Making USE of the U.S. Patent System

Making USE of the U.S. Patent System PowerPoint PPT Presentation

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Valuable Patents. Plan successful strategyHarvest and growExpandImprove and BuildUnderstand patent office. Overview

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Making USE of the U.S. Patent System

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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 Expand 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: License 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 New…$1000 (filing/search/examination) 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 Contributory infringement no staple article with non-infringing use Inducement to infringe need “intent”

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 Method/process Apparatus/machine Component/subcomponent of apparatus Article/Computer readable medium (CRM)/program/signal Compounds/compositions

21. Semiconductor Example Claim semiconductor chip Claim method of making chip Claim apparatus with chip…end use.

22. Who is infringer? Find competitor 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: Standards Classes of invention claimed and not claimed New Technologies Competitor’s products Your products 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]

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