RJMorris - Global Product Realization -Sept.26, 20021 Patent Law -- A VERY Brief Introduction by...

RJMorris - Global Product Realization -Sept.26, 2002 1

Patent Law --A VERY Brief Introduction

by Roberta J. Morris, Ph.D., Esq.Adjunct Professor,

University of Michigan Law SchoolMember of the Patent Bar and of the Bars of

New York and Michigan


OUTLINEA.Introduction: Questions concerning your

projectB.What is a patent (concrete)C.What is a patent (abstract)D.Major issues in Patent Law

1.Is [it] valid?2.Is [it] infringed?3.So what? (Remedies)““it” refers to a it” refers to a

specific CLAIM of specific CLAIM of the patent, not “the the patent, not “the patent” itselfpatent” itself


A. THE QUESTIONS IN YOUR MIND

• Can we get a patent?• Can someone else sue us on their

patent?

These questions reflect two basic concepts of patent law: VALIDITY and INFRINGEMENT.

But to understand them, you have to understand what a patent is, and what a patent is not.

For your term project, you may be wondering:


expired

Mar. 30,1999


What is a patent (concrete)A patent can be divided into two parts:

SPECIFICATION and CLAIMSWhat does the patent CLAIM?

The CLAIMS are the special language that defines the legal

significance of the patent, -as to its “validityvalidity” over the

“prior artprior art”, and- as to someone else’s

infringementinfringement of it.

What does the patent teach? Find the

answer in the SPECIFICATION

[no S, please]: {all the talk and the

figures}


In the coffee lid patent, U.S. Patent No. 4,322,015, the SPECIFICATION is the text starting atcolumn 1, line 1 and ending at column 5, line 11. The CLAIMS are the text in column 5, line 12 to the end. There is also a "cover sheet" (the top page).

SPECIFICATION: The part of the patent where the inventor TEACHES you the art of the invention.

CLAIMS: The part of the patent that defines the “metes and bounds” of the invention. The CLAIMS need to be valid. The CLAIMS determine what will infringe.

7RJMorris - Global Product Realization -Sept.26, 2002

why the invention is different from the prior art

claim to "priority"

Drawings - necessary except for chemical inventions

"Pre

ferre

d Embodiment"

another "

term

of art"

8RJMorris - Global Product Realization -Sept.26, 2002

Figure 1

Claim 1


• Filing: $740 for up to 20 claims, of which up to 3 can be Independent

• Issue Fee: $1280• Maintenance: 3.5 years $880; 7.5 years $2020;

11.5 years $3100.There are many other fees if you miss a deadline, or

otherwise need special treatment • Provisional application: $160

These are the fees for anyone whose patent application is ASSIGNED to a big company. Independent inventors, universities, and employees of small businesses pay HALF.

U.S. PATENT FEES (eff. Oct. 1,2001)http://www.uspto.gov/web/offices/ac/qs/ope/1999/fee2001

1001.htm#patfee

What is a patent (concrete):What does it cost?


PATENT FEES (European Patent Office, eff. March 6, 2001) http://www.european-patent-office.org/

The EPO estimated that as of July 1999, the cost of an average EPO patent would be

29800 Euros.http://www.european-patent-office.org/epo/new/kosten_e.pdf

In the EPO, there are fees for examination and translation, as well as filling and grant.

The U.S. is now considering instituting a separate fee for examination, too.


PATENT FEES (KoreanPatent Office, eff. Apr. 9, 2001)

http://www.kipo.go.kr/

[In WONS] • Filing: electronic 29K, paper 39K (up to 20 pages

of specification+drawings)• Examination: 1st claim: 141K, each additional:

32K • Registration (annually): 1st 3 years: 42K/yr +

14K per claim > 3, also per year. Later years are more expensive.


What is a patent - abstract

–A patent has nationality.–A patent is a right to exclude, not a right to do.

–"Patents don't last forever"


Patent laws are territorial: You can not sue in the US

for infringement of a Korean, German or British patent, and vice versa.

Patents have NATIONALITY

I use US law for my examples. The laws I use US law for my examples. The laws of other countries are different, but the of other countries are different, but the basic ideas are much the same world-basic ideas are much the same world-wide.wide.


A patent confers the right to exclude, NOT the right to do

W invents and patents the WHEEL.

B later invents and patents the BICYCLE.

Who can make and sell

BICYCLES?


A patent confers the right to exclude, NOT the right to do

Not W, without a license from B -- or the risk of a lawsuit.

Not B, without a license from W -- or the risk of a lawsuit (unless B wants to sell wheel-less frames to W’s customers).

Who can make and sell BICYCLES?


The Right to Exclude

A patent confers the Right to Exclude -- NOT The Right to Do

so what happens when patents COMPETE?

•Licensing•Retreat - Retool•Lawsuit•FISH STORY [M&A]


How the dilemma may be resolved

OR


“Patents don’t last forever.”

FRONT END: In general, you can notenforce your patent against infringers until the patent ISSUES.

The patent process can take several years:• APPLICATION• EXAMINATION

(office actions [rejections], amendments, appeals)

• ISSUANCEAt every step, you pay the Patent Office a fee.

= SUE! [start a lawsuit]


MIDDLE: Maintenance fees must be paid to the Patent Office to keep the patent in force.

These fees must be paid in every country where you want patent protection.

The fees to the various Patent Offices are only part of the costs. The other part is attorney fees. You will usually hire an attorney during the application process. You may also hire an attorney after the patent issues if you want to license or sue on your patent.



END: Patents expire after a certain amount of time. (Generally, 20 years from date of FILING.)

So, how long DO patents last? Roughly, about 18 years, if • all the fees are paid, and• you have an easy time in the Patent Office (2 years from application to issuance)



• The parts of a patent: the specification and the claims– and the claim chart– The idea of a patent search

• The phrase "prior art"• The concept "person of ordinary

skill in the art "

Concepts and "terms of art"

Major Issues in Patent LawIs it valid? Is it infringed? So

what?


“anticipated” means the CLAIMED invention is found in a SINGLE piece of prior art

Validity – to be valid a claim must be “new” (not ANTICIPATED, and not OBVIOUS) and “useful”

Is it valid? Is it infringed? So what?


If you made a claim chartclaim chart, with each element of the claim on the left side, you could complete the right side by quoting/pointing to something in this single piece of prior artprior art.

What if something is missing in that piece, but you can find it in some other piece?

Answer: then maybe the claimed invention is ‘OBVIOUS.’

Claim Chart – a 2 column chart that permits you to compare the claim of a patent to something else, in a visually informative way.

Prior Art – evidence that the invention, or at least some aspects of it, existed before this inventor’s activities. Actual devices, journal articles, advertisements, manuals, and of course other patents, can all be prior prior artart.


The Claim

1. A container lid ... comprising: - a central portion --adapted to nest within and below the rim of a container and -- rim engaging means

--- around the entire periphery of the lid,

- said rim engaging means being adapted to secure said lid ...

The Prior Art

pretty standard

stuff for a coffee lid

Claim Chart


THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA)

•Does the specification ENABLE the POSITA to make and use the invention? •Are the claims OBVIOUS to the POSITA?

OBVIOUSNESS, as well as other things in patent law, are judged from the point of view of:


What is “prior”?

Anything more than 1 year before your application date

ALSO Anything that is before your invention date.

TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT US PATENT LAW:

The on-sale bar: anything YOU did more than a year before your application date could invalidate your patent.

The duty of candor: you MUST tell the Patent Office what you know about prior art. You don’t have to search, but you have to be honest about what you know, and what you find.


Infringement: get out that old claim chart. Write the claim in the left column. The right hand column will have information about the “accused device.”

If the claim “reads on” the prior art, it is invalidinvalid.

If the claim “reads on” the accused device, it is infringedinfringed.



So what?• “Damages”: no LESS than a “reasonable royalty”

• Opportunity for Multiplying those “damages” by a number up to 3

• Opportunity for having the other side pay your attorney fees

• Prejudgment interest

• Injunctions: preliminary or permanent


If the patent owner violated the duty of candor, for example by knowing it has an “on-sale bar” and not telling the Patent Office, and despite that the patent owner pursues the lawsuit, the court could order it to pay the accused infringer’s attorney fees.


BACK TO YOUR QUESTIONS

Can we get a patent? Who is "we"? And a patent on what?

• the device ?• a "method of doing business" ?• a special component or material ?


• Who is - or should be - "WE" : that is:

Who qualifies as an "inventor"?• Some possible answers

– Everyone on the team– The professors– The person who machines some parts for the

prototype, writes some code for the software, etc. X

wrong

^

CAN WE GET A PATENT?


Who qualifies as an "inventor"?•Forget politics•Never lie to the Patent Office•Different "claims" (different aspects of the invention) may have different inventors


Can we get a patent?

– Why would we want to?• Protect the “exclusivity” we hope to get

(anyway) by being first-to-market• Bargaining chip/defensive strategy• Financing/Venture capital

– What country/countrieses? – How much will it (they) cost?

• Fees to the Patent Office + Fees to attorneys


Can we get a patent?

Answer: Yes, unless there is PRIOR ART that TEACHES the POSITA how to make and use our invention. (If that PRIOR ART is a patent, it will TEACH this in its SPECIFICATION.)

If there is such prior art, then the PRIOR ART will make our CLAIMS unpatentable (=invalid) by making them OBVIOUS or ANTICIPATED.

[The CAPITALIZED words are all “terms of art.”]


Can someone else sue us on their patent?

Answer: NO, unless their CLAIMS “READ ON” our device or method.

If one or more of their patent’s claims do “read on” our device, they may sue us (or offer us a license). If we are sued, it will not help us that

- we did not know they had a patent, or

- we invented the thing ourselves (we did not copy)

INNOCENT INFRINGEMENT IS STILL INNOCENT INFRINGEMENT IS STILL INFRINGEMENT.INFRINGEMENT.


• If we make our product, can someone else sue us for patent infringement?

• How will we know?• WE find their patent• THEY find us

• How can we protect ourselves from aggressive patent owners?– FIRST, get educated

– Then maybe• Get a license• Design Around• Get an opinion of counsel


Thank You.Questions?


Let W(x)

be the operation of determining the worth of x;

and letP=picture F=figureC=Chart G=GraphD=Diagram H=HistogramE=Equation I=illustration

w=wordand let P = C ∪ D ∪ E ∪ F ∪ G ∪ H ∪ Ithen

W(P) ≥ 1000W(w)


A.YOUR QUESTIONS -- Concepts

– SEARCHING FOR PATENTS (US)• number search• word search

– Technology– Assignee

• using the PTO's Classification System (often the best)

– Finding the right class/subclasses» use a patent you know about» word search the index



– "Prior Art"• Patents• Printed Publications

– Books, Theses, Journal Articles, Print Advertisements and Brochures, Websites (even)

• "THINGS" - real objects that are "known or used" [by the public] or "in public use or on sale"

•Your own activities (more than 1 year before your US filing date)




If you offer your product for sale, even if you do not have a working prototype, that COULD “start the clock.”

Patent lawyers speak of the ON SALE bar, but the bar applies to offers, and to publications, preprints, trade show displays, etc.

Other countries do not give you a ONE-YEAR grace period.


B. VALIDITY & INFRINGEMENT

• The ‘duty of candor’•who has it, and what those folks must

do•consequences of violation of this duty

–The WHOLE patent is unenforceable

– The patent owner may be liable for attorney fees of the accused infringer who defeated it



• Validity of the specification– description– 'enablement’– 'best mode’

• Validity of the claims– Use Claim Chart to compare claims to

prior art - “alone or in combination”



Some things we may have left unsaid:• Do you need a working prototype to

apply for a patent? – "Conception" and "Reduction to

Practice"– Why do an 'actual' reduction to

practice?– Why not?

• "Provisional Applications"


B. VALIDITY - patent applications

• Filing Date, and 'Office Actions'

– Unique to the US: 'Interferences' and

the 'first-to-invent' system• Why you must keep lab notebooks• What to do with them, and how often

– Other Countries: OPPOSITIONS

• What the Patent Examiner Will Probably Do: REJECT the CLAIMS


B. VALIDITY - patent applications

• How to respond to a Final Rejection: Amend, Appeal, Abandon– The Three A's and when and why to do

which


B. INFRINGEMENT - protecting patent rights

– Marking (Why does our coffee lid have a patent

number?)

– Writing a Letter• Licensing• Starting the “damages” clock (“They” can’t

plead ignorance)



– Calculating the "TERM" of a Patent [that is, determining when it expires]

• Concepts you need:– EARLIEST and MOST RECENT APPLICATION– "F+20"

» F = filing date of EARLIEST application» 20 = 20 years (to the day)

– "I+17"» I = issue date of patent» 17 = 17 years (to the day)

– WARNING: Calculation assumes that patent owner pays all the MAINTENANCE FEES


Calculating the “term” of a US Patent

No

Which is later?

17 years from date of issue OR

20 years from date of filing of EARLIEST [US, regular] application

Term is I+17 Term is F+20

Patent expires 20 years from date of EARLIEST application

Was the MOST RECENT application on file by 6/8/95?


A.YOUR QUESTIONS -- Concepts [specification and

claims]

PATENTQuestion

OLD Patent NEW Patent

Is the NEW patentvalid over the OLDpatent?

Look at OLD’sspecification

Look at NEW’sclaims

Is the OLD patentinfringed bypeople practicingthe NEW patent?

Look at OLD’sclaims

Look at NEW’sspecification


The two basic LIABILITY issues of patent law: VALIDITY and INFRINGEMENT

VALIDITY: whether the invention - as CLAIMED - is "new." If it is, and if the application meets the other legal requirements, the patent is VALID. Patents are EXAMINED before they are issued (unlike copyrights). They are PRESUMED valid in court, but can be proven invalid.

INFRINGEMENT: whether some UNAUTHORIZED person is using the inventions as CLAIMED.



What is the legal significance of the SPECIFICATION (no “s”) and and of the CLAIMSin connection with VALIDITY?We'll need one more "term of art":

THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA)

•Does the specification ENABLE the POSITA to make and use the invention? •Are the claims OBVIOUS to the POSITA?



– "Prior Art"• Patents• Printed Publications

– Books, Theses, Journal Articles, Print Advertisements and Brochures, Websites (even)

• "THINGS" - real objects that are "known or used" [by the public] or "in public use or on sale"





If you offer your product for sale, even if you do not have a working prototype, that COULD “start the clock.”

Patent lawyers speak of the ON SALE bar, but the bar applies to offers, and to publications, preprints, trade show displays, etc.

Other countries do not give you a ONE-YEAR grace period.



• Validity of the specification– description– 'enablement’– 'best mode’

• Validity of the claims– Use Claim Chart to compare claims to

prior art - “alone or in combination”



• The ‘duty of candor’•who has it, and what those folks must

do•consequences of violation of this duty

–The WHOLE patent is unenforceable

– The patent owner may be liable for attorney fees of the accused infringer who defeated it



Some things we may have left unsaid:• Do you need a working prototype to

apply for a patent? – "Conception" and "Reduction to

Practice"– Why do an 'actual' reduction to

practice?– Why not?

• "Provisional Applications"


B. INFRINGEMENT - protecting patent rights

– Marking (Why does our coffee lid have a patent

number?)

– Writing a Letter• Licensing• Starting the “damages” clock (“They” can’t

plead ignorance)


C. REMEDIES

Now let’s consider what the outcome of a patent infringement lawsuit might be. We may be the patent owner, and we may be the accused infringer in that lawsuit. Or we might even be both!


C. REMEDIES

– Injunctions (shutting down your plant)• If the patent owner asks for a “preliminary

injunction” the accused infringer will face enormous time presssure in mounting a defense

• Whether or not the patent owner obtains a preliminary injunction (one entered before the complete trial on all the facts), the patent owner will very often obtain a “permanent injunction” against any further infringement

– Contempt proceedings (for violating an injunction)


SUMMARY

• You can get a patent, and maybe it is worth doing so.

• It is certainly worth checking whether you are likely to infringe, especially the patents of your big, strong competitors

– In (either) process, you may find some expired or disclaimed patents with good ideas in them.

– It pays to pay attention to patents.

RJMorris - Global Product Realization -Sept.26, 20021 Patent Law -- A VERY Brief Introduction by...

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