PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT...

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PATENTS PROF. JANICKE IP SURVEY COURSE 2009

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F2009Patents3 THE USUAL QUESTIONS: HOW LONG WILL IT TAKE? WHAT CAN I DO WITH IT IF I GET IT?

Transcript of PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT...

Page 1: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

PATENTS

PROF. JANICKEIP SURVEY COURSE

2009

Page 2: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 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?

Page 3: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 3

THE USUAL QUESTIONS:

• HOW LONG WILL IT TAKE?

• WHAT CAN I DO WITH IT IF I GET IT?

Page 4: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 4

ELIGIBILITY• JUST ABOUT ANYTHING BELIEVED

TO BE “NEW” – BASICALLY NOT KNOWN BEFORE

• COMPUTER SOFTWARE: GENERALLY YES

• BUSINESS METHODS: YES

Page 5: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 5

ACTUAL INVENTORS MUST “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 THING ANY MORE

Page 6: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 6

INVENTORS

• THOSE WHO THOUGHT OF SOMETHING COVERED BY THE CLAIM

• NOT THOSE WHO LEARNED IT FROM SOMEONE ELSE

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F2009 Patents 7

INVENTORS

• YOU DON’T REALLY KNOW WHO THEY ARE UNTIL THE CLAIMS ARE DRAFTED

• THOSE INVOLVED IN A MINISTERIAL OR MANAGERIAL WAY AREN’T

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F2009 Patents 8

INVENTORS

• ARE ALWAYS THE INITIAL OWNERS OF THE PATENT RIGHT

• USUALLY THEY ASSIGN TO A COMMON ENTITY, WHICH BANKROLLS THE APPLICATION

Page 9: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 9

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

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F2009 Patents 10

PURPOSE OF A CLAIM: TO DEFINE COVERAGE AS

BROADLY AS POSSIBLE

• ANYONE WHO LATER OPERATES WITHIN THE LANGUAGE OF A CLAIM IS AN “INFRINGER”

• OTHERS AREN’T

Page 11: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 11

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

Page 12: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 12

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

Page 13: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 13

RETURN TO CAR EXAMPLE

• ASSUME: CLOSEST PREVIOUSLY KNOWN MACHINE WAS THE HORSE-DRAWN WAGON

Page 14: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 14

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.

Page 15: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 15

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

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F2009 Patents 16

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

Page 17: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 17

ONE EXCEPTION: NEW INFO ON PRIOR ART

• YOU FIND OUT AT SOME POINT THAT THE LOCOMOTIVE PRE-EXISTED YOUR CLIENT’S DEVELOPMENT

Page 18: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 18

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.

Page 19: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 19

BROAD CLAIM COVERAGE IS ESSENTIAL

• MOST PATENTS ARE DEAD LETTERS, BECAUSE THE CLAIM SCOPE IS NOT COMMERCIALLY MEANINGFUL

• EASY TO DESIGN AROUND SUCH CLAIMS

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F2009 Patents 20

ONLY CLAIMS ARE VALID/INVALID

• EACH CLAIM IS ADJUDICATED INDEPENDENTLY

• A “PATENT” IS NEITHER VALID NOR INVALID

Page 21: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 21

ONLY A CLAIM CAN BE INFRINGED

• ACCUSED INFRINGING PRODUCT/METHOD MUST BE WITHIN LANGUAGE OF A VALID CLAIM

• “CLAIM SCOPE IS EVERYTHING!”

Page 22: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 22

• MOST PATENTS CONTAIN MANY CLAIMS, OF VARYING SCOPE

• USUAL STYLE: TELESCOPING DOWNWARD– IN THE EVENT THE BROADER CLAIMS

ARE HELD INVALID

Page 23: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 23

SOME MYTHS

• “HE HAS A PATENT ON THE IDEA OF PUTTING …..”

• REALITY: FOR EACH CLAIM, HE HAS A PATENT COVERING THE FAMILY OF COMBINATIONS RECITED IN THE CLAIM

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F2009 Patents 24

SOME MYTHS• “THERE IS A GREAT MARKET FOR THE

STRUCTURE I HAVE ACTUALLY DEVISED”

• REALITY: MARKETS ARE NOT STRUCTURE-SPECIFIC; CLAIMS BROAD ENOUGH TO COVER FOLLOW-ON DESIGNS ARE CRITICAL

Page 25: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 25

SOME MYTHS

• “WE’RE GOING TO LICENSE IT TO A BIG COMPANY!”

• REALITY: BIG COMPANIES DON’T WANT AN OUTSIDE IDEA; IT IS A NUISANCE UNLESS IT ADVANCES THEIR FIVE-YEAR PLAN

Page 26: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 26

SOME MYTHS (cont’d)

• IT HAS NOTHING TO DO WITH WHETHER THE IDEA IS A “GOOD” ONE

• THE PROBLEM IS HIGH RISK

Page 27: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 27

SOME ROUGH ESTIMATES

• COST THROUGH U.S. ISSUANCE: $5-10K AND UP

• TIME TO ISSUANCE: 2 YEARS

• EXCLUSIVITY IN MEANTIME: NONE

Page 28: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 28

• FOREIGN COVERAGE NEEDED, TOO

• EUROPE AND JAPAN: $30K AND UP

• MAINTENANCE FEES: ABOUT EQUAL TO PROCUREMENT COSTS

• TOTAL: $100K-140K AVERAGE

Page 29: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 29

HOW EFFECTIVE IS A PATENT?

• DEPENDS ON CLAIM SCOPE

• DEPENDS ON $$ TO FIGHT

• 45% ARE HELD INVALID

Page 30: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 30

DO YOU HAVE TO DO A SEARCH BEFORE FILING?

• NO. BUT NON SEARCHING ENLARGES RISK OF WRITING UNPATENTABLE CLAIMS.

• PTO NOW MOVING TO REQUIRE SEARCHES

Page 31: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 31

DO YOU HAVE TO BUILD AND TEST THE INVENTION

BEFORE FILING?

• NO. FILING APPLICATION ACTS AS “CONSTRUCTIVE” REDUCTION TO PRACTICE.

• NOT GOOD TO WAIT.

Page 32: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 32

WHAT ARE THE CHANCES OF GETTING A PATENT

ALLOWED?

• IF YOU DON’T CARE ABOUT CLAIM SCOPE, MAYBE 90%

• BUT MOST WILL BE COMMERCIALLY DEAD LETTERS

Page 33: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 33

LACK OF NOVELTY FOR A CLAIM

AND LOSS OF RIGHTTO A CLAIM

• FOCUS ON §102 (b) – IT ACCOUNTS FOR 90% OF SITUATIONS ENCOUNTERED IN REAL LIFE

Page 34: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 34

4 “PRIOR-ART” EVENTS:

• PATENTING• DESCRIBING IN PRINTED

PUBLICATION• OFFERING FOR SALE (IN U.S.)• PUBLICLY USING (IN U.S.)

Page 35: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 35

RULE

• IF ANY ONE SPECIES WITHIN THE CLAIM APPEARS IN THE PRIOR ART, THE CLAIM IS INVALID– TRUE NO MATTER HOW REMARKABLE

THE OTHER SPECIES ARE– DISCOVERY OF GREAT PROPERTIES

AND THEIR DISCLOSURE IN THE PATENT WILL NOT SAVE THE CLAIM

Page 36: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 36

NO WAY OUT(OTHER THAN EARLY U.S.

FILING DATE)

• EARLY INVENTION DATE WON’T HELP

• FOREIGN PRIORITY DATE WON’T HELP

Page 37: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 37

A CLOSER LOOK AT DESCRIBING IN A PRINTED

PUBLICATION• REASONABLE ACCESSIBILITY

REQ’D.– BUT DOESN’T HAVE TO BE WELL

KNOWN– CAN BE IN A UNIVERSITY LIBRARY

• ENABLING DISCLOSURE REQ’D.

Page 38: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 38

A CLOSER LOOK AT THE ON-SALE BAR

• COMPLETED SALE NOT REQUIRED

• OFFER IN U.S. IS ENOUGH

• INVENTION MUST BE “READY FOR PATENTING” Pfaff v. Wells Electronics, 525 U.S. 55 (1998)

Page 39: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 39

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

Page 40: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 40

SOME PRACTICAL PROBLEMS UNDER § 102(b)

• [SEE FILE IN CLASS MATERIALS: TIMEBAR PROBLEMS ON PATENT CLAIMS]

Page 41: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 41

OBVIOUSNESS

• THE CENTRAL GROUND OF REJECTION IN MOST APPLICATIONS

• KEYED TO THE PERSON “OF ORDINARY SKILL IN THE ART” AT THE TIME INVENTION WAS MADE

§103(a)

Page 42: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 42

THE DISCLOSURE PORTION OF THE

APPLICATION • REFERS TO DRAWINGS,

SPECIFICATION (OTHER THAN CLAIMS)

• NORMALLY DOESN’T HAVE MAJOR IMPACT ON SCOPE

Page 43: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 43

THE DISCLOSURE PORTION OF THE

APPLICATION• IS A BURDEN IMPOSED BY

STATUTE • MUST TEACH HOW TO MAKE AND

USE WHAT’S CLAIMED § 112 (1st para.)

• MUST SET FORTH THE “BEST MODE” – SUBJECTIVELY § 112 (1st para.)

Page 44: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 44

• THE WRITTEN DESCRIPTION IS SPECIFIC, AND TELLS WHAT THE INVENTOR ACTUALLY DEVISED OR IMAGINED– HAS LITTLE TO DO WITH THE PATENT

GRANT (CLAIMS)– A CLAIM MUST INCLUDE WHAT

INVENTOR IMAGINED, BUT LOTS ELSE BESIDES!

– THE INTENT IS TO COVER FUTURE INVENTIONS OF OTHERS!

Page 45: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 45

INFRINGEMENT IS OF A CLAIM

• JUDGMENT IN A PATENT CASE IS BY CLAIMS, NOT “THE PATENT”

• ONE CLAIM STANDING VALID AND INFRINGED = A VICTORY FOR THE PATENT OWNER

Page 46: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 46

ACTS OF INFRINGEMENT

• MAKING • USING • SELLING • OFFERING TO SELL • IMPORTING §271 (a)

SOMETHING WITHIN

THE CLAIM

IN THE U.S.

DURING THE TERM

Page 47: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 47

INDIRECT INFRINGEMENT

• INDUCING §271 (b)

• CONTRIBUTORY §271 (c)

• SHIPPING PARTS §271 (g)

• IMPORTING PRODUCT OF PATENTED PROCESS §271 (g)

Page 48: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 48

TYPICAL MODERN BUSINESS TRANSACTION

• THREE OR MORE PLAYERS:– PARTS/MATERIALS VENDOR– MANUFACTURER/SELLER– RETAILER

• COULD BE MANY MORE:– CONSULTANT/ADVISOR– END USER

Page 49: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 49

EACH PLAYER NEEDS TO BE ANALYZED FOR

LIABILITY

• CLAIM-BY-CLAIM ANALYSIS• DON’T COUNT ON INDEMNITY– BUT …..

Page 50: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 50

EXAMPLE: A POWER DRILL FOR HOME USE

• PATENT HAS TWO CLAIMS:– 1. STRUCTURE OF DRILL– 2. METHOD OF DRILLING THROUGH

CONCRETE

Page 51: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 51

CONSIDER POSSIBLE INFRINGERS:

• VENDOR OF MOTORS TO TOOLCO• TOOLCO• RETAILER• END USER

WHO IS LIABLE FOR WHAT?

Page 52: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 52

OWNERSHIP

• ORIGINATES FROM NAMED INVENTORS

• WHY JOINT OWNERSHIP IS IMPRACTICAL (ABSENT STRINGENT AGREEMENT):– ANY CO-OWNER CAN USE FREELY– ANY CO-OWNER CAN LICENSE

WITHOUT ACCOUNTING TO OTHER CO-OWNERS

Page 53: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 53

MORE ABOUT FOLLIES OF JOINT OWNERSHIP

• HARD TO AGREE ON BRINGING SUIT

• HARD TO AGREE ON PAYING FOR SUIT

• HARD TO AGREE ON SETTLEMENT POSTURE

Page 54: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 54

LICENSING

• PERMISSION TO DO WHAT WOULD OTHERWISE BE ILLEGAL

• 3 GENERAL TYPES:– NONEXCLUSIVE– SOLE [does not exclude patent owner]– EXCLUSIVE [excludes patent owner]

Page 55: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 55

IMPLIED WARRANTIES

• LICENSOR HAS SUFFICIENT TO GRANT THE LICENSE

• LICENSE TO MAKE INCLUDES “HAVE MADE”

Page 56: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 56

NOT IMPLIEDLY WARRANTED

• VALIDITY OF ANY CLAIM• PRACTICING LICENSE WILL NOT

INFRINGE THIRD-PARTY PATENTS• LICENSOR WILL “THROW IN”

RELATED PATENTS• OTHERS WON’T GET BETTER

TERMS

Page 57: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 57

NOT IMPLIEDLY WARRANTED:

• RIGHT TO SUBLICENSE 3RD PARTIES

• RIGHT TO ASSIGN THE LICENSE– PERILOUS UPON MERGER

Page 58: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 58

LITIGATION

• THREE MAIN TYPES– INFRINGEMENT ACTION– DECLARATORY JUDGMENT OF

INVALIDITY, NONINFRINGEMENT, OR UNENFORCEABILITY (BY ACCUSED INFRINGER)

– DECLARATORY JUDGMENT OF INVALIDITY, NONINFRINGEMENT, OR UNENFORCEABILITY (BY A LICENSEE)

Page 59: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 59

SUITS AGAINST THE UNITED STATES

• MUST BE IN COURT OF FEDERAL CLAIMS

• NO INJUNCTIONS ALLOWED

• NO SUITS OR REMEDIES AGAINST CONTRACTORS ALLOWED

Page 60: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 60

PARTIES TO LITIGATION

• PATENTEE IS NECESSARY, UNLESS SUBSTANTIALLY ALL RIGHTS ARE GIVEN OVER TO EXCLUSIVE LICENSEE

• ANY EXCLUSIVE LICENSEE HAS STANDING TO SUE (ALONE IF SHE HAS ALL RIGHTS; OTHERWISE JOINING PATENTEE)

Page 61: PATENTS PROF. JANICKE IP SURVEY COURSE 2009. F2009Patents2 THE USUAL QUESTIONS: CAN I GET A PATENT ON ____? IF I’M EMPLOYED OR CONSULTING, WHO WILL OWN.

F2009 Patents 61

PARTIES TO LITIGATION

• NONEXCLUSIVE LICENSEE HAS NO STANDING TO SUE

• PARTIES DEFENDANT: CAN INCLUDE INDIVIDUALS WORKING FOR CORPORATION– THIS IS TORT LAW– NO IMMUNITY FOR EMPLOYEES