law of computer technology fall 2015 © 2015 michael i. shamos patents michael i. shamos, ph.d.,...

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS

Patents

Michael I. Shamos, Ph.D., J.D.Institute for Software ResearchSchool of Computer ScienceCarnegie Mellon University


The Moshovos (WARF) Invention


Nature of Patents

• Unlike copyrights, patents protect ideas, underlying processes and methods of operation – things copyrights expressly do NOT protect

• The term of a patent is shorter (20 years), but patents are much more difficult (and expensive) to obtain and retain than copyrights

• Independent creation is a defense to copyright infringement (copying is required), but not to patent infringement (copying is not required)


Purpose of Patents

• Encourage technological innovation by rewarding inventors

• Allow society to benefit (build structural capital, a repository of technical knowledge)

• Natural justice theory:

“Justice gives every man a title to the product of his honest industry.”

John Locke, Two Treatises on Civil Government (1690)


Rewarding Inventors

• Pay them– Buy out invention– Pay royalties (Soviet Union)

• Allow them freedom to exploit the invention

• In the U.S., confer a monopoly for 20 years• The contract or “compact” theory:

– You tell us all about your invention– We protect your ability to make money

• Patents existed in the U.S. before the Constitution• First federal Patent Act: 1790


Patent History

• Patents date back to the Industrial Revolution

• Pennsylvania issued patents before the U.S. was formed

• U.S. Patent Office founded: 1790

• Patents issued through November 3, 2015: 9,179,586

• Total patents issued per week, 2015: ~6700

• Internet-related patents issued per week, 2015: ~1400• Software patents issued so far: >400,000


Parts of a Patent

• Specification– Must tell how to make and use the invention– Usually background (prior art) + need for the

invention• Claims

– One or more statements defining what the inventor regards as his invention(s)

– Written in highly stylized language (“patentese”) that looks similar to English

• Each claim is its own “mini-patent.”• Infringing any one claim infringes the patent


• Infringement is determined by reading the claim “on” the accused device


ISSUED MAY 25, 2004

Automatic Mattress Selection SystemU.S. Patent 6,741,950

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=6741950.PN.&OS=PN/6741950&RS=PN/6741950


(AMAZON 1-CLICK PATENT)

ADMINISTRATIVE DATA


…

…

DESCRIPTION (SPECIFICATION)

CLAIMS


What is Patentable?

“Whoever invents or discovers any new and useful

1. process,

2. machine,

3. manufacture, or

4. composition of matter,or

5. any new and useful improvement thereof,

may obtain a patent therefor …”

35 U.S.C. §101

If none of these 5, it’s not patentable.

http://www4.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000101----000-.html


What is Not Patentable?

• Unimplemented ideas, e.g., “an anti-gravity machine”• Laws of nature: E = mc2

• Natural phenomena, substances• Printed matter • Mathematical formulas: • Purely mental steps• FORMERLY, “methods of doing business”

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Extra Requirement of Non-Obviousness

“A patent may not be obtained … if the ... subject matter as a whole

would have been obvious

at the time the invention was made

to a person having ordinary skill in the art

to which said subject matter pertains.

Patentability shall not be negatived by the

manner in which the invention was made.”

35 U.S.C. §103

http://www4.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000103----000-.html


What’s Obvious?

• Conventional transformations and operations on objects:

• “Negative rules of invention”– changing size– substituting a new material – making an apparatus portable– omitting parts, moving parts around

• Combining references

– Need either “suggestion to combine” or combination of well-known techniques to produce an expected result


Obviousness

• Obviousness is not a subjective standard• The examiner cannot reject a claim because he

thinks it is obvious or that it seems elementary• A reference to the prior art MUST be furnished


Inventions and Prior Art

OBVIOUSBASED ONPRIOR ART

PRIORART

VALID PATENT

INVALID(ANTICIPATION) INVALID

(OBVIOUSNESS)


The Patent Process• Search, e.g. U.S. Patent and Trademark Office• Application

– Specification– Claims

• Examination– Comparison with “prior art”

• Amendments are allowed– But no “new matter”

• Issuance (term = 20 years from filing date)• Maintenance fees during life of patent• Enforcement (patents can be found invalid in litigation)


Patent Applications

• Pursuing a patent application is called “prosecution”• Assigned to an examiner• Examiner performs a “prior art” search• Prosecution is a negotiation between PTO and

applicant– clarity of specification, arguments over

obviousness, wording of claims• Usually takes 9 months to 2 years, often much longer• Application can be amended, but no “new matter” can

be added


What is a Patent?

“Every patent shall contain … a grant to the patentee … of the right to exclude others from

• making,

• using,

• offering for sale, or selling the invention throughoutthe United States or

• importing the invention into the United States.”35 U.S.C. §154

(Term: 20 years from application date)


U.S. Patent System

U.S. SUPREMECOURT

U.S. DISTRICTCOURTS (91)

COURT OF APPEALSFOR THE FEDERAL

CIRCUIT

PATENTINFRINGEMENT

CASES

APPEAL BYPETITION

APPEAL AS OF RIGHT

PATENT SYSTEMIS FEDERAL ONLY

BOARD OF PATENT APPEALSAND INTERFERENCES

PATENTAPPLICATIONS

PATENT EXAMINERS (2000)

U.S. PATENT ANDTRADEMARK OFFICE

Can declarepatents invalid

(A Federal ExecutiveBranch Agency)

(Judicial Branch)


Who Owns a Patent?

• Only humans can be inventors– For a corporation to own a patent, it must get it from a

human being, often by written agreement• Employer

– Non-inventive employee• Employer may have a “shop right”

– Specifically inventive• Employer owns specific invention

– Generally inventive• Employer owns all inventions pertinent to his

business


2014 Top 10 U.S. Patentees 2013 Stats

1. IBM (7534) (1, 6788) 2. Samsung (4952) (2, 4652) 3. Canon (4055) (3, 3918) 4. Sony (3224) (4, 3315) 5. Microsoft (2829) (6, 2814) 6. Toshiba (2608) (7, 2679) 7. Qualcomm (2590) (--, ----) 8. Google (2566) (10, 2190) 9. LG Electronics (2122) (5, 3117)10. Panasonic (2095) (8, 2649)

SOURCE: PATENTLYAPPLE

Major Ideas• To be patentable, an invention must be new, useful and non-

obvious• A patent application must teach those skilled in the art how to

make and use the invention (the specification)• Every patent must contains one or more claims defining the

invention• Each claim is its own mini-patent and can be infringed

separately from every other claim of the patent• Infringement is determined by reading a claim “on” an

accused device or process• If any claim is infringed, the patent is infringed• Infringement is making, using or selling the invention or

method • Patent term: 20 years from the date of application


QA&


After issuance, IBM was embarrassedinto withdrawing this patent

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