introduction to ip introduction to ip nicole morris, esq. october 19, 2015
TRANSCRIPT
Part I: Overview of Intellectual Property • What is Intellectual Property?• Types of Intellectual Property Protection• Why Protect Innovation?• Importance of a Nexus Between Business Strategy & IP
Strategy
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Part II: Overview of Patents• Forms of Patent Protection• The Innovation Process• Requirements for Patentability• Infringement• Patent Strategy Goals• America Invents Act
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What is Intellectual Property?• Intangible Assets
CopyrightTrademarksTrade SecretsPatents
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Trademark
Industrial Design, Patent andTrademark
Copyright
Formula: Trade secret
What is IP ?
Innovation Process• Inventorship• Conception• Reduction to Practice• Invention Disclosure
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Who is an Inventor?• An inventor is a person who contributes to the “conception” of the invention; and
• Contribution is shown in at least one claim of the patent.
• Inventorship cannot be determined until the claims are known
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The definition for inventorship can be simply stated: “The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant [except for simultaneous conception and reduction to practice, Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993)]. One must contribute to the conception to be an inventor.” In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). See also Board of Education ex rel. Board of Trustees of Florida State Univ. v. American Bioscience Inc., 333 F.3d 1330, 1340, 67 USPQ2d 1252, 1259 (Fed. Cir. 2003) (“Invention requires conception.” With regard to the inventorship of chemical compounds, an inventor must have a conception of the specific compounds being claimed. “[G]eneral knowledge regarding the anticipated biological properties of groups of complex chemical compounds is insufficient to confer inventorship status with respect to specifically claimed compounds.”);
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What is Conception & Reduction to Practice?
• Conception – the mental part; consists of formulating the idea, even if only in the inventor’s mind, of the means of achieving a desired result
• Reduction to Practice – the physical part; it can be “actual” or “constructive”
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• “Actual” Reduction to Practice:– the successful physical use or carrying out the invention to achieve
the intended result• “Constructive” Reduction to Practice:
– can involve the filing of the patent application that discloses the invention completely enough for a person “skilled in the art” to put it into practice
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Each individual who contributes to the conception of an invention is an inventor. Merely contributing to the reduction to practice of an invention
does not count.
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Invention Disclosure• Why is it important? • Review relevant parts of an invention disclosure• Sample questions during an inventor interview
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Invention Disclosure Form
An invention disclosure, or invention disclosure form, is a confidential document written by a scientist or engineer for use by a patent attorney to determine whether patent protection should be sought for the described invention. It may follow a standardized form established within a company or university.
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Examples of different forms of patent protectionUtility DesignPlants
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Forms of Patent ProtectionUtility Patents: for useful, novel, and non-obvious machines,
processes, articles of manufacture or compositions (~ 8.5 million patents today)
Design Patents: for a new, original, ornamental, and non-obvious design for an article of manufacture
Plant Patents: for a new and distinct varieties of asexually reproducing plants (< 25,000)
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What is a Patent?• Define patent rights• Review parts of a patent
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What is a patent?
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-No such thing as common law patent rights. Rather, a patent is a government issued grant conferring the right to exclude others from making, using, selling, offering for sale the claimed invention throughout the U.S. or importing the claimed invention into the U.S.- Term of exclusivity limited to 20 years from date of filing; not affirmative right to practice
-A patent does not give its owner a right to use the claimed invention.
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Patent is Not
A free license to use other’s technology
No such thing as free patents
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A Patent is a Property Right
© C. Nard - Fall 2015 - Law of Patents
- There are similarities between, on the onehand, real and personal property; and, on the other hand, intellectual property
-The right to exclude is a key similarity
-But there are important differences between, on the one hand, land, olive oil or a pen and,on the other hand, information
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Patent Law and the Marketplace
The patent system works hand-in-hand with the marketplace
It is the private market that signals to innovators where to channel their inventive energies
The patent system provides a property right as an inducement to innovate, but does not channel the direction of the innovation
Thus, the patent system and the marketplace work hand-in-hand to foster innovation in a decentralized setting
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Economic Theories of Patent Law
A patent system, however, is not a costless enterprise. With exclusivity comes the risk of reduced output, excessively high prices, and therefore less access to the patented product, because some consumers who value the good at a competitive price will not buy it at a supracompetitive price. This is referred to by economists as deadweight loss
But to the extent these costs are cause for concern, they are thought to be offset by the benefits engendered by a patent system, which leads us to the economic theories for the existence of a patent system.
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Strategic Use of Patents
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• Benefits:– Establish a proprietary market advantage (category- leading
products, enhanced market share, higher monopoly-based margins)– Protect core technologies and business methods (collateral for
cross-licensing deal with IBM)– Boost R&D and branding effectiveness (Companies should focus on
development of patentable products)– Improve Financial Performance Companies with technology assets
they fail to exploit, but increased emphasis on licensing
What is a Patent?• Define patent rights• Review parts of a patent
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Specification
Description: description of the technical problem faced by the inventor and how the inventor solves the problem.
Drawings: attached
Claim(s):
• preamble• transition
• body
Preferred Embodiment (Best Mode)
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Specification
Patent Components
Description: description of the technical problem faced by the inventor and how the inventor solves the problem.
Claim(s): single sentence rule
• preamble
• transition
• body
• comprising (open)
• consisting of (closed)
• consisting essentially of (hybrid)
elements/restrictions
introduction
1. A board for use in constructing a flooring surface for exterior use
Transition
Drawings: if necessary
a top surface, a bottom surface and opposite side edges, said top surface being manufactured to have a slightly rounded or curved configuration from a longitudinal center line thereof downwardly toward each side edge, thereby defining a convex top surface which sheds water and at the same time is comfortable to walk on, and said bottom surface having a concave configuration for nesting engagement with the top surface of another board so that a plurality of the boards may be stacked one on top of the other with the stability of conventional boards having flat top and bottom surfaces.
Dependent claims
2. A board as claimed in claim 1, wherein:both the top and bottom surfaces of the board are curved or rounded, with the concave curved surface on the bottom of a board being shaped complementally to the convex curved surface on the top of the board
3. A board as claimed in claim 2, wherein:the radius of curvature of the top surface of the board is approximately five times as great as the width of the board
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1. An apparatus for receiving confections during Halloween guising, comprising: a frame element including a base portion and a side portion including a first side portion and a second side portion;
a container element including an interior surface defining a receptacle and an exterior surface, wherein said container element is in the form of one from the group of a pumpkin, witch, ghost, goblin, monster, vampire and werewolf;
a securing element, wherein said securing element removeably secures said container element on said base portion between said first side portion and said second side portion of said frame element;
a support element with a first end and a second end, wherein said first end of said support element is attached to said frame element and said second end of said support element is attached to a plurality of wheels; and
a projection element to control said plurality of wheels, said projection element including a proximal end and a distal end attached to said frame element.
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US Patent
Claims
Term: 20years from
filing
DisclosureNonobviousnessNOVELTY
UTILITYSubject Matter
Court
Requirements for Patentability• Novelty• Non-Obviousness• Adequate Written Description
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Patent Eligibility (35 U.S.C. §§ 101)
“whoever invents . . . any new and useful process, machine, manufacture, or composition of matter . . . may obtain a patent therefor.”
• Not patentable: laws of nature, abstract ideas, natural phenomena
Novelty
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention
No geographic limits for public use or on-sale activity
Nonobviousness
Primary Question - Is the invention “different enough” to warrant the “grant of an exclusive patent”?
• May not be entitled to a patent even if invention not identically disclosed in a single prior art reference.
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Description and Enablement
• 35 USC § 112(a):• Three separate requirements. Inventor must:
– Enable a person of ordinary skill in the art to make and use invention without undue experimentation
– Provide a written description showing the inventor had possession of invention at time of filing
– Provide best mode of practicing invention known to inventor at time of filing*
* AIA guts the enforcement advantage for Best Mode
Infringement
• “Has Patent, Will Sue: An Alert to Corporate America” - Erich Spangenberg’s firm, IPNav, wants to “turn idle patents into cash cows.” By: David Segal; The New York Times, July 13, 2013
• “Jury Orders Apple to Pay University $234M in Patent Suit – WARF wins patent infringement suit against Apple – USA Today, October 18, 2015
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Patent Infringement
1. What is a patent infringement? The act of making, using, selling, or
offering to sell a product covered by the claimed invention or importing into the U.S. a product of the claimed invention without the permission of the patent owner
2. How do you determine if the product is covered by the claimed invention?
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Defenses
InvalidityUnenforceability (inequitable conduct, patent misuse)Improper inventorship Non-infringement (accused device/process didn’t include all
elements of the claim either literally or under DOE)
Patent Strategy• Why is it important• Review different types of patent strategy
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Gain Leverage Small portfolio of pioneering patents
Market leadership & advantageLicensingDeal & Merger leverage
Reasonable Costs Market monitoring
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America Invents Act (AIA)First Significant Change in U.S. Patent Law in 60 years• U.S. becomes a “First-to-File” System• New Ways to Challenge Patents• Patent Litigation Reforms• Fee Increases
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America Invents Act (AIA)Timeline:September 16, 2011September 26, 2011September 16, 2012March 16, 2013
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America Invents Act (AIA)First Inventor to File Gets the Patent• Who is the First Inventor?
Act abandons the prior “first to invent” system and adopts the “first inventor to file” system
Must be diligent and quickly file for patent protection for innovations that will provide significant commercial benefit
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Inter Partes Review (IPR)A trial proceeding conducted at the Patent Office to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.
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Resources• Tim Holbrook, Introduction to IP TI:GER Lecture, August 2014• Craig Nard, The Law of Patents Lecture, Fall 2015
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