Valuable Patents. Plan successful strategyHarvest and growExpandImprove and BuildUnderstand patent office. Overview
1. 1 Making USE of the U.S. Patent System
Don Daley of Harness, Dickey & Pierce, P.L.C.
2. Valuable Patents Plan successful strategy
Harvest and grow
Improve and Build
Understand patent office
3. Overview…the keys to patent value Understanding patents
Patent goals and Costs
What is patent infringement?
Patent categories and claims
The value of Continuing patents
4. Understand: Patents can be obtained for Improvements Every patent need not be for a landmark invention
Most patents merely improve on a small aspect of a known device/method/etc.
5. Understand: Patents are usually generated from solutions to specific problems
Determine which solutions are significant;
Determine how and when to EXPAND solution to other areas;
Learn to broaden patent protection.
6. Understand: Patents are Rights to Exclude Understand that a patent conveys no rights to you.
A patent merely gives you the right to stop others from practicing your invention;
Even if you own a patent, your products may infringe the patent of another.
7. Understand patent claims
Claims are fence around your property
The fence keeps people out…build it strong and learn to extend it
8. Understand: Patents are limited monopolies
Patents expire 20 years from filing (including children);
For protection, need to build a portfolio:
Continue to file on further improvements.
9. Basics of Building/Maintaining a Patent Portfolio
Target key areas of technology;
Target potential “inventors” in these technological areas;
Develop plan to “harvest” inventions;
Develop plan to expand inventions and file on further improvements.
10. Why patent? Could publish…but….
Practicing prior art is not a patent defense.
Possible to invalidate with publication…but if found during prosecution, can claim usually find a way to claim around.
What is published is not always practiced.
Patent portfolio could attract angel investors.
11. Develop Goals for Patents Use to build portfolio for funding;
Use for cross-licensing others;
Use to generate income:
Exclude others from market
Sue potential infringers.
12. Costs of Patenting USPTO filing and prosecution fees;
Attorney fees; and
Investments of time:
Rule: more time invested by inventor, less time needed for attorney to draft patent application.
13. US and Foreign Costs U.S. patents cover U.S. area only…can use to extend coverage to foreign countries…but must pay.
Costs can be high with translations.
Have 1 year from earliest U.S….either provisional or regular.
14. PTO Increase in U.S. Filing Fees Old…$760
PTO Claim fees…big increase
Old…$88/ extra indep. & $18/ extra claim
New…$200 extra indep. & $50/ extra claim
15. Develop Portfolio with Eye on Infringers Patent improvements…expand improvements into other areas
Term is 20 years from earliest date…maximize protection through Continuations and Divisionals
Claim what competitors make and do.
16. Baker Story Obtained first patent
Filed Continuations off of first patent
Continued to file on improvements
Built protection beyond base patents…stops infringers after base patent expired.
17. Patent Infringement under 35 U.S.C. §271 Direct infringement
no staple article with non-infringing use
Inducement to infringe
18. Example of Direct Infringement Claim computer with LCD display
If change to plasma screen, may not infringe
Can broaden claim to computer with display and/or can claim computer in open ended form (not claim display if not needed to patent)
19. Example of Contributory Infringement Claim method of operation and use for DVR system (TiVo, Direct TV DVR, etc.)
Operation may be met by DVR system maker…
Use by consumer may be needed for infringement but consumer may be induced by manual, etc.
20. Expand Coverage: Use Different Statutory Classes of Patent Claims
Component/subcomponent of apparatus
Article/Computer readable medium (CRM)/program/signal
21. Semiconductor Example
Claim semiconductor chip
Claim method of making chip
Claim apparatus with chip…end use.
22. Who is infringer?
Claim to capture competitor
May also claim to capture customer to gain leverage.
23. Computer Inventions — Article of Manufacture
24. Sample Claims 1. A computer readable medium, comprising:
a first code segment, to cause a computer device to [perform the function]; and
a second code segment, to cause a computer to [perform the function].
25. Computer Invention- Propagated Signal
26. Sample Claims
1. A computer (propagated) signal, comprising:
a first code segment including [the code]; and
a second code segment including [the code].
27. Expand Coverage to Products and/or Subcomponents Claim new controller itself
May use for LCD TV, Plasma TV, other flat panel TV or even computer device
Target competitors, if they make components
But… small royalty base
Claim entire product
LCD TV comprising new TV controller Claim new controller itself
May use for LCD TV, Plasma TV, other flat panel TV or even computer device
Larger royalty base, but possible customer.
28. Expand Patent Coverage: Use Different Types of Claims
Claim inventions from different perspective of invention (only steps performed by single element of system)
30. One Type of Method Claim… A METHOD COMPRISING:
Sending a signal from a wireless mobile unit to a base station;
Receiving the sent signal and forwarding the signal to a controller; and
Controlling something based on the signal.
31. Better claim for mobile unit: A METHOD COMPRISING: Producing a signal indicating position of a wireless mobile unit; and
Sending the positioning signal from the wireless mobile unit, wherein something is controlled based on position signal.
STEPS PERFORMED ONLY BY MOBILE
32. Better claim for MSC… A METHOD COMPRISING: Receiving a signal originally generated by a wireless mobile unit; and
Controlling something based upon the received signal.
STEPS PERFORMED ONLY BY MSC
33. Build and Manage Portfolio Track your common or similar patent filings as a group;
Correlate groups to key areas of technology;
Determine competition in key areas;
Continue prosecution of EARLIEST filings: file continuation/divisional/CIP apps.
34. What are Continuation/Divisional Applications? Child of parent application
Term runs with parent application
Each child issues as a separate patent, expiring with parent
No limit on number of children
No limit on broadening claim scope from parent
35. What is a divisional application? §201.06 M.P.E.P.
A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or “division.” >A divisional application is often filed as a result of a restriction requirement made by the examiner.<
36. What is a continuation application? §201.07 M.P.E.P.
A continuation is a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented.
37. The difference between a divisional application and a continuation application: -a divisional is for a different invention from the parent -a continuation is the same invention as the parent
38. Difference usually dictated by PTO Examiner can issue restriction of inventions
If restricted, can sell separately
Continuations may be tied together by PTO
39. IC. What is a continuation-in-part application? §201.08 M.P.E.P.
A continuation-in-part application is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.
The mere filing of a continuation-in-part does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.
40. Difference between continuation-in-part, and divisional/continuation is newly added subject matter.
41. Choice of CIP and New application CIP expires with parent application
New application has new term…but may be blocked by parent application
Most choose new application route for improvements…need to extend patent monopoly.
42. Continuation/Divisional/CIP Divisional is application that patent office requires to be separate
Divisional applications can be sold separate from parent
Continuation is voluntary (may be required to be linked to parent)
CIP adds new subject matter
Each child requires separate maintenance fees.
43. Continuing Application Practice Strategies Throughout prosecution, re-evaluate importance and scope of claims; particularly, at allowance (before issue), to cover:
Classes of invention claimed and not claimed
Use continuing applications to increase/maximize patent portfolio
44. Continuing applications Low incremental cost…
Already invest in application…build off first application and prosecution
Learn from Examiner
Maintain for future infringers
Add new embodiments in CIP
45. Submarine Patents Sink second “submarine” application while first application is pending
Also use continuation process to keep applications pending so that claims can be added to capture competitors products
46. Covering Competitor’s Products Strategies Scenario Ricoh v. Nashua 185 F.3d 884 (Unpublished Decision by Fed. Cir. in 1999) … can broaden original patent application in a continuation
48. Conclusion Carefully consider applying for patents
Get the broadest possible protection for each invention…think infringer/competitor
Get the most out of each filed application…you never know when one application will be valuable!
50. Email any questions Don Daley
Email address: [email protected]