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  1. Today [Grad Students ONLY] • Instant Patent Law • Instant Civil Procedure • Looking at real things • A Complaint • A Patent, especially its claims • Next Week. For class: Re-read Daubert itself and Daubert in patent cases. New assignment: read Daubert on remand. • Housekeeping: Teams? Week 6

  2. “it” refers to a specific CLAIM of the patent, not “the patent” itself OUTLINE • What is a patent (concrete) • What is a patent (abstract) • Major issues in Patent Law • Is [it] valid? • Is [it] infringed? • So what? (Remedies) Week 6

  3. “it” refers to a specific CLAIM of the patent, not “the patent” itself OUTLINE • What is a patent (concrete) • What is a patent (abstract) • Major issues in Patent Law • Is [it] valid? • Is [it] infringed? • So what? (Remedies) Week 6

  4. Researchers Wonder: • - Can we get a patent? • - Can someone else sue us on their patent? These questions reflect two basic concepts of patent law: VALIDITY and INFRINGEMENT. But to understand them, you have to understand what a patent is, and what a patent is not. Week 6

  5. These questions reflect two basic concepts of patent law: VALIDITY and INFRINGEMENT. But to understand them, you have to understand what a patent is, and what a patent is not. Lisa asks:What is the difference in definition and in legal consequences for infringing literally vs. infringing under the doctrine of equivalents? Definition: Literal=every element found identically. Equivalents=triple identity test(FWR) or insubstantial differences. Legal Consequences None. Infringed is infringed. (But, there’s always the other hand: LORE, and subjective feelings of judge and jury, and proof problems, and strategic problems…) Week 6

  6. expired Mar. 30,1999 Week 6

  7. What is a patent (concrete) A patent can be divided into two parts: SPECIFICATION andCLAIMS • What does the patent CLAIM? • The CLAIMS are the special language that defines the legal significance of the patent, • as to its “validity” over the “prior art”, and • as to someone else’s infringementof it. What does the patent teach? Find the answer in the SPECIFICATION [no S, please]: {all the talk and the figures} Week 6

  8. SPECIFICATION: The part of the patent where the inventor TEACHES you the art of the invention. CLAIMS: The part of the patent that defines the “metes and bounds” of the invention. The CLAIMS need to be valid. The CLAIMS determine what will infringe. In the coffee lid patent, U.S. Patent No. 4,322,015, the SPECIFICATION is the text starting at column 1, line 1 and ending at column 5, line 11. The CLAIMS are the text in column 5, line 12 to the end. There is also a "cover sheet" (the top page). Week 6

  9. "Preferred Embodiment" another "term of art" claim to "priority" Drawings - necessary except for chemical inventions why the invention is different from the prior art Week 6

  10. Figure 1 Claim 1 Week 6

  11. What is a patent (concrete): What does it cost? U.S. PATENT FEES (eff. Oct. 14,2006) • The larger number is for anyone whose patent application is ASSIGNED to a big company. Independent inventors, universities, and employees of small businesses pay the HALF rate. • Filing: 300/150 • +Search 500/250 • +Examination 200/100 • +Processing: Provisional 50, Regular 130 (no small entity break) • Issue Fee: $1400/700 • Maintenance: 3.5 years $900; 7.5 years $2300; 11.5 years $3800 (small entities pay half) Compare before: one fee of ~800/400 Week 6

  12. FMI/FYIThe change in examination – eff. 12/8/04 • “The President has signed the Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act), for the remainder of Fiscal Year 2005 (H.R. 4818). The Consolidated Appropriations Act also revises patent fees during the remainder of fiscal year 2005 and during fiscal year 2006. Specifically, for the remainder of fiscal year 2005 and for fiscal year 2006, the Consolidated Appropriations Act revises patent fees, including maintenance fees, and provides for a separate patent filing fee, search fee, and examination fee, and requires an additional fee for any patent application whose specification and drawings exceed 100 sheets of paper (application size fee). The new fees are set forth in the below fee schedule.” • Q&A are linked here. Week 6

  13. What is a patent - abstract • A patent has nationality. • A patent is a right to exclude, nota right to do. • "Patents don't last forever" Week 6

  14. What is a patent - abstract • A patent has nationality. • A patent is a right to exclude, nota right to do. • "Patents don't last forever" Jeremy asks: Germany doesn't have to respect an American patent, but are there laws on imports of foreign goods that would infringe an American patent if they were manufactured in the US? Answer: Yes. Infringement = MUOSI (used to be MUS) Make, Use, Offer for Sale, Sell, Or Import Week 6

  15. Alvin’s Answer: A patent is a right granted by the U.S. government to the patent owners to exclude others from making, using, and selling the invention IN THE U.S. or importing the invention INTO THE U.S. If foreign goods are manufactured in a foreign country, they must comply with U.S. patent laws when brought into the U.S. for commercial purposes. If foreign goods are manufactured in the U.S., undoubtedly they must abide by the U.S. patent laws. What is a patent - abstract • A patent has nationality. • A patent is a right to exclude, nota right to do. • "Patents don't last forever" Jeremy asks: Germany doesn't have to respect an American patent, but are there laws on imports of foreign goods that would infringe an American patent if they were manufactured in the US? Answer: Yes. Infringement = MUOSI (used to be MUS) Make, Use, Offer for Sale, Sell, Or Import Week 6

  16. What is a patent - abstract Alvin asks: A1. [Types of US Patents, p12] I have heard of the terms: "Utilities Patent", "Plant Patent", etc. It seems that there are a few types of US Patents. I would like to know more about them and how patents are different from other IPs, such as Copyrights, etc. Answer: There are 3 types of patent: utility, plant (on asexually reproduced plants), and designs (on the esthetic appearance of a device; but if the appearance has a functional aspect, it can’t be protected by the DESIGN patent…) Copyright protects {creative} EXPRESSION (not idea). Patents protect [claimed] inventions. Trademarks protect identification of origin (sort of). • A patent has nationality. • A patent is a right to exclude, nota right to do. • "Patents don't last forever" Week 6

  17. Patent laws are territorial: You can not sue in the US for infringement of a Korean, German or British patent, and vice versa. But stay tuned for Microsoft v. AT&T, currently before the Supreme Court… And of course there are wrinkles for things assembled overseas and brought here, or assembled in parts here and sold overseas… Week 6

  18. W invents and patents the WHEEL. A patent confers the right to exclude, NOT the right to do • Who can make and sell BICYCLES? • Blater invents and patents the BICYCLE. Week 6

  19. Who can make and sell BICYCLES? A patent confers the right to exclude, NOT the right to do Not W, without a license from B -- or the risk of a lawsuit. Not B,without a license from W -- or the risk of a lawsuit (unless Bwants to sell wheel-less frames to W’s customers). Week 6

  20. The Right to Exclude A patent confers the Right to Exclude -- NOT The Right to Do so what happens when patents COMPETE? • Licensing • Retreat - Retool • Lawsuit • FISH STORY [M&A] Week 6

  21. How the dilemma may be resolved OR Week 6

  22. = SUE! [start a lawsuit] “Patents don’t last forever.” FRONT END: In general, you can not enforce your patent against infringers until the patent ISSUES. • The patent process can take several years: • APPLICATION • EXAMINATION • (office actions [rejections], amendments, appeals) • ISSUANCE • At every step, you pay the Patent Office a fee. Week 6

  23. = SUE! [start a lawsuit] “Patents don’t last forever.” Fernando asks: Slide 18: according to the slides the delay between filing a patent and issuing it can be between 2‑5 years. If you are in cutting edge technology how can you wait for your patent to be issued to enforce it? By the time you enforce it your competitor probably has a dominant position in the market or the technology has changed. Answer: See next slides regarding pre-issuance recovery. Practical solutions: Write broad claims, so you can assert infringement against later developments. Even if your competitor has a dominant position (or because of it) your potential to get an injunction, not to mention damages, might lead to a favorable settlement – or merger … FRONT END: In general, you can not enforce your patent against infringers until the patent ISSUES. • The patent process can take several years: • APPLICATION • EXAMINATION • (office actions [rejections], amendments, appeals) • ISSUANCE • At every step, you pay the Patent Office a fee. Week 6

  24. = SUE! [start a lawsuit] “Patents don’t last forever.” Fernando asks: Slide 18: according to the slides the delay between filing a patent and issuing it can be between 2‑5 years. If you are in cutting edge technology how can you wait for your patent to be issued to enforce it? By the time you enforce it your competitor probably has a dominant position in the market or the technology has changed. Answer: See next slides regarding pre-issuance recovery. Practical solutions: Write broad claims, so you can assert infringement against later developments. Even if your competitor has a dominant position (or because of it) your potential to get an injunction, not to mention damages, might lead to a favorable settlement – or merger … FRONT END: In general, you can not enforce your patent against infringers until the patent ISSUES. Chrissy’s Answer” You are free to market your invention while the patent is pending, so you will still have the "first-to-market" advantage over your competitors. (On Sale Bar does not apply here b/c you have already applied for the patent.) I would also think that in fast moving technology sectors a lot of inventors would apply for provisional patents to establish their ownership as quickly as possible. • The patent process can take several years: • APPLICATION • EXAMINATION • (office actions [rejections], amendments, appeals) • ISSUANCE • At every step, you pay the Patent Office a fee. Week 6

  25. “Patents don’t last forever.” Great Minds Dept. Lisa asks: In what ways is your invention protected during the time between the filing date and when the patent is issued? Angela asks: Do you get any legal protection after you have filed the patent application but before the patent issues? Answer In the old days, not at all. The law passed in 1999 that provided for LAYING OPEN (aka publication) of applications 18 months after filing. This legislation was enacted in order for the US to be in harmony with the rest of the world, changed things. Now if a patent issues with a claim that is substantially similar to an issued claim filing, the owner is entitled to a reasonable royalty (but not lost profits…) See 35 USC 154(d). Week 6

  26. 35 usc 154(d) • (d) Provisional Rights.— (1) In general.— In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b), or in the case of an international application filed under the treaty defined in section 351(a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued— (A) (i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or • (ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and • (B) had actual notice of the published patent application and, in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a translation of the international application into the English language. • (2) Right based on substantially identical inventions.— The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application. Week 6

  27. “Patents don’t last forever.” MIDDLE: Maintenance fees must be paid to the Patent Office to keep the patent in force. These fees must be paid in every country where you want patent protection. The fees to the various Patent Offices are only part of the costs. The other part is attorney fees. You will usually hire an attorney during the application process. You may also hire an attorney after the patent issues if you want to license or sue on your patent. Week 6

  28. “Patents don’t last forever.” • END: Patents expire after a certain amount of time. (Generally, 20 years from date of FILING.) • So, how long DO patents last? • Roughly, about 18 years, if • all the fees are paid, and • you have an easy time in the Patent Office (2 years from application to issuance) Week 6

  29. Major Issues in Patent Law Is it valid? Is it infringed? So what? Concepts and "terms of art" • The parts of a patent: the specification and the claims • and theclaim chart • The idea of a patentsearch • The phrase "prior art" • The concept "person of ordinary skill in the art " Week 6

  30. Is it valid? Is it infringed? So what? Validity – to be valid a claim must be “new” (not ANTICIPATED, and not OBVIOUS) and “useful” • “anticipated” means the CLAIMED invention is found in a SINGLE piece of prior art Week 6

  31. Claim Chart – a 2 column chart that permits you to compare the claim of a patent to something else, in a visually informative way. If you made a claim chart, with each element of the claim on the left side, you could complete the right side by quoting/pointing to something in this single piece of prior art. What if something is missing in that piece, but you can find it in some other piece? Answer: then maybe the claimed invention is ‘OBVIOUS.’ Prior Art – evidence that the invention, or at least some aspects of it, existed before this inventor’s activities. Actual devices, journal articles, advertisements, manuals, and of course other patents, can all be prior art. Week 6

  32. The Claim • 1. A container lid ... comprising: • - a central portion • --adapted to nest within and below • the rim of a container and • -- rim engaging means • --- around the entire periphery of the lid, • - said rim engaging means being • adapted to secure said lid ... The Prior Art pretty standard stuff for a coffee lid Claim Chart Week 6

  33. THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA) • Does the specification ENABLE the POSITA to make and use the invention? • Are the claims OBVIOUS to the POSITA? OBVIOUSNESS, as well as other things in patent law, are judged from the point of view of: Week 6

  34. THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA) • Does the specification ENABLE the POSITA to make and use the invention? • Are the claims OBVIOUS to the POSITA? OBVIOUSNESS, as well as other things in patent law, are judged from the point of view of: Jeremy asks: 2. How can one possibly place constraints on "obviousness," especially at the level of issuing the patent before any kind of suit. Who's making the argument in either direction, and who's making the judgment? Answer: 102: A patent shall be issued UNLESS. Thus the PTO has the BOP (preponderance) to show that the invention is obvious. 282: Once issued, the patent is PRESUMED valid. And so on. It seems to me that virtually every patent of recombinant DNA except the first one is obvious. Same question, but for usefulness. Lots of things that are patented are only useful for doing scientific experiments. So, if I made a random protein sequence, it would be useful for studying the properties of random sequences. Can I patent that? Answer: We can discuss ‘intermediate’ inventions, and inventions of research tools and … Week 6

  35. THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA) • Does the specification ENABLE the POSITA to make and use the invention? • Are the claims OBVIOUS to the POSITA? Jeremy asks: 2. How can one possibly place constraints on "obviousness," especially at the level of issuing the patent before any kind of suit. Who's making the argument in either direction, and who's making the judgment? Answer: 102: A patent shall be issued UNLESS. Thus at the application stage, the PTO has the BOP (preponderance) to show that the invention is obvious. 282: Once issued, the patent is PRESUMED valid, and the AI has the BOP (clear & convincing) to show it is NOT valid. It seems to me that virtually every patent of recombinant DNA except the first one is obvious. Same question, but for usefulness. Lots of things that are patented are only useful for doing scientific experiments. So, if I made a random protein sequence, it would be useful for studying the properties of random sequences. Can I patent that? Answer: We can discuss ‘intermediate’ inventions, and inventions of research tools and … OBVIOUSNESS, as well as other things in patent law, are judged from the point of view of: Angela answer: The standard for assessing non-obviousness is made to a person having ordinary skill in the art (PHOSITA). There are three factors to consider when deciding whether an invention is obvious or not: the scope and content of the prior art; differences between the prior art and the claims at issue; and the level of PHOSITA. If a PHOSITA, given the prior art, would immediately see what the person seeking the patent did at the time the invention was made, then it would fail the non-obvious requirement. Regarding the usefulness requirement, I think it is a relatively rare issue in the Patent Office and a rather minimal obstacle to obtaining a patent. A patent will not be withheld even if the invention works only in an experimental setting and has no proven use in the factory. In this case, the utility requirement would be met as long as you could show any specific utility for the protein sequence when the patent is filed. My understanding is that only if an invention has absolutely no practical utility will a patent be denied. Week 6

  36. THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA) • Does the specification ENABLE the POSITA to make and use the invention? • Are the claims OBVIOUS to the POSITA? OBVIOUSNESS, as well as other things in patent law, are judged from the point of view of: Angela answer: The standard for assessing non-obviousness is made to a person having ordinary skill in the art (PHOSITA). There are three factors to consider when deciding whether an invention is obvious or not: the scope and content of the prior art; differences between the prior art and the claims at issue; and the level of PHOSITA. If a PHOSITA, given the prior art, would immediately see what the person seeking the patent did at the time the invention was made, then it would fail the non-obvious requirement. Regarding the usefulness requirement, I think it is a relatively rare issue in the Patent Office and a rather minimal obstacle to obtaining a patent. A patent will not be withheld even if the invention works only in an experimental setting and has no proven use in the factory. In this case, the utility requirement would be met as long as you could show any specific utility for the protein sequence when the patent is filed. My understanding is that only if an invention has absolutely no practical utility will a patent be denied. RJM NOTE: Utility became a big issue in biotech in the 80s-90s (often for the reasons Jeremy alludes to). The PTO issued special directives about UTILITY. (Cite available). Week 6

  37. What is “prior”? Anything more than 1 year before your application date ALSO Anything that is before your invention date. TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT US PATENT LAW: The on-sale bar: anything YOU did more than a year before your application date could invalidate your patent. The duty of candor: you MUST tell the Patent Office what you know about prior art. You don’t have to search, but you have to be honest about what you know, and what you find. Week 6

  38. Jeremy asks: 3. Can a patent holder invalidate his patent by not being candid about something he knew about that was a _potential_ case of prior art, even if that potential piece of prior art later turns out to be ruled to not be prior art by a court. In other words, can you get in trouble for hiding something regardless of whether that thing turns out to be relevant to your patent? Answer: Yes. It’s a jungle out there. But the law does evolve (and smart people settle…) Issues on “inequitable conduct”: intent and materiality. What is “prior”? Anything more than 1 year before your application date ALSO Anything that is before your invention date. TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT US PATENT LAW: The on-sale bar: anything YOU did more than a year before your application date could invalidate your patent. The duty of candor: you MUST tell the Patent Office what you know about prior art. You don’t have to search, but you have to be honest about what you know, and what you find. Week 6

  39. TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT US PATENT LAW: The on-sale bar: anything YOU did more than a year before your application date could invalidate your patent. The duty of candor: you MUST tell the Patent Office what you know about prior art. You don’t have to search, but you have to be honest about what you know, and what you find. What is “prior”? Anything more than 1 year before your application date ALSO Anything that is before your invention date. Chrissy asks: 1. Slide 26 - Self-Invalidation What is the logic behind "on-sale bar" invalidating your own patent? Is this a problem for patents coming out of academic labs where a lot information/knowledge is shared with collaborators? What if a patent evolves out of a project that has taken years to complete and has produced multiple papers? Week 6

  40. Chrissy asks: 1. Slide 26 - Self-Invalidation What is the logic behind "on-sale bar" invalidating your own patent? Is this a problem for patents coming out of academic labs where a lot information/knowledge is shared with collaborators? What if a patent evolves out of a project that has taken years to complete and has produced multiple papers? Answer: 1. The sin of commercial exploitation (applies to things SOLD as well as papers). 2. The sanctity of the public domain. Answer: 1. File your paper(s) as provisionals…. Week 6

  41. TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT US PATENT LAW: The on-sale bar: anything YOU did more than a year before your application date could invalidate your patent. The duty of candor: you MUST tell the Patent Office what you know about prior art. You don’t have to search, but you have to be honest about what you know, and what you find. Angela asks: Can you deliberately not do any search on prior art and simply claim to the PTO that you are not aware of any prior art when filing a patent? Would the PTO actually check for prior art themselves? Answer: There is no duty to search but there IS a duty to tell what you know. (Who is “YOU”? See Rule 56). And yes, the PTO does a search, but the examiner may not be as good as the inventors – or, later, the accused infringers. Why SHOULD you do a search? Week 6

  42. Angela asks: Can you deliberately not do any search on prior art and simply claim to the PTO that you are not aware of any prior art when filing a patent? Would the PTO actually check for prior art themselves? Answer: There is no duty to search but there IS a duty to tell what you know. (Who is “YOU”? See Rule 56). And yes, the PTO does a search, but the examiner may not be as good as the inventors – or, later, the accused infringers. Why SHOULD you do a search? Lisa answers: First, many inventors are well aware of other work being done in their field and therefore would have a good idea about the prior art even if they don't specifically search for it. Second, the examiners at the PTO may search for prior art. Examiners generally work in a narrow field and so they are often well versed in the prior art in any case. Week 6

  43. What is “prior”? Anything more than 1 year before your application date ALSO Anything that is before your invention date. Lisa asks: Does the on-sale bar apply only to your own published work and patents? What if it has taken you several years to develop your invention and notebook entries from years back anticipate your invention? Week 6

  44. Infringement: get out that old claim chart. Write the claim in the left column. The right hand column will have information about the “accused device.” If the claim “reads on” the prior art, it is invalid. If the claim “reads on” the accused device, it is infringed. • Is it valid? Is it infringed? So what? Week 6

  45. So what? • “Damages”: no LESS than a “reasonable royalty” • Opportunity for Multiplying those “damages” by a number up to 3 • Opportunity for having the other side pay your attorney fees • Prejudgment interest • Injunctions: • preliminary or permanent • Is it valid? Is it infringed? So what? If the patent owner violated the duty of candor, for example by knowing it has an “on-sale bar” and not telling the Patent Office, and despite that the patent owner pursues the lawsuit, the court could order it to pay the accused infringer’s attorney fees. Week 6

  46. BACK TO YOUR QUESTIONS • Can we get a patent? • Who is "we"? • And a patent on what? • the device ? • a "method of doing business" ? • a special component or material ? Week 6

  47. wrong ^ X CAN WE GET A PATENT? • Who is - or should be - "WE" : that is: • Who qualifies as an "inventor"? • Some possible answers • Everyone on the team • The professors • The person who machines some parts for the prototype, writes some code for the software, etc. Week 6

  48. Chrissy asks: Who does qualify as an inventor? Is there any advantage to listing more/less inventors on your patent? Answer: Invention = conception (as in other areas, sort of, usually) No real harm in listing the wrong people except - If done with deceptive intent - If there is a subsequent falling out of love: Each inventor can license the invention without getting the consent of the others (and maybe without owing them a penny??) • Who qualifies as an "inventor"? • Forget politics • Never lie to the Patent Office • Different "claims" (different aspects of the invention) may have different inventors Week 6

  49. Fernando asks: Slide 31: I don't understand it. What has to do who qualifies as an inventor with not lying to the patent office? Who will benefit from putting extra inventors or fake inventors? What is the final answer to the main question of the slide? Why lie to the patent office? Because inventors DO have certain advantages that non-inventors don’t? Because you and the non-inventor have some other shady deal going? Because? The fake inventors might benefit from getting a piece of the invention. Final answer: see previous slide. • Who qualifies as an "inventor"? • Forget politics • Never lie to the Patent Office • Different "claims" (different aspects of the invention) may have different inventors Week 6

  50. Alvin asks:A2. [Inventors and Novelty, p31 and p22] On p31, who DECIDES on inventorship? What if there is a dispute among the possible inventors? On p22, I thought you said on the first day of class (Week 4 for grad students) that a patent does not have to be "new", but it has to be "different". Maybe I misheard you or someone in class. Answer: See above regarding inventorship. Disputes? Contract law! Unjust enrichment! (equitable cause of action). NO, I said it does not have to be BETTER, it just has to be different. It does have to be “new”. NEW means novel (not anticipated: no SINGLE piece of prior art has all the elements) or nonobvious. • Who qualifies as an "inventor"? • Forget politics • Never lie to the Patent Office • Different "claims" (different aspects of the invention) may have different inventors Week 6