DANIELSBAKER

Introduction to Patent Introduction to Patent LawLaw

Doug YerkesonUniversity of Cincinnati

Senior Design ClassApril 6, 2005

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Why Protect Your Intellectual Why Protect Your Intellectual Property?Property? Provides a mechanism for stopping others from

copying Preserves your market share Creates a barrier to entry against your

competitors Allows you to control access to a new market Protects your research and development

investment Increases the bottom line value of your company Provides a revenue source through sale or

licensing Acts as a bargaining chip in negotiations

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Federally Protected IP RightsFederally Protected IP Rights

Patents

Copyrights

Trademarks

Article I, §8, Cl. 8:

"The Congress shall have the power to … Promotethe progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

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Patents in GeneralPatents in General

Patents do not give the owner the right to make, use, sell or offer to sell anything.

They give the owner an exclusionary right.

Anyone making, using, selling or offering to sell the patented invention without the owner’s consent is an infringer.

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Requirements for Requirements for Patentable InventionPatentable Invention

Statutorily Patentable Subject Matter

UtilityNoveltyNon-Obvious

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What Can Be Patented?What Can Be Patented?

New products or processesImprovements on existing

products or processesBusiness methodsComputer softwareCompositions of Matter

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UtilityUtility

Usefulness

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NoveltyNovelty

The invention must not have been previously known or used by others before the applicant’s invention date or more than one year prior to the patent application filing date.

Public Use – In This Country On Sale – In This Country Published - Anywhere Invention by Another – In This Country

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Non-ObviousnessNon-Obviousness

Even though the precise invention was not previously known, the invention was obvious to one of ordinary skill in the art

Scope & Content of the Prior ArtDifferences between the Prior Art &

InventionLevel of Ordinary Skill in the Art

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Bars to PatentabilityBars to PatentabilityUnited States

Application must be filed within a grace period of one year after: Public disclosure (conventions, publications,

non-confidential disclosures, etc.), OR Offer to sell or sale of invention

Most Foreign Countries No grace period to file

Must file in U.S. or another country before public disclosure or sale/offer to sell

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Patented CombinationPatented Combination

A

B

C

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New CombinationNew Combination

A

B

C

D

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Patent ApplicationPatent ApplicationComponentsComponents

Drawings Show preferred and alternative designs of

the invention

Specification Background and Summary of the Invention Brief Description of the Drawings Detailed Description of the Drawings Describes the nuts & bolts of how to make

and use the invention and its alternatives

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Patent ApplicationPatent ApplicationComponentsComponents

ClaimsDefine the invention(s)A patent is infringed only if one or

more of the claims cover the accused product or method

Usually, the claims are not limited to what is specifically shown in the drawings and described in the specification

Preferably, the claims cover features of the invention that provide a competitive advantage

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Patent ApplicationPatent ApplicationThe ProcessThe Process

Invention Disclosure Statement Preparing and filing the application Patent Office Action Responses Issuance/Appeal/Continuation

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U.S. vs. Foreign PatentsU.S. vs. Foreign Patents

US patents only provide protection in US for:

Products & processes made, used, sold or offered for sale in U.S.

Imports into U.S.

Foreign patents must be obtained to provide protection for products and processes not made, used, offered for sale, sold, or imported in U.S.

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Patent ExpirationPatent Expiration

Patents expire for:

Age (20 years from date of filing)

Failure to pay maintenance fees at 4, 8, and 12 years after issue

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Patent ProtectionPatent Protection Patents give rights to EXCLUDE others from

Making Using Offering for sale Selling Importing

Patents do not give rights to ENGAGE in these activities.

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Patent InfringementPatent Infringement Patents only cover those products or

processes described by the claims.

An infringing product or process must have each element of the claim.

The accused product or process may have more than required by the claim.

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Patent Infringement TestPatent Infringement Test

Determine meaning of claim (“claim construction”)

Apply meaning to the accused device.Literal InfringementEquivalents

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Patent Rights & RemediesPatent Rights & Remedies

Right to prevent another entity from making, using or selling a device covered by the claims of the patent

Injunctive Relief

Monetary Damages

Does not necessarily give the patent owner the right to make

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As a Practical Matter…As a Practical Matter… Loss of Investment

Time Money

Absence from Marketplace As a consequence,

businesses need to be aware of patents in their field, particularly those of competitors

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Reasons to Design AroundReasons to Design Around

Costs of Litigation

“The cost to bring a patent case…ranges from $750,000 to $1 million for a simple dispute and from $4 million to $8 million for a modest one. Monster cases can cost $10 million or more.” – IP Worldwide, May 2002, p. 43

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Reasons to Design Around Reasons to Design Around (cont.)(cont.)

Disruption to Business During Litigation

Document Production Depositions Significant issue affecting

business

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Avoiding Patents of OthersAvoiding Patents of Others

Look at the claims, not just the disclosure of the patent

The claims may be very narrow and may not protect the feature you want to use

Many patents can be designed around Elimination of a claimed element avoids

infringement Avoiding literal infringement in a way that is

deemed by the evidence to be significant

Look for corresponding foreign patents

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Patent Due DiligencePatent Due DiligenceScope Of ReviewScope Of Review

New Products

New Processes

New Business Methods

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Patent Due DiligencePatent Due DiligenceHow to ConductHow to Conduct

1. Search/Monitor: Patent searches on relevant product lines of

primary competitors Patent searches directed to the specific product

being introduced Monitoring of relevant products being sold

2. Compare proposed new product or process to any relevant patents or competitor products

3. If necessary, search for prior art

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Patent Due DiligencePatent Due DiligenceWhen A Relevant Patent Is FoundWhen A Relevant Patent Is Found

Look at the claims, not just the disclosure of the patent.

Many patents can be designed around.

Has the patent expired? Time or Maintenance Fee Nonpayment

Is the patent valid?

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Competitive AdvantageCompetitive Advantage

Patents can force hidden costs onto competitors:

Clearance Studies Opinions

Noninfringement Invalidity Treble Damages & Fees

Redesigning around your patents

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Competitive Advantage (cont.)Competitive Advantage (cont.)

Selling:

Written document assigning all rights

Record

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Competitive Advantage (cont.)Competitive Advantage (cont.)

License:

An agreement that allows someone other than the patent owner to make, use, sell and/or offer to sell the patented invention in exchange for something else

Record

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Trademark LawTrademark Law

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Purpose of Trademark LawPurpose of Trademark Law

Allow consumers to identify the source of goods or services

Ensure that consumers can rely upon a mark to identify, distinguish and indicate source without being confused by competitive products

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What Can Be a Trademark?What Can Be a Trademark? Almost anything that can meet the three

requirements, including: Word Color Sound (?)

BUT, not: Immoral, deceptive, scandalous Flag or coat of arms of US, state, foreign

nation Name, portrait, signature

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Copyright LawCopyright Law

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What Can Be Copyrighted?What Can Be Copyrighted? Books Manuscripts Music Software Specifications Photographs Sculptures Video & Audio Works

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Requirements for CopyrightRequirements for Copyright

Original “Work of Authorship” Fixed in “Tangible Medium of Expression”

Copyright comes into being automatically when fixed

Registration & other “formalities” provide additional benefits

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The EndThe End

Questions?