R Bays - Comparative Patent Registration

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Transcript of R Bays - Comparative Patent Registration

  • 1.Comparative Patent Registration Processes in the US, UK, and EU Markets MC Law Presentation 2013 Richard Bays JD, MBA, RN, CPHQ R Bays 2013

2. Introduction While we may not consciously realize it, patented inventions are all around us. We use cellphones, home appliances, automotive technology and many other things in our daily lives that at some point an inventor had secured a patent for. Patents for an invention grants a property right to the inventor by the government. This is the right to exclude others from making, using, offering for sale, or selling the invention in the country in which the patent is filed. On a larger scale, international treaties provide for patents to be recognized and protected in multiple countries. 3. Introduction Apple v. Samsung 2013 Patents are valuable property and subject to heated litigation to protect these rights. Currently, a patent dispute in federal court in San Jose, California, is ongoing between Apple and Samsung involving technology used for smartphones. In the first of two lawsuits, a jury awarded Cupertino, California-based Apple, $1.05 billion in damages (later lowered to $639.4 million) finding Suwon, South Korea- based Samsung, infringed six of the iPhone makers mobile-device patents. 4. Introduction The protections afforded by a patent are only applicable in the countries that issue the patent. Therefore when registering a patent it is important to consider where to file, the scope of protection offered in that venue, timeframes involved and the costs associated with the filing. 5. US Patent Process Overview USPTO The United States Patent and Trademark Office 6. What is a Patent? A patent is an intellectual property right granted by the Government to an inventor: to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States for a limited time in exchange for public disclosure of the invention when the patent is granted. 7. What is a Patent? The right conferred by the patent grant is, in the language of the statute and of the grant itself, the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO. 8. What is a Patent? A patent for an invention is issued by the United States Patent and Trademark Office. The term of a new patent is generally 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, extensions or adjustments may be available. 9. There are three types of US patents 1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. 2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. 3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. 10. Patent Laws The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads: Congress shall have 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. Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The patent laws underwent a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code. 11. Patent Laws On November 29, 1999, Congress enacted the American Inventors Protection Act of 1999 (AIPA), which further revised the patent laws. See Public Law 106-113, 113 Stat. 1501 (1999). The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents. 12. America Invents Act Leahy-Smith The America Invents Act (AIA) is a United States federal statute that was passed by Congress and was signed into law by President Obama on September 16, 2011. The law represents the most significant change to the U.S. patent system since 1952, and closely resembles previously proposed legislation in the Senate in its previous session (Patent Reform Act of 2009). The Act switches the U.S. patent system from a "first to invent" to a "first inventor to file" system, eliminates interference proceedings, and develops post-grant opposition. Its central provisions went into effect on March 16, 2013. 13. America Invents Act Leahy-Smith The AIA refers to the new regime as "First-Inventor-to-File (FITF)". This new regime operates differently than the "First-to-Invent" (FTI) regime and the various "First-to-File" (FTF) regimes in place in other locations in the world. Different outcomes can occur under each of these three different regimes, depending on whether and how two different inventors publish or file patent applications. 14. America Invents Act Leahy-Smith The law also expands the definition of prior art used in determining patentability. Actions and prior art that bar patentability will include: public use, sales, publications, and other disclosures available to the public anywhere in the world as of the filing date, other than publications by the inventor within one year of filing (inventor's "publication-conditioned grace period"), whether or not a third party also files a patent application. The law also notably expands prior art to include: foreign offers for sale and public uses. 15. America Invents Act Leahy-Smith Applicants that do not publish their inventions prior to filing will receive no grace period. The proceedings at the USPTO for resolving priority contests among near-simultaneous inventors who both file applications for the same invention (Interference proceedings") are repealed, because priority will be determined based on filing date. An administrative proceeding called a derivation proceeding is provided to ensure that the first person to file the application is actually an original inventor and that the application was not derived from another inventor. 16. America Invents Act Leahy-Smith The America Invents Act included the following changes: Tax strategy inventions- Provides that any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art. False marking- Eliminates false marking lawsuits except for ones filed by the U.S. government or filed by a competitor who can prove competitive injury. In addition, marking a product with a patent that formerly covered the product, but has since expired, is no longer a violation. In 2011 the United States Court of Appeals for the Federal Circuit clarified the standards for pleading False Patent Marketing Claims, which had become a source of prolific litigation, by providing a standard that a false patent marking complaint must provide some objective indication to reasonably infer that the defendant was aware that the patent expired. 17. America Invents Act Leahy-Smith The America Invents Act included the following changes: Filing by other than inventor- An entity can file an application on behalf of an inventor who assigned or is under an obligation to assign the invention rights to the entity (or if the entity otherwise has financial interest in the invention), without seeking the inventor's execution of the application. Any patent that issues belongs to the inventor absent a written assignment from the inventor or inventor's estate to the entity. Best mode- While an inventor is still required to set forth the best mode for accomplishing the invention, failure to disclose a best mode is not a basis for invalidating or rendering unenforceable an issued patent. While the law formally retains the best mode requirement, by making insufficient disclosure no longer an allowable defense against patent infringement, the law renders best mode unenforceable. (This has left many patent lawyers wondering why the requirement was kept at all.) 18. America Invents Act Leahy-Smith The America Invents Act included the following changes: Prior user rights defense- If an individual/entity begins using an invention more than a year before a subsequent inventor files for a patent on the same invention, then the user will have the right to continue using the invention in the same way after the subsequent inventor is granted a patent as long as the user did not derive the invention from the subsequent inventor. These prior user rights are limited in scope and transferability, and they also have limited applicability to patents held by universities. 19. America Invents Act Leahy-Smith The America Invents Act included the following changes: Micro-entity- The AIA added a micro-entity status. A micro-entity includes an independent inventor with a previous calendar year gross income of less than 3 times the national median household income who has previously filed no m