Patent Law and Other Intellectual Property Issues February

Patent Law and Other Intellectual Property Issues February

Patent Law and Other Intellectual Property Issues February 16, 2016 IEEE-IAS Atlanta Chapter Jason M. Perilla 2 What Is a Patent? Patents protect the exclusive rights of inventors to their respective inventions for a limited time Encourages innovation via reward of limited monopoly

Facilitate sharing of knowledge via public disclosure Bargain Theory Monopoly granted in exchange for public disclosure Constitutional Basis Article I, Section 8, Clause 8 3 Why Patents Instead of Trade Secrets? Patents are by definition public, and inventions are released to the public domain after 20 years Trade secrets can persist indefinitely However, a patent is recommended for any invention

that is publicly released and susceptible to reverse engineering Note: reverse engineering is generally legal 4 Why Patents Instead of Copyrights? Copyrights protect an expression of an idea, not the underlying idea itself For example, a copyright of computer software protects direct copying of the software Copyright does not protect against competitors

developing software that offers the same functionality 5 The Right to Exclude A patent grants the inventor a right to exclude others from practicing (making/using/selling/importing) an invention A patent does not automatically entitle an inventor to practice his or her invention Secrecy orders Blocking patents

6 Blocking Patent Hypothetical Patent A (filed first) Patent B (filed second) A stool comprising three legs and a seat. A stool comprising four legs

and a seat. 7 Blocking Patent Example Patent A: A stool comprising three legs and a seat. Patent B: A stool comprising four legs and a seat. The inventor of Patent B cannot sell four-legged stools without a license of Patent A because four-legged stools fall under the scope of both patents Although Patent A would be earlier filed in this example, Patent A may be granted before Patent B or

even after Patent B due to delays at the patent office 8 Enforceability, Publication, and Expiration

Patents are enforceable only after being granted (2+ years after filing) Damages may be payable on infringement calculated starting from the time of application publication Publication is at 18 months or can be requested earlier Publication is mandatory for foreign filing, voluntary otherwise Thus, for a purely domestic filing, the patent application may be kept secret until a patent is granted A patent expires 20 years from date of filing and may be extended in days or years due to delays at the patent office A patent can expire for failure to pay maintenance fees, although

revival is possible 9 Misconceptions about what Patents Cover Software patents Outrageous patents frequently discussed by media and blogs Misplaced emphasis on reading first page of patent (title & abstract), which are intentionally broad Scope of protection defined by claims at the end of the patent

Even claims are difficult to interpret without detailed study of entire specification and prosecution file history 10 Studio Arrangement US 8,676,045 11 12

Patentability Requirements Fall within one of the four statutory categories in 35 U.S.C. 101: Process, machine, article of manufacture, composition of matter Judicial exceptions: laws of nature, natural phenomena, abstract ideas Novelty under 102 No one has done exactly this before Non-Obvious under 103 Even if no one has done exactly this, a skilled artisan would not modify one or more teachings of the prior art to arrive at the claimed invention

13 Does the Poor Mans Patent Still Exist? Concept: An inventor writes a description of his or her invention and mails it to himself. The postmark proves the date of invention. Not really a patent in any respect, but it helped to prove conception, which could be relevant under the pre-AIA first to invent system No longer useful under AIA first-inventor-to-file system in place since 2013

14 Provisional Patent Applications File as early as possible! Low cost approach to get idea on paper with patent office quickly Can be narrative based; no claims or drawings required No working prototype needed Must be followed by non-provisional application within one year

15 Non-Provisional Patent Applications Strict formal requirements as to black-and-white line art drawings, specification, claims, and abstract Continuing applications follow-on applications to obtain broader scope or cover different inventions/embodiments Cannot extend patent term beyond 20 years Design applications Simple drawing-focused applications to cover ornamental designs Plant applications

16 Filing Deadlines Under first-inventor-to-file, it is possible that a later inventor but earlier applicant will obtain the patent for an invention By waiting to file, additional art may be published that can preclude a patent It is crucial that a patent application be filed before one year after any public disclosure, public use, or offers to sell the invention by the inventor Many clients file before any public disclosure to

preserve foreign rights 17 Patent Costs Typically, more than $10,000 not a vanity exercise Large corporations can pay nearly $20,000 in patent office fees alone! AIA introduced a 75% discount for some small inventors Costs and fees continue at certain intervals across the lifetime of the patent: before and at filing, during

prosecution, at issuance, and for maintenance fees 18 Patentability Searches A search is not required to file a patent application If you perform a search, anything material to patentability must be disclosed to the patent office From a cost perspective, it may be better to file a provisional application without a search Google Patents is a good self-directed search option for independent inventors

19 Filing & Examination of Patent Applications All interactions with USPTO must be done by the applicant pro se or by a registered practitioner Practitioners must have an approved undergraduate degree in science or engineering or meet coursework requirements Practitioners are not required to have a law degree, but many do Registration not required for representation related to patent litigation

20 Filing & Examination of Patent Applications Examination performed by 8000 examiners in Alexandria, satellite offices, or anywhere including Georgia Examiners conduct a search of the prior art (patents & publications) and typically send a rejection Applicants respond to the rejections with arguments or amendments to claims During prosecution, claims are given a broadest reasonable interpretation, while in litigation, they are given their plain

and ordinary meaning in view of the specification and prosecution history 21 Foreign Patent Protection US patents effective only in US; can prevent import of infringing products Paris Convention & Patent Cooperation Treaty facilitate claims of priority to a U.S. application Foreign filing process must be initiated no more than one year after earliest priority date

PCT streamlines the process and allows delay of national filings for 30 months Foreign filing is extremely expensive! 22 Assignments Patent assignments should be recorded with the USPTO Absent assignment of ownership, inventors are presumed to have an equal and undivided interest in the patent, regardless of the relative contribution of

each inventor 23 Inventorship Important issue; can render patent invalid Defined relative to claimed subject matter, not unclaimed subject matter Merely assisting implementation, being on a team, or supervising a team does not automatically make a person an inventor Avoid inventorship entanglements!

File a provisional application or establish a clear contractual obligation to assign before brainstorming with others, or the other person could wind up owning an equal interest in the patent!

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