Introduction to Intellectual Property2110.me.gatech.edu/.../me211_spring_2019_lecture_13_ip.pdf ·...
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WWW.ALSTON.COM Introduction to Intellectual Property Sean Bedford February 18, 2019 Note: The contents of this presentation does not constitute legal advice, should not be relied upon as a substitute for the direct advice of a licensed attorney, and is intended only as an informational overview of the patent system. The various rules and procedures herein are always subject to change. Please consult a registered patent practitioner for legal advice regarding any specific inventions or other legal issues.
Transcript of Introduction to Intellectual Property2110.me.gatech.edu/.../me211_spring_2019_lecture_13_ip.pdf ·...
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Introduction to Intellectual PropertySean BedfordFebruary 18, 2019
Note: The contents of this presentation does not constitute legal advice, should not be relied upon as a substitute for the direct advice of a licensed attorney, and is intended only as an informational overview of the patent system. The various rules and procedures herein are always subject to change. Please consult a registered patent practitioner for legal advice regarding any specific inventions or other legal issues.
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Presentation Topics Types of intellectual property Trademarks
Copyrights
Trade Secrets
Patents
Identifying patentable inventions
Process for obtaining patents in U.S. & abroad
Patent rights & infringement
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Types of Intellectual Property
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Types of Intellectual Property: Trademarks
A symbol, design, or expression that consumers associate with a particular brand or product
E.g., brand names, logos, or other marks
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Types of Intellectual Property: Trademarks
Words
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Types of Intellectual Property: Trademarks
Names
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Types of Intellectual Property: Trademarks
Phrases
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Types of Intellectual Property: Trademarks
Symbols
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Types of Intellectual Property: Trademarks
Designs
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Types of Intellectual Property: Trademarks
Sounds
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Types of Intellectual Property: Trademarks
Colors
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Types of Intellectual Property: Trademarks
Must be distinctive – must identify and distinguish goods or services
Once a mark becomes “generic,” it is lost for TM purposes
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Types of Intellectual Property: Trademarks
Trademark Infringement
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Types of Intellectual Property: Copyrights
For original works of authorship fixed in any tangible medium of expression
E.g., books, photos, music
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Types of Intellectual Property: Copyrights
Original works of authorship fixed in any tangible medium of expression
Examples: Literary Works Musical Works Dramatic Works Choreographic Works Pictorial, Graphic, and Sculptural Works Audiovisual Works Sound Recordings Architectural Works
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Types of Intellectual Property: Copyrights
When does an author obtain a copyright? Registering a copyright
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Types of Intellectual Property: Trade Secrets
For formulas, processes, designs, etc. that are not publicly known and provide an economic advantage to a business
E.g., formula for Coca-Cola, Google’s search algorithm, criteria for NYT bestseller list
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Types of Intellectual Property: Patents
Utility Patent – for things that are new and useful (machine, method, composition, etc.)
Design Patent – for purely aesthetic, non-functional designs Plant Patent – for new varieties of certain types of plants
Utility Design
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What is a Patent? A right to exclude others from:
Making, Using, Selling, Offering for sale, or Importing
For a specific location
U.S. patents only work in the U.S. protection abroad requires foreign patents
For a limited time
20 years from filing for utility patents in the U.S.
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"Congress shall have the power...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.”
U.S. ConstitutionArticle 1, Section 8.
Why does the Government grant these rights?
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What can be patented?How do you get one?
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Requirements for Patentability: “Any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof”
“Ideas” are not patentable (e.g., an algorithm alone)
Software per se is not patentable, but there are still ways to protect software implementations via patents
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A patentable invention must be not “obvious” Legal Question: Would the invention have been
obvious to “a person of ordinary skill in the art” at the time the invention was made?
Inventions can come in small advances/improvements Often involve combinations of known elements Indicators of non-obviousness:
Long-felt but unsolved needs Prior attempts and failure of others Prior art teaches away Commercial success
Predictable combinations are often held obvious and non-patentable
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Process for Obtaining US Patent:1. Prior Art Searching & Pre-Filing Evaluation
2. File Provisional Application (optional)
3. File Non-Provisional Application (within 12 months of provisional)
4. Examination by USPTO to Determine if Invention is Patentable
5. Patent Issues
6. Optional: Can file additional “child” applications before issuance (e.g., “continuation” or “divisional” applications)
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Provisional Application Placeholder application
Disclosure of what you know (so far)
No claims required
Never examined, never issued, no rights Can be relatively cheap
Allows you to claim the benefit of the filing date with a nonprovisional application filed within 12 months
Great for securing a filing a date and buying yourself one year to figure out what to do with the invention
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Non-Provisional Application Full description of the invention (with Figures)
Must enable person of ordinary skill to practice invention
Claims define what you are protecting Examined by patent office and may issue as an enforceable
patent
Must be filed within 12 months of provisional to claim benefit of earlier filing date
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Examination of Application by USPTO Examiner will search for “prior art”
Types of Prior Art
Patents & Published Applications (anywhere)
Any “printed publication” (articles, books, websites)
Public Use / Sale / Offer for Sale Inventor Actions – sale, use, publication, other public
disclosure more than one year before filing date.
Claims can be amended: Examination is a negotiation with the USPTO over what rights, if any, you are entitled to.
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Other Aspects of Application Filing
Inventorship Inventors are those who contributed to the conception of the
claimed invention.
Inventors have common ownership of patent But… assignments, employment agreements, etc.
Information Disclosure Statements Must disclose known prior art
Filing and prosecution can be done “pro-se” or by registeredpractitioner
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Patent Rights & Infringement
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Porsche invents a new type of convertible…
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Prior Art: Earlier version of the car
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Patent Claims
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Patent Claims Like a wall – define the “perimeter” of the
property right
Claims define what exactly you can exclude others from making/using/selling
You are your own “lexicographer.” Words mean what you say they mean in the patent specification.
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5. A cabriolet vehicle, comprising:
a body structure formed with a rear lid, left and right openings formed through the rear lid,
tensioning bracket holding devices mounted to the rear lid and defining inner limits of the respective openings,
tensioning brackets fastened to the respective tensioning bracket holding devices and projecting into the respective openings; and
a roof structure having a top with a top material, the top material having a main section and left and right lateral rear elongation sections threaded into openings of the body structure and attached to the respective tensioning brackets.
Example Claim
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Example Claim5. A cabriolet vehicle, comprising:
a body structure formed with a rear lid, left and right openings formed through the rear lid,
tensioning bracket holding devices mounted to the rear lid and defining inner limits of the respective openings,
tensioning brackets fastened to the respective tensioning bracket holding devices and projecting into the respective openings; and
a roof structure having a top with a top material, the top material having a main section and left and right lateral rear elongation sections threaded into openings of the body structure and attached to the respective tensioning brackets.
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Example Claim5. A cabriolet vehicle, comprising:
a body structure formed with a rear lid, left and right openings formed through the rear lid,
tensioning bracket holding devices mounted to the rear lid and defining inner limits of the respective openings,
tensioning brackets fastened to the respective tensioning bracket holding devices and projecting into the respective openings; and
a roof structure having a top with a top material, the top material having a main section and left and right lateral rear elongation sections threaded into openings of the body structure and attached to the respective tensioning brackets.
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Patent Infringement Product must include every limitation of at least one claim.
Limitations can be met “literally” or “equivalently” depending on prosecution history of application.
E.g., are clips “tensioning brackets”? Velcro? Depends.
Product can still infringe open-ended claims, even if it has additional features that are not claimed.
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Infringement Example Accused Product: Lotus Elise Soft Top
Meet every limitation?
No tensioning brackets
Roof does not have lateral rear elongation sections
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Infringement Example Accused Product: Porsche Boxster Spyder with Rocket Power.
Meet every limitation?
Yes. Doesn’t matter that this car adds a super awesome rocket because we used open-ended language in claims
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Remedies for Infringement Money
Damages “adequate to compensate” for the infringement Can be tripled in cases of willful infringement
Largest Patent Verdicts:
$2.5 Billion. Merck & Co. v. Gilead Sciences (2016). Hepatitis C drugs.
$1.7 Billion. Carnegie Mellon University v. Marvell Technologies(2013). Integrated circuit technology.
$1.05 Billion. Apple v. Samsung (2012). Smartphone technology.
Injunction Stops infringer from continuing to infringe More difficult to obtain
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Patent Rights Patent grants the right to exclude others from:
Making, Using, Selling, Offering for sale, or Importing
For a limited time (20 yrs. from filing in the U.S.)
For a specific location (e.g., in the U.S.)
Not enforceable until patent issues.
Only the right to exclude others is granted
Does not assure freedom to practice. Product with a patented feature may still infringe other patents.
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Value of Patent Rights Enhance Company Value
increase valuation, provide source of revenue, use as collateral to obtain loans
Attract investors patents make company more attractive to investors; more likely to invest
than compete investors prefer companies with limited or no viable competition
Offensive Utility Direct Revenue Source: Licensing, Damages
(possibly in other markets) Indirect Revenue Source: Market share, barriers to entry
Defensive Utility Provides ammunition for counterclaims in litigation Prevents others from obtaining patent rights that could prevent you from
making your product
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Pitfalls, Strategy, & Practical Considerations
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Important Pitfalls Any of these things triggers a one-year countdown to file an
application before you forfeit patent rights:
Publication (e.g., advertisement, brochure)
Public use (e.g., display at trade show)
Sale or offer for sale
But… no grace period abroad (e.g., Europe). Doing any of these things can cause immediate loss of rights abroad.
First to File Rule:
If two people independently invent the same thing, first to file has rights to the invention.
Can institute “derivation” proceeding if someone steals your invention and files themselves.
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Money Professional Prior Art Search & Evaluation: $2,000 - $5,000
USPTO Fees (filing, search, exam; always subject to change)
Attorney’s Fees for Preparing Non-Provisional Patent Application $10,000 to $35,000 depending on subject matter / complexity / atty rates
Attorney’s Fees for Prosecuting Non-Provisional Application Very difficult to predict (often same as, or more than, preparing application)
Patent Infringement Law Suits are Extremely Expensive $500K to $3M (average) in attorneys fees to get through discovery.
$1M to $6M (average) in attorneys fees to get through trial. High profile cases even more.
Large Entity Small Entity Micro EntityProvisional $280 $140 $70
Non-Provisional $1,720 $860 $430
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There Are No Guarantees
It is possible your invention is not patentable USPTO finds prior art you were not aware of
USPTO decides your invention is obvious
If your invention is patentable, it is possible your claims might be so narrow the resulting patent has minimal value
There is even more uncertainty after the patent issues… Patents can be invalidated or cancelled in proceedings before
Federal Courts or the USPTO
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Dealing With Investors, VCs, Venture Partners, Etc. Non-Disclosure Agreements (NDAs) are your friend.
Not everyone will agree to sign an NDA. A patent application can give you some leverage to prevent others from stealing your idea.
Remember that investors are adverse to you.
Be very careful about assigning over your rights to a patent or patent application. Always know what you are agreeing to.
Confidentiality & IP agreements: With customers With suppliers With manufacturers With consultants With partners
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Tips, Strategies, & Final Thoughts Early consideration of patentability. Beware of statutory bar actions
and deadlines!!!! Consider provisional application filing to buy yourself time.
Working prototype is not necessary if invention is fully contemplated.
Keep notebooks and other records reflecting timeline of invention and inventive progress.
A patent attorney will do a better job than you at preparing and prosecuting a patent application. If you can afford one, you’re better off.
Attorneys usually bill by the hour. Make it easy for them by doing your homework and providing detailed information.
Not getting a patent does not mean your company will fail; getting a patent does not mean your company will succeed.
An inventor with a patent is better off than they would be without one.
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Questions?
CLT/20010955
