Ally and I went to a brunch at The Paramount in Boston that day. It was a neat little place on a nice street near the MGH stop of the Red Line. I got a chorizo omelet and Ally got the western burrito. We'll probably go back there again.
My Notes from patent workshop
Patent law essentials
what scientists engineers and entrpreneurs need to know
saturday 2-6pm EST MIT 56-154
All are electrical engineers, into NYU together, their practice does patent law
Stephen is details, Julian is litigation
people in tech are asking the same questions over and over again
Not allowed digital recording
Who counts as an inventor on a patent?
How that relates to ownership?
Certain requirements any invention needs to make
never gets automatically approved
What is a patent?
A type of property right that enables the holder to exclude others from making using seeling or importing the claimed invention
for a limited term of time
in the jurisdictio that granted the patent
like other property, it may be sold, bequeathed, or licensed
Infringement = "trepassing" on a patent
Negative right, a patent is a negative right, it is the right to exclude others
There are no positive (affirmative) right to practice invention!
deal between public and inventor
The inventor discloses the invention, in return the government grants them a limited monopoly
The idea is that this spurs innovation, promotes growth of public technical knowledge, encourages commercialization of inventions, fairly balanced?
When does a US patent expire?
*need to pay certain fees
Before June 8th, 1995, 17 years from date of issue
After June 8th, 1995, expires 20 years from earliest effective US filing date, but starts only when patent issues.
WTO agreement on trade-related aspects of inteelectual property rights (TRIPS)
patent pending means provisional patent rights
*Patent term adjustment: ask patent office to adjust term of patent due to delays in approval process
Types of intellectual property:
patents (utility, design, plant)
copyrights: protecting creative works
trademarks: the brand name items
trade secrets: internal company, NDA
Limited subject matter
<20 year term
long, expensive application process
Much broader subject range
no application, immediate effect
What are advantages of patents over trade secrets?
monopoly in return!!!
Uniform trade secret act
Sources of patent law
US Constitution, art 1 sec 8 to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries
35 USC "the patent code"
37 CFR "the patent rules", manual of pat. exam proc (MPEP)
America Invents Act of 2011
Three stages 2011, 2012, and 2013
Sep 16, 2011, Leahy-Smith America invents act (AIA) signed; some provisions immediately enter into force.
Establishment of micro entities
Best mode nearly eliminated
"Human organism" patents prohibited
Patenting tax strategies now much more difficult
"prior commercial use" is introduced as a permissible defense to infrigement"
Sep 16, 2012
PTAB created; post grant proceedings significantly revised
May 16, 2013
"first to invent" "first to file"
"swearing behind" cited prior art no longer permitted
"first to disclose" shield is created
Requirement that some prior art events take place in the US and be in English are abolished
The "secret public use" and "secret on sale" bars may have been abolished
The hilmer doctraine is abolished. Foreign priority can now be both a "sword" and "shield".
March 2013, switch from first to invent to first to file, lots of applications
Three aspects of patent law: prosecution, litigation, and licensing
Prosecution is through the USPTO
Litigation is in the federal courts, three levels: district, CAFC, and SCOTUS
Licensing is in business law, contract law, etc.
Prudent patent strategy involves all three
The application process:
the applicant goes back and forth with a 'examiner' at the USPTO
Applicant and examiner go back and forth regarding the patentability of the idea
Either get reject or issued patent
if reject, can appeal to PTAB, either affirm reject or overrule
if rejected again,
sue the patent office in federal court
this legal case occurs in court of appeals for the federal circuit (CAFC)
court can still issue patent is you win
If you get a patent, PTAB can either valid affirm or patent invalid your work through PTAB
failsafes with CAFC and SCOTUS
For infrigement, can take to one of 94 federal district courts
gets messy with back sue for patent invalidation
Looking at parts of a patent
- Name (e.g. pressure sensor)
- Inventor location
- Assignee, person who owns rights at time of issue
- Date of patent (time that you have rights from, on a tuesday)
Drawings: only required if necessary to understand invention
may include graphs flow charts, schematics, blueprints
Specification: satifies written description
Protection is limited to "what is claimed"
Analogous to real property deed defining land ownership
Central claiming "sign posts"
Peripheral claiming "fence posts"
Lot of inventors get confused when application does not get to the 'meat' of the claim but focuses on the fringes.
A claim is always a single sentence. Can be own lexicographer, while a term used in the claims may be given a special meaning in the description of the invention, no term may be repugnant
(used in another way)
"comprising" open ended versus "consisting of" closed ended
Markush group = "the group consisting of x, y, z , w, or h."
Independent claim is a statement not mentioning another claim, opposite is dependent claim
Conception: the formation in the inventor's mind of a definite and permanent idea of the invention including every feature of the subject matter sought to be patented
For joint inventor: to be counted as a co-inventor, person must generally contribute to concenption. Before 1984, must have contributed to every one of the claims, after, not so
Supervisors or funders do not count as co-inventors of patents do not count.
The inventor also holds ownership.
An improper list of inventors may invalidate a patent. All true inventors and no one else must be named as inventors on a patent application, even when an inventor joint or not.
- refuses to consent to filing a patent app
- is deceased
- is lost and cannot be found
It's the owner, not the inventor that enjoys the rights granted by the patent. Inventorship cannot be negotiatied or transferred. But ownership may be negotiatied or transferred.
Inventorship can never change (except by correction) but ownership may change over time.
Patent inventors must be humans.
Who cannot be inventors or owners of US patents?
- children? No age limit, good to go
- felons? still fine
- contractors for the US DoD? Yes/No messy
- non US citizens? Yes they can
Only one group is restricted, officers and employees of the USPTO cannot file.
What if a co-owner wants to license the patent to company X but the other co-owners do not?
(United States) Each individual co-owner can decide what they want to let out of the bag
What if a co-owner wants to sue company Y for patent infrigement but the co-owners do not?
(United States) Needs unianimous decision
Requirements for patentability 35 USC 101
Utility 35 USC 101
Novelty 35 USC 102
Non-obviousness 35 USC 103
Disclosure Agreement 35 USC 112
Enablement, written descriptions, definiteness
Utility: whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter
- must have specific and substantial utility
- threshold is relatively low: even toys have been patented
- biotech: utility does not require FDA approval
- if contravenes scientific principles, rejected as inoperable, a form of 'lack of utility'
- USPTO does not reject on grounds that an invetion is immoral, deceptive, or even illegal
Categorical: whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
Cannot obtain a patent on invention directed to: laws of nature, natural phenomena, or abstract ideas
Cannot enforce patent 35 USC 287 practitioner of patent on certain medical or surgical procedures relieved from liability enacted in 1996
Enablement: how much should an inventor disclose? Policy goal: to put the public in possession of the invention
POSITA: person of ordinary skill in the art
Definiteness: claims must provide with reasonable certainty for those skilled in the art
On Sale bar;
what does it mean for my invention to be on sale
Selling embodiments of the invention different from licensing
Does a mere offer for sale count, even if no one accepts
When does the sale take place? What is completely secret and private?
Pfaff v. Wells US 1998
Nov 1980: engineer Pfaff is asked by TI to design a socket for removing semiconductor chip carriers.
May 1981 Pfaff shows design to TI
Licensing practice tips
- confidentiality and trade secrets agreements
- due diligence on potential licensee
- clearance studies conducted prior to entering into the license agreement that identify other patents that might form a barrier to exploiting licensed technology
- warranties from the licensor that practicing the licensed technology will not infringe third-party patents
Types of infrigement:
Direct infrigement, makes, uses, offers to sell or sells a patented invention within the US. Imports a patented invention into the US. Infringing device or process must include each element of a patented claim either literally or under the doctraine of equivalance.
Literal infringement: same as
Doctraine of equivalence: for any limitation that is not literally present, the patent holder must show that the differences from the literal claim requirement are insubstantial.
Claim construction: each parties identification of disputed claim terms, each party proposes claim construction on disputed claim, intrinsic evidence (specs), extrinsic evidence (experts)
The Markman hearing, the court may allow expert testimony.
Defense: inequitable conduct, alleged infringer claims that a party asserting the patent breached its duties of disclosure of candor to the USPTO when the patent was prosecuted.
A successful inequitable case uses,
reasonable royalty: amount that patent holder and infringer would have agreed to if arms-length license negotiations at a time just before infringement began.
lost profits: compensation for lost sales
preliminary or permanent injunction prevents service
Ex Parte reexamination, any person may request reexamination, 90% of re-exams are the same inventor, used for patent strengthening "flexin on them"
Strategy to re-assure licensee's
Working with a patent practitioner, keep records, be nice, filing
Cost of things
small entity: non profit, less than 500 people
micro entity: below 189,000 annual income
fees prior to issue, if regular ~$1,720, if micro entity ~$430
then during issue, regular $13,600, micro entity $3,400
julian g pymento