BADM 551

What about Patents?

Todays Outline
What is a Patent?
Why are Patents Granted?
Patent Basics and Processes
Patent governing bodies
Conley All Rights Reserved

Patent System Impact

http://www.jsonline.com/business/53244432.html

What is a Patent?

What is Patent?
It is a property right for an invention granted by
a government to the inventor(s) for a limited
time. In exchange for public disclosure of the
invention when the patent is granted and any
required fees are paid (United States).

Conley and Rich All Rights Reserved

Why are Patents Granted?

A Pragmatic view: Patents create an incentive system
for inventors with diverse objectives:
Encourage innovation, new things, processes, products,
methods
Encourage early public disclosure of inventions
Encourage investments in the commercialization of
inventions for public good (appropriate)
Encourage further inventing around existing patents to
bring even more improvements (faster, better,
cheaper)
Conley and Rich All Rights Reserved

The Patent Basics

IP Regime

Patents

Professor James Conley and W.C. Francis All Rights Reserved

Three US Patent
Categories
Utility patents protect functional inventions
and are the most commonly issued type
Design patents protect and secure unique
ornamental product attributes appearance,
physical design (on the rise)
Plant patents an asexual reproduction of a
plant

Patent Expansion
Biotechnology
Naturally vs. non-naturally occurring
Living organisms are often patented as products
and methods (hundreds of mice patents)

Business Methods
Relates to data processing operations and
technologies
Examples: online auction systems, financial
transactions, point-of-sale systems

Patent Expansion
Software when containing a mathematical
algorithms must:
Control something external to the computational
processes (a useful process)
Manipulate numbers representing real values
(electrocardiograph signals)
Claimed in relations to an identifiable product,
machine, or process (i.e., software enabled
smartphones)

Patentability
Hurdle

Utility Patentability
Hurdle
New

Invention is new if it has not been described in a prior art

(preexisting technology that has been patented, published, or used
publicly) reference.

Useful (Utility Patent)

Invention must be operable and capable of use (performs a designated

function and achieve some purpose)

Non-obvious

Invention is obvious if a person with ordinary skill in the field can

readily deduce it from public available information, prior art

Fully-disclosed

The inventor of the present invention must provide a description of

the invention, the manner and process of making and using the
invention, and the best manner of practicing this invention that is
known to the inventor.

Can It Be Patented?

Courtesy LES Monthly Talk

So, what does a

Patent grant
Right to make? No
Right to use? No
Right to sell? No
Actually, the right to exclude others from making, using,
selling or importing your invention into protected
jurisdiction.
Limited-time monopoly right
(20 years) (prosecution time) = exclusivity rights lifetime
(utility)
14 years (design) from date of issue
20 years (plant) from date of application filed

Professor James Conley and David Orozco All Rights Reserved

Who Gets and Administer

These Rights and Options
The inventor, i.e. the person who
(Constitutionally)*:
Conceived the invention (came up with the idea)
Reduced to practice (show that it works as claimed)
Takes an oath stating they believe themselves to be
the original and first inventor
Files the patent application in their name(s)

Administration
US Patent and Trademark Office (uspto.gov)

Patent Applications

Types of Patent
Applications
Provisional application (preserves priority date*)
Parent (non-provisional) with no prosecution
history (wholly new matter)
Divisional application (too much here, split it up)
Continuation application (want to make more
claims)
Continuation in part application (add more
matter)
Abandoned application

Component of a Patent
Application/Documentation
Inventor(s) Disclosure
Abstract of Invention
Drawings
Specifications
Background of invention
Summary of invention
Brief description of drawings
Detailed description of the preferred embodiments

Claims

The Specifications and Claims

(Strategic Information)

The
Specifications
Describes novelty of invention in light of prior
art
Describes usefulness of invention
Describes best manner in which to practice
the invention, Preferred embodiment (full
disclosure)
Must teach someone of ordinary skill in the
art how to practice invention, Enabling (full
disclosure)

The Claims
Goals is to claim as many uses without being
too broad or too vague (invalidity on
reexamination)
Must distinguish very distinctly the subject
invention from all known prior art
Determines what infringes on the patentees
right to exclude
Defines the intellectual property boundaries
of the inventor (deed to a house)
Conley and Rich All Rights Reserved

Sample Claim Language

#5,978,807
A method of automatically accessing web page
information from internet addresses comprising
the steps of:
Automatically accessing web page information at a
specified internet address
Downloading the web page information from the
specified internet address; and
Storing the web page information in order to allow a
user to access the web page information while not
connected to the specified internet address

Patent Prosecution Timeline

US Patent Filing Timeline

Conley and Giles All Rights Reserved

Patent Cooperation Treaty (PCT)

Filing Timeline

Professor James Conley and Giles Rich All Rights Reserved

The Issued Patent

US Patent Front
Page Content
Patent #
Date of Issue
Title of Invention
Inventors, Inventors location
Assignee
Application #
Date filed
Classification and Field of search
References cited (prior art)
Examiners/Agents
Abstract

Sample: Utility Patent

Sample: Design Patent

Sample: Plant Patent

Unauthorized use of your Invention

Patent Infringement: What

is it?
Unauthorized use of a claimed patent
invention is known as infringement.
Lack of knowledge is not a defense against
charges of patent infringement.
No statue of limitation on filing infringement
suit, can collect damages only on past 6 years
in some cases.

Infringement Standards

Professor James Conley and Giles Rich All Rights Reserved

Infringement Scenarios

"reading" a claim onto the invention. If all of the claim's elements are found in the
invention, the claim is said to "read on" the invention; if a single element from the claim is
missing from the invention, the claim does not literally read on the invention and the
invention does not infringe the patent with respect to that claim.
Adapted from Robert C. Megantz, Technology Management Developing
and Implementing Effective Licensing Programs (New York: Wiley & Sons, 2002) All Rights Reserved

Infringement Damages
Injunction relief
Compensatory damages

Based on a reasonable royalty

Lost of profit due to infringement (e.g., sales, price
erosion)

Enhanced damages (willful infringement)

3X (compensatory damages)

Attorney Fees

Patent Summary Review

Three US Patent
Categories

Professor James Conley and Giles Rich All Rights Reserved

Patent Filing Strategy &

Managerial Implications

Managerial IP Strategy
Questions
Where will the invention be marketed?
Where will it be produced, manufactured?
Where is the main competition located?
What markets/jurisdictions will the
competition use?
What is the reliability of enforcement in each
market/jurisdiction?

Key Patent Prosecution

Organizations

Key Organizations
US Patent Office (Washington, D.C.)
EU Patent Office (Munich)
World Intellectual Property Organization (WIPOGeneva)
U.S. Court of Appeals for Federal Circuit (CAFC)
U.S. Supreme Court

Organizations
Responsibilities
Examines Applications & administers the Patent
Cooperation Treaty (PCT)
Denies or Grant Patent
Appeals board or arbitrations
Publishes Applications/Granted Patents
information for the public

CAFC
Hears appeals by inventors whose patents
were denied by Examiners and the USPTO
Board of Appeals
Jurisdiction over infringement appeals from
lower federal trial courts

U.S. Supreme Court

The interpreter of patent laws and mandates to

promote the progress of science and useful arts

Changes & Forthcoming Changes

to Patent System

Leahy-Smith
America Invents Act (AIA)
General Considerations
Most substantial change to the US patent law since 1954.
Signed into law 9-16-11.
Not all of the provisions go into effect at the same time.
The USPTO is currently drafting rules for implementation
of the changes to the law.
Ultimately the courts will have to determine the meaning
of certain terms in the provisions.

Patent Law Change

First-inventor-to-file patent system
Prior knowledge or use of the invention by
other inventors is no longer an absolute bar to
the patent
Prior public disclosure by others that is not the
inventor is a bar (assuming this is an enabling
disclosure)

ttools Case

ttools Case
Case patent documentation available on
Compass
Helpful to your case analysis

Questions ?
Thanks for Coming