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PATENTS

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  1. PATENTS PROF. JANICKE IP SURVEY COURSE 2012

  2. THE USUAL QUESTIONS: • CAN I GET A PATENT ON ____? • IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN IT? • HOW MUCH WILL IT COST? IP Survey -- Patents

  3. THE USUAL QUESTIONS: • HOW LONG WILL IT TAKE? • WHAT CAN I DO WITH IT IF I GET IT? IP Survey -- Patents

  4. ELIGIBILITY • JUST ABOUT ANYTHING BELIEVED TO BE “NEW” – BASICALLY NOT KNOWN BEFORE • COMPUTER SOFTWARE: NOW IN DOUBT • BUSINESS METHODS: NOW IN DOUBT IP Survey -- Patents

  5. CASES: • CHAKRABARTY • PROMETHEUS • BILSKI IP Survey -- Patents

  6. ACTUAL INVENTORS USUALLY “APPLY” • MERELY PAPERWORK – OWNERSHIP IS OFTEN IN AN ASSIGNEE • WHO ARE THE INVENTORS? • ROLE OF CLAIMS IN MODERN PATENT LAW • YOU DON’T PATENT A SINGLE THING ANY MORE IP Survey -- Patents

  7. INVENTORS • THOSE WHO THOUGHT OF SOMETHING COVERED BY THE CLAIM • NOT THOSE WHO LEARNED IT FROM SOMEONE ELSE IP Survey -- Patents

  8. INVENTORS • YOU DON’T REALLY KNOW WHO THEY ARE UNTIL THE CLAIMS ARE DRAFTED • THOSE INVOLVED IN A MINISTERIAL OR MANAGERIAL WAY AREN’T IP Survey -- Patents

  9. INVENTORS • ARE ALWAYS THE INITIAL OWNERS OF THE PATENT RIGHT • USUALLY THEY ASSIGN TO A COMMON ENTITY, WHICH BANKROLLS THE APPLICATION IP Survey -- Patents

  10. AIA CHANGE • PURPORTED OR ACTUAL ASSIGNEE CAN FILE • STILL NEED AN INVENTOR STATEMENT • PROBABLY WILL SELDOM BE USED IP Survey -- Patents

  11. HOW THE CLAIMS SYSTEM WORKS • CLAIMS ARE AT THE BACK OF A PATENT • THEY ARE THE ONLY IMPORTANT PART, FOR PRACTICAL PURPOSES • THEY DEFINE THE SCOPE OF COVERAGE – A FAMILY OF THINGS IP Survey -- Patents

  12. PURPOSE OF A CLAIM: TO DEFINE COVERAGE AS BROADLY AS POSSIBLE • ANYONE WHO LATER OPERATES WITHIN THE FAMILY OF A CLAIM IS AN “INFRINGER” • OTHERS AREN’T IP Survey -- Patents

  13. EXAMPLE OF CLAIMING: THE FIRST CAR • CLIENT SHOWS YOU A MACHINE SHE HAS DEVISED: • IT HAS: • CHASSIS • 4 WHEELS • 10-CYLINDER ENGINE • BRAKE ON EACH WHEEL • 3-SPEED TRANSMISSION IP Survey -- Patents

  14. HOW TO CLAIM? • RULE #1: CLAIM CAN BE AS BROAD AS POSSIBLE, BUT MUST NOT COVER ANY PREVIOUSLY KNOWN CONFIGURATION • RULE #2: CLAIM MUST EMBRACE SOMETHING THE INVENTOR DEVISED IP Survey -- Patents

  15. RETURN TO CAR EXAMPLE • ASSUME: CLOSEST PREVIOUSLY KNOWN MACHINE WAS THE HORSE-DRAWN WAGON IP Survey -- Patents

  16. CLAIM 1: 1. A VEHICLE, COMPRISING: (a) A CHASSIS; (b) A PLURALITY OF WHEELS ATTACHED TO SAID CHASSIS; AND (c) AN ENGINE FOR TURNING ONE OF SAID WHEELS. IP Survey -- Patents

  17. CLIENT’S PRIDE • CLIENT IS UPSET: NO MENTION OF HER 10-CYLINDER ENGINE, THE FINEST PART OF THE CREATION! • CAR WON’T BE ANY GOOD WITHOUT IT! • SAME FOR 3-SPEED TRANSMISSION IP Survey -- Patents

  18. ADVICE: • DON’T GIVE UP BROADEST SCOPE! • WRITE MANY OTHER CLAIMS, NARROWER (IN CASE CL. 1 TURNS OUT TO VIOLATE RULE #1) • EACH CLAIM IS TREATED AS A MINI-PATENT IP Survey -- Patents

  19. ONE EXCEPTION: NEW INFO ON PRIOR ART • YOU FIND OUT AT SOME POINT THAT THE LOCOMOTIVE PRE-EXISTED YOUR CLIENT’S DEVELOPMENT • LOCOMOTIVE FITS WITHIN THE CLAIM LANGUAGE • THIS MAKES THE WHOLE CLAIM INVALID IP Survey -- Patents

  20. AMENDED CLAIM 1: 1. A VEHICLE, COMPRISING: (a) A CHASSIS; (b) A PLURALITY OF WHEELS ATTACHED TO SAID CHASSIS; (c) AN ENGINE FOR TURNING ONE OF SAID WHEELS; AND (d) A STEERING DEVICE FOR TURNING AT LEAST ONE OF SAID WHEELS. IP Survey -- Patents

  21. IS THIS CLAIM VALID? • IT COVERS THE CLIENT’S CAR • BUT DOES IT ALSO COVER (“READ ON”) THE PADDLE-WHEEL STEAMBOAT?? • IF SO, INVALID; CAN WE AMEND FURTHER TO FIX THE PROBLEM? IP Survey -- Patents

  22. A BROADLY CLAIMED FAMILY IS ESSENTIAL • MOST PATENTS ARE DEAD LETTERS, BECAUSE THE CLAIM SCOPE IS NOT COMMERCIALLY MEANINGFUL • EASY TO DESIGN AROUND SUCH CLAIMS IP Survey -- Patents

  23. ONLY CLAIMS ARE HELD VALID OR INVALID – NOT “PATENTS” • EACH CLAIM IS ADJUDICATED INDEPENDENTLY OF THE OTHER CLAIMS – LIKE A MINI-PATENT IP Survey -- Patents

  24. ONLY A CLAIM CAN BE INFRINGED • ACCUSED INFRINGING PRODUCT/METHOD MUST BE WITHIN LANGUAGE OF THE CLAIM • THE INFRINGING PRODUCT SELDOM LOOKS LIKE WHAT THE INVENTOR DEVISED OR SHOWED IN THE PATENT DRAWINGS IP Survey -- Patents

  25. “CLAIM SCOPE IS EVERYTHING!” IP Survey -- Patents

  26. MOST PATENTS CONTAIN MANY CLAIMS, OF VARYING SCOPE • USUAL STYLE: NARROWER CLAIMS TELESCOPE DOWNWARD • ARE NEEDED ONLY IN THE EVENT THE BROADER CLAIMS ARE HELD INVALID IP Survey -- Patents

  27. HOW EFFECTIVE IS A PATENT? • DEPENDS ON THE CLAIM SCOPE • DEPENDS ON $$ TO FIGHT • 45% OF CLAIMS ARE HELD INVALID IP Survey -- Patents

  28. DO YOU HAVE TO DO A SEARCH BEFORE FILING? • NO. BUT NOT SEARCHING ENLARGES RISK OF WRITING UNPATENTABLE CLAIMS. IP Survey -- Patents

  29. DO YOU HAVE TO BUILD AND TEST THE INVENTION BEFORE FILING? • NO. FILING APPLICATION ACTS AS “CONSTRUCTIVE” REDUCTION TO PRACTICE. • USUALLY NOT GOOD TO WAIT. IP Survey -- Patents

  30. WHAT ARE THE CHANCES OF GETTING A PATENT ALLOWED? • IF YOU DON’T CARE ABOUT CLAIM SCOPE, MAYBE 90% • BUT MOST WILL BE COMMERCIALLY INSIGNIFICANT DUE TO NARROW SCOPE – EASY TO DESIGN AROUND IP Survey -- Patents

  31. LACK OF NOVELTY FOR A CLAIM AND LOSS OF RIGHTTO A CLAIM • WE NOW HAVE TWO LAWS ON NOVELTY REQUIREMENTS: • PATENTS WITH EFFECTIVE FILING DATES ON OR AFTER 3/16/13 (“THE NEW LAW” • PATENTS WITH EFFECTIVE FILING DATE EARLIER THAN 3/16/13 (“THE OLD LAW”) IP Survey -- Patents

  32. OLD LAW WILL DOMINATE PATENT LITIGATION UNTIL AT LEAST 2020 • NEW LAW ON NOVELTY TAKES EFFECT FOR FILINGS ON OR AFTER MAR. 16, 2013 • NOT MUCH DIFFERENCE IN PRACTICE • PTO EXAMINERS WILL USUALLY CITE PRIOR REFERENCES THAT WOULD HAVE BEEN CITABLE UNDER OLD LAW AS WELL. IP Survey -- Patents

  33. PATENT-DEFEATING “PRIOR-ART” EVENTS: • EXISTING LAW: • PATENTING ANYWHERE > 1 YEAR BEFORE U.S. FILING DATE • DESCRIBING IN PRINTED PUBLICATION ANYWHERE > 1 YEAR BEFORE U.S. FILING DATE IP Survey -- Patents

  34. OFFER FOR SALE IN U.S. • PUBLIC USE IN U.S. • NOTE: ALL FOUR EVENTS CAN BE BY INVENTOR HIMSELF, OR BY THIRD PARTIES IP Survey -- Patents

  35. PRIOR INVENTING BY SOMEONE ELSE IN THE U.S., WHO DID NOT UNREASONABLY CONCEAL IT • NOTE: THIS RARELY HAPPENS. THE SYSTEM LABEL “FIRST-TO-INVENT” IS A MISNOMER IP Survey -- Patents

  36. NEW LAW(FOR APPLICATIONS FILED 3/16/13 AND LATER) • PATENT-DEFEATING EVENTS: • 3RD PARTY PUBLIC USE ANYWHERE, BEFORE HOME-COUNTRY FILING DATE • 3RD PARTY OFFER FOR SALE ANYWHERE, BEFORE HOME-COUNTRY FILING DATE IP Survey -- Patents

  37. 3RD PARTY PUBLIC DISCLOSURE ANYWHERE, BEFORE HOME-COUNTRY FILING DATE • 3RD PARTY APPLICATION FILING* (IN ANY PARIS CONVENTION COUNTRY),** BEFORE HOME-COUNTRY FILING DATE *PROVIDED THE 3RD PARTY FOLLOWS UP WITH A U.S. APPLICATION. ** PARIS CONVENTION INCLUDES NEARLY ALL COUNTRIES OF THE WORLD IP Survey -- Patents

  38. NEW LAW(FOR APPLICATIONS FILED 3/16/13 AND LATER) • PATENT-DEFEATING EVENTS: • APPLICANT’S OWN PUBLIC DISCLOSURE > 1 YEAR BEFORE FILING* • APPLICANT’S OWN OFFER FOR SALE > 1 YEAR BEFORE FILING* * FILING IN ANY COUNTRY STOPS THE CLOCK, WITH USUAL PROVISOS IP Survey -- Patents

  39. CONTEST UNDER NEW LAW • A: IS FIRST TO PUBLICLY DISCLOSE • B: IS FIRST TO FILE • WHO WINS THE PATENT? • ANSWER: A WINS. PUBLIC DISCLOSURE TRUMPS FIRST-TO-FILE (ANOTHER MISNOMER) IP Survey -- Patents

  40. UNDER OLD AND NEW LAWS • IF ANY ONE MEMBER OF THE CLAIMED FAMILY APPEARS IN THE APPLICABLE PRIOR ART, THE CLAIM IS INVALID • TRUE NO MATTER HOW REMARKABLE THE OTHER SPECIES ARE • DISCOVERY OF GREAT PROPERTIES WILL NOT SAVE THE CLAIM IP Survey -- Patents

  41. A CLOSER LOOK AT “DESCRIBED IN A PRINTED PUBLICATION” • ACTUAL PRINTING NOT REQUIRED; REASONABLE ACCESSIBILITY IS SUFFICIENT • BUT DOESN’T HAVE TO BE WELL KNOWN • CAN BE IN A UNIVERSITY LIBRARY • ANY LANGUAGE • “ENABLING” DISCLOSURE IS REQ’D. IP Survey -- Patents

  42. CASE: • IN RE HALL IP Survey -- Patents

  43. A CLOSER LOOK AT THE ON-SALE BAR • COMPLETED SALE NOT REQUIRED • OFFER IS ENOUGH • NEW LAW: PROBABLY HAS TO BE A PUBLICLY ACCESSIBLE OFFER [UNCLEAR] • INVENTION MUST BE “READY FOR PATENTING” Pfaff v. Wells Electronics, 525 U.S. 55 (1998) IP Survey -- Patents

  44. CASE: • PFAFF IP Survey -- Patents

  45. A CLOSER LOOK AT THE PUBLIC-USE BAR • PRIMARY PURPOSE OF EXPERIMENTATION, EVEN IN PUBLIC, TAKES ACTIVITY OUTSIDE THE “PUBLIC USE” CATEGORY • PRIVATE USES CAN BE A BAR BY ANALOGY TO ON SALE, IF REGULARLY USED FOR PROFIT • LEARNED HAND’S RULE RE. METHOD CLAIM SECRETLY USED IN PROFITABLE SERVICING: REBUILDING ENGINE PARTS IP Survey -- Patents

  46. CASE: • CITY OF ELIZABETH IP Survey -- Patents

  47. SOME PRACTICAL NOVELTY PROBLEMS UNDER 1952 LAW • [SEE FILE IN CLASS MATERIALS] IP Survey -- Patents

  48. SOME NOVELTY PROBLEMS (AND ANSWERS) UNDER THE NEW LAW • FOR PATENTS FILED AFTER MAR. 15, 2013 • [SEE JANICKE-DOLAK SET OF PROBLEMS, IN COURSE MATERIALS] IP Survey -- Patents

  49. OBVIOUSNESS • THE CENTRAL GROUND OF REJECTION IN MOST APPLICATIONS • NOT CHANGED BY NEW LAW • KEYED TO THE PERSON “OF ORDINARY SKILL IN THE ART” AT THE TIME INVENTION WAS MADE §103(a) IP Survey -- Patents

  50. CASE: • GRAHAM v. JOHN DEERE IP Survey -- Patents