea that improved a technical process. Does not stop others from using existing method of animating.

No New Matter Rule

No amendment shall introduce new matter into the disclosure of the invention - can't add anything NEW - why full detailed disclosure is so important in the first app - provisional app - biggest problem for this rule

Defenses to Infringement

No infringement Patent invalid (abstract, obvious) Infringer had a license Experimental use Patent Exhaustion Prosecution History Estoppel Attorney Opinion Surgical Procedure Rule Preparation of Pharmaceutical Generics - under FDA rules

Novelty & Obviousness in Design Patents

Novelty Test: a single prior art reference is "identical in all material respects" Obviousness Test: whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved? And there must be at least 2 other designs that are similar but not identical. 2 part obviousness test: The combined prior art must include a primary reference featuring basically very similar characteristics as the claimed design, and one or more secondary references used to modify the primary reference with parts to create the claimed design. Not enough to say a design is similar to just one other reference without being identical.

Ownership of Inventions/Patents

Ownership belongs to the inventors by default .. unless an agreement (implied or expressed) says otherwise

Paris Convention vs PCT Summary

Paris Convention, - Must file in individual countries within 1 year of your initial country filing. - You incur cost of each foreign filing within 12 months after your first filing. - Typically recommend Paris Convention filings under 3 circumstances: 1. When you know you want to seek protection in only 1 or 2 other countries 2. You can afford additional patent fees 12 months after filing first in US (or home country) 3. When speed is critical - you want patent sooner - can sue sooner for infringement PCT - recommended when: - You want to defer costs - get additional 18 months before you have to begin national phase procedures (filing in individual countries) - You are not sure which countries are of most interest and want time to evaluate the market - You are not sure if the invention is patentable - WIPO provides an initial round of examination, so that you can evaluate the likelihood of success before you incur the cost of national stage filings.

Exclusionary Rights

Patent owner gets rights to exclude other for period of time from making, using or selling the invention in exchange for public disclosure (doesn't always have right to use own invention... maybe needs FDA approval or your invention might require you to infringe another's patent to manufacture it)

Fees

Patent will not issue unless all fees are paid (filing fee, search fee, examination fee...)

Patentability Search vs. Infringement Search

Patentability Search - prior art search * purpose = assess if invention is patent eligible (novel and nonobvious) * search everything you can find b4 your EFD *global geography Infringement Search - freedom to operate search * purpose = assess if making / using / selling / importing your invention infringes an existing patent * search live patents, pending published patent apps b4 EFD * geography - only where you want to operate- national

Types of Patent Applications

Primary (parent) Applications - provisional - only for utility - nonprovisional - PCT or other foreign applications Secondary (child) applications - ONLY filed if the application it is based on is still pending (if issued or abandoned - too late) - continuation -continuation inpart - divisional -reissue

Hatch-Waxman Act - Generic Drugs

Regulatory "safe harbor" provision: Permits use of patented inventions during the life of a patent for testing intended to develop generic drugs for FDA approval so that generics can enter the market upon the expiration of patented drugs on which they are based. *doesn't apply to medical devices!!

National Security Secrecy

Secrecy of certain inventions and withholding of patent that might be detrimental to national security

Specification

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

Intellectual Property

Things created or developed by humans that the law gives you a right to protect (intangible)

Limitation on Damages for Infringement

Time limitation - 6 year rule - no recovery shall be had for any infringement committed more than 6 years prior to the filing of the complaint - limitation on what can be owed ...(if you sue 20 years later, wont get damages for full 20 years) Notice Limitation - no damages will be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter

Damages

Two measures: - actual damages "Lost Profits" * "But for" the defendant's infringing sales, what would the patentee's profits have been... based on patentee's lost profits NOT infringer's profits - reasonable royalty * courts imagine what royalty rate the parties would have agreed on if the patent had been licensed - reasonable - 10% Problems - actual damages & proof - whatt is reasonable loyalty?

Manual of Patent Examination and Procedure (MPEP)

USPTO manual - use it for reference when writing a patent application

Broken Lines & Drawings

Use of Broken lines: - to disclose the environment related to the claimed design - to define the bounds of the claim

Claim Chart

Used in US patent infringement litigation.. - convenient and effective means for analyzing and presenting info regarding a patent claim - 2 columns (left column contains the language of the patent claim under analysis... right column contains comparative parts from an alleged infringing device)

USPTO Forms

Utility Application Transmittal Form Oaths - USPTO form Application Data Sheet Information Disclosure Statement - list of prior art you found in search Power of Attorney form (if applicable)

Patent Exhaustion

When a patent owner sells a patented product the sale exhausts all patent rights in the item being sold regardless of any restrictions the patentee attempts to impose on the location of the sale. *purchaser can resell them item

Detailed Description of the Invention

When writing the detailed description, you MUST reference a figure number(s) and part numbers under discussion EVERY time you mention it.

Inventorship

Whoever inventors or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent thereof **NO copying **ideas alone are not enough

Patent Laws - Title 35 (35 USC 101)

Whoever 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 therefor, subject to the conditions and requirements of this title.

Medical Procedure Defense by a Doctor

With respect to a medical practitioner's performance of a medical activity that constitutes an infringement ...the provisions ...shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity." * doesn't include the use of a patented machine, manufacture, or composition of matter, diagnostic method or practice of a process of a biotech patent

"Useful"

aka utility * an invention is useful if it provides some identifiable benefit and is capable of use - is it possible? can't be pure fantasy or defy laws of physics **BUT doesn't mean it must do what it promises to do - just must be possible to work (ex. diet pills) - can't be illegal

Prior Art

any evidence that your invention is not novel b/c it is already known or is in the public domain (CAN include things done by inventor himself/herself) *doesn't need to exist physically or be commercially available *things that exist before EFD (before america invents act it was before invention date)

Secondary App - Reissue App

application that requests a patent to be reissued because errors were found OR inventor uncovers more prior art after issuance and needs to disclose it under the duty of candor Invention gets NEW patent number BUT no additional time tacked on. ex. makes an honest mistake - inventor wasn't named by accident

Design Patent Damages

applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties. **for design patents damages are based on PROFITS of the infringer (unlike utility based on lost profits)

Patent assignments

assignment - transfer of ownership rights to another patent (can be a sale, transfer, license, or collateral for a bank loan) * must record w/ USPTO - provides public info (who owns the patent) - infringement suit can't be filed as an owner w/o recording patent assignment - if assignment not recorded, rights might be lost to a subsequent purchaser

Entitled to a patent unless...

claimed invention patented (already patented ANYWHERE), "printed publicaiton", or in public use, on sale (even a secret sale... pre-sale events such as marketing / sales conference/ negotiations for future sales don't count).. or otherwise available to public (video posted online, lecture in a classroom, oral presentation, poster presentation) *printed publication is prior art as of the date that it is publicly accessible

Effective Filing Date (EFD)

crucial date to determine who filed first!! and what counts as prior art! *Date of the 1st application in the chain of applications by the same inventor for the same invention (can be a provisional application filing date, PCT, foreign application filing date)

Provisional and PCT

file US as Provisional (don't file nonprovision at 12 months) file PCT w/i year of provisional use PCT for US and foreign filing Benefits - lower up front costs - can choose when to prosecute in US - may get search results before big investment - get benefit of extra year of term of US patent

Conception

first step in getting a patent... "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention .. *must be a settled idea, particular soln (not just general goal or research plan) *MENTAL part *only ordinary skill necessary to reduce invention to practice (don't need extensive research or experimentation)

Patent

grant of a property right to an inventor for an invention - can stop others from "coming onto your land" but cant build whatever you want on your land

Non-obvious

if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made." *to ensure patents are granted for technologically significant advances (foster stimulation of innovation)

Disclosure

includes publications, public uses & sales

Public Policy behind Patents

inventor gets short time of exclusivity (20 years) in exchange for full disclosure to Public and eventual right to use it- to encourage innovation and invention

Design Patent Lifespan

issued before May 13, 2015 - 14 years from issue date... after May 13, 2015 - 15 years from issue date **no maintenance fees for design patents ... only takes around 19 months from application to issuance

Inventor's oath or declaration - Purjury

must be executed (signed) ... false statement is punishable by fine or imprisonment

Patent Bans

no patents granted for invention of nuclear power or weapons (govn't preventing this knowledge becoming public to terrorists)

Secondary Applications - Divisional

occurs where the USPTO says that the 1st application really has 2 distinct inventions - and the applicant must choose one and can divide out the 2nd for a separate application ex - a process AND an article of manufacture

Intervening prior art

other's activities in between inventor's first disclosure and inventor's own filing date

Classification

patent documents/applications are sorted into classification based on common subject matter - class and subclasses * searching by classification - search entire subclasses to be comprehensive (keyword searches may miss vital prior art that can render your invention unpatentable)

Brief Summary of the Invention

point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). DISCUSS VARIOUS ASPECTS OF YOUR INVENTION

Provisional Patent Application

preliminary application that NEVER issues into a patent - gives 12 months to file a non-provisional - must be fully detailed (but w/o claims) - provides effective filing date if nonprovisional is published w/i 12 months ***IMPORTANT to provide protection against claims of prior art

Reduction to Practice

the physical part - it can be actual (physical use of invention for intended results) - constructive (filing of the patent application that discloses the invention completely for a person "skilled in the art" to put into practice *enablement

All elements rule

to infringe a claim the infringing thing MUST have each element of a patented claim either literally or non-literally

Specification Reqs

written description including - title of the invention - cross reference to related app - statement regarding federally approved research or development ... - background of the invention - brief summary of the invention - brief description of the figures - detailed description of the invention - claims - abstract and disclosure

Preemption theory

you cannot patent a method that uses a natural phenomenon, abstraction, math formula, law of nature that would preempt the field - stop others from using it.