Sci.Ev. 2006-rjm Week 6 1 Today [Grad Students ONLY] Instant Patent Law Instant Civil Procedure ...

Sci.Ev. 2006-rjm Week 6 1

Today [Grad Students ONLY] Instant Patent Law

Instant Civil Procedure

Looking at real thingsA ComplaintA Patent, especially its claims

Next Week. For class: Re-read Daubert itself and Daubert in patent cases. New assignment: read Daubert on remand.

Housekeeping: Teams?


OUTLINE

A.What is a patent (concrete)

B.What is a patent (abstract)

C.Major issues in Patent Law1.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


- 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.

Researchers Wonder:


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.

Lisa asks:What is the difference in definition and in legal consequences for infringing literally vs. infringing under the doctrine of equivalents?Definition:

Literal=every element found identically.Equivalents=triple identity test(FWR) or insubstantial

differences.Legal Consequences

None. Infringed is infringed. (But, there’s always the other hand: LORE, and subjective feelings of judge and jury, and proof problems, and strategic problems…)


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.

http://www.stanford.edu/~rjmorris/sciev/READINGS/4322015.pdf


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"


Figure 1

Claim 1


• Filing: 300/150• +Search 500/250• +Examination 200/100• +Processing: Provisional 50, Regular 130 (no

small entity break)• Issue Fee: $1400/700• Maintenance: 3.5 years $900; 7.5 years $2300;

11.5 years $3800 (small entities pay half)

U.S. PATENT FEES (eff. Oct. 14,2006)

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

Compare before: one fee of ~800/400

The larger number is for anyone whose patent application is ASSIGNED to a big company. Independent inventors, universities, and employees of small businesses pay the HALF rate.

http://www.uspto.gov/web/offices/ac/qs/ope/fee2006october14.htm




FMI/FYIThe change in examination – eff. 12/8/04

“The President has signed the Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act), for the remainder of Fiscal Year 2005 (H.R. 4818). The Consolidated Appropriations Act also revises patent fees during the remainder of fiscal year 2005 and during fiscal year 2006. Specifically, for the remainder of fiscal year 2005 and for fiscal year 2006, the Consolidated Appropriations Act revises patent fees, including maintenance fees, and provides for a separate patent filing fee, search fee, and examination fee, and requires an additional fee for any patent application whose specification and drawings exceed 100 sheets of paper (application size fee). The new fees are set forth in the below fee schedule.”

Q&A are linked here.

http://www.uspto.gov/web/offices/ac/qs/ope/fee2004dec08.htm



http://www.uspto.gov/web/patents/hr4818/qna.htm


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"





Jeremy asks: Germany doesn't have to respect an American patent, but are there laws on imports of foreign goods that would infringe an American patent if they were manufactured in the US?Answer: Yes. Infringement =MUOSI (used to be MUS)Make, Use, Offer for Sale, Sell, Or Import





Jeremy asks: Germany doesn't have to respect an American patent, but are there laws on imports of foreign goods that would infringe an American patent if they were manufactured in the US?Answer: Yes. Infringement =MUOSI (used to be MUS)Make, Use, Offer for Sale, Sell, Or Import

Alvin’s Answer: A patent is a right granted by the U.S. government to the patentowners to exclude others from making, using, and selling the invention INTHE U.S. or importing the invention INTO THE U.S. If foreign goods aremanufactured in a foreign country, they must comply with U.S. patent lawswhen brought into the U.S. for commercial purposes. If foreign goods aremanufactured in the U.S., undoubtedly they must abide by the U.S. patentlaws.





Alvin asks: A1. [Types of US Patents, p12] I have heard of the terms: "Utilities Patent", "Plant Patent", etc. It seems that there are a few types of US Patents. I would like to know more about them and how patents are different from other IPs, such as Copyrights, etc.Answer: There are 3 types of patent: utility, plant (on asexually reproduced plants), and designs (on the esthetic appearance of a device; but if the appearance has a functional aspect, it can’t be protected by the DESIGN patent…)

Copyright protects {creative} EXPRESSION (not

idea). Patents protect [claimed] inventions.

Trademarks protect identification of origin (sort of).


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

infringement of a Korean, German or British patent, and vice versa.But stay tuned for Microsoft v. AT&T, currently before the Supreme Court…And of course there are wrinkles for things assembled overseas and brought here, or assembled in parts here and sold overseas…


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]








Fernando asks: Slide 18: according to the slides the delay between filing a patent and issuing it can be between 2‑5 years. If you are in cutting edge technology how can you wait for your patent to be issued to enforce it? By the time you enforce it your competitor probably has a dominant position in the market or the technology has changed.

Answer: See next slides regarding pre-issuance recovery.Practical solutions: Write broad claims, so you can

assert infringement against later developments.Even if your competitor has a dominant position (or

because of it) your potential to get an injunction, not to mention damages, might lead to a favorable settlement – or merger …








Fernando asks: Slide 18: according to the slides the delay between filing a patent and issuing it can be between 2‑5 years. If you are in cutting edge technology how can you wait for your patent to be issued to enforce it? By the time you enforce it your competitor probably has a dominant position in the market or the technology has changed.

Answer: See next slides regarding pre-issuance recovery.Practical solutions: Write broad claims, so you can assert infringement against later

developments.Even if your competitor has a dominant position (or because of it) your potential to get an

injunction, not to mention damages, might lead to a favorable settlement – or merger …Chrissy’s Answer”

You are free to market your invention while the patent is pending, so you will still have the "first-to-market" advantage over your competitors. (On Sale Bar does not apply here b/c you have already applied for the patent.) I would also think that in fast moving technology sectors a lot of inventors would apply for provisional patents to establish their ownership as quickly as possible.



Great Minds Dept.Lisa asks: In what ways is your invention protected during the time between the filing date and when the patent is issued?Angela asks: Do you get any legal protection after you have filed the patent application but before the patent issues?

Answer In the old days, not at all. The law passed in 1999 that provided for LAYING OPEN (aka publication) of applications 18 months after filing. This legislation was enacted in order for the US to be in harmony with the rest of the world, changed things. Now if a patent issues with a claim that is substantially similar to an issued claim filing, the owner is entitled to a reasonable royalty (but not lost profits…)

See 35 USC 154(d).


35 usc 154(d)

(d) Provisional Rights.— (1) In general.— In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122 (b), or in the case of an international application filed under the treaty defined in section 351 (a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued— (A) (i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or

(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and

(B) had actual notice of the published patent application and, in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a translation of the international application into the English language.

(2) Right based on substantially identical inventions.— The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.

http://www4.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000154----000-.html




http://www4.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000122----000-.html#b


http://www4.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000351----000-.html#a


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:





Jeremy asks: 2. How can one possibly place constraints on "obviousness," especially at the level of issuing the patent before any kind of suit. Who's making the argument in either direction, and who's making the judgment? Answer: 102: A patent shall be issued UNLESS. Thus the PTO has the BOP (preponderance) to show that the invention is obvious. 282: Once issued, the patent is PRESUMED valid. And so on.It seems to me that virtually every patent of recombinant DNA except the first one is obvious. Same question, but for usefulness. Lots of things that are patented are only useful for doing scientific experiments. So, if I made a random protein sequence, it would be useful for studying the properties of random sequences. Can I patent that?Answer: We can discuss ‘intermediate’ inventions, and inventions of research tools and …





Jeremy asks: 2. How can one possibly place constraints on "obviousness," especially at the level of issuing the patent before any kind of suit. Who's making the argument in either direction, and who's making the judgment? Answer: 102: A patent shall be issued UNLESS. Thus at the application stage, the PTO has the BOP (preponderance) to show that the invention is obvious. 282: Once issued, the patent is PRESUMED valid, and the AI has the BOP (clear & convincing) to show it is NOT valid.It seems to me that virtually every patent of recombinant DNA except the first one is obvious. Same question, but for usefulness. Lots of things that are patented are only useful for doing scientific experiments. So, if I made a random protein sequence, it would be useful for studying the properties of random sequences. Can I patent that?Answer: We can discuss ‘intermediate’ inventions, and inventions of research tools and …

Angela answer: The standard for assessing non-obviousness is made to a person havingordinary skill in the art (PHOSITA). There are three factors to considerwhen deciding whether an invention is obvious or not: the scope and contentof the prior art; differences between the prior art and the claims at issue;and the level of PHOSITA. If a PHOSITA, given the prior art, wouldimmediately see what the person seeking the patent did at the time theinvention was made, then it would fail the non-obvious requirement. Regarding the usefulness requirement, I think it is a relatively rare issuein the Patent Office and a rather minimal obstacle to obtaining a patent. Apatent will not be withheld even if the invention works only in anexperimental setting and has no proven use in the factory. In this case, theutility requirement would be met as long as you could show any specificutility for the protein sequence when the patent is filed. My understandingis that only if an invention has absolutely no practical utility will apatent be denied.





Angela answer: The standard for assessing non-obviousness is made to a person havingordinary skill in the art (PHOSITA). There are three factors to considerwhen deciding whether an invention is obvious or not: the scope and contentof the prior art; differences between the prior art and the claims at issue;and the level of PHOSITA. If a PHOSITA, given the prior art, wouldimmediately see what the person seeking the patent did at the time theinvention was made, then it would fail the non-obvious requirement.

Regarding the usefulness requirement, I think it is a relatively rare issuein the Patent Office and a rather minimal obstacle to obtaining a patent. Apatent will not be withheld even if the invention works only in anexperimental setting and has no proven use in the factory. In this case, theutility requirement would be met as long as you could show any specificutility for the protein sequence when the patent is filed. My understandingis that only if an invention has absolutely no practical utility will apatent be denied.

RJM NOTE: Utility became a big issue in biotech in the 80s-90s (often for the reasons Jeremy alludes to). The PTO issued special directives about UTILITY. (Cite available).


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.








Jeremy asks:3. Can a patent holder invalidate his patent by not being candid about something he knew about that was a _potential_ case of prior art, even if that potential piece of prior art later turns out to be ruled to not be prior art by a court. In other words, can you get in trouble for hiding something regardless of whether that thing turns out to be relevant to your patent?Answer: Yes. It’s a jungle out there. But the law does evolve (and smart people settle…)Issues on “inequitable conduct”: intent and materiality.




ALSO Anything that is before your invention date.TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT US PATENT LAW:



Chrissy asks: 1. Slide 26 - Self-Invalidation What is the logic behind "on-sale bar" invalidating your own patent? Is this a problem for patents coming out of academic labs where a lot information/knowledge is shared with collaborators? What if a patent evolves out of a project that has taken years to complete and has produced multiple papers?


Chrissy asks: 1. Slide 26 - Self-Invalidation What is the logic behind "on-sale bar" invalidating your own patent? Is this a problem for patents coming out of academic labs where a lot information/knowledge is shared with collaborators? What if a patent evolves out of a project that has taken years to complete and has produced multiple papers?

Answer:1. The sin of commercial exploitation (applies to things SOLD as well as papers). 2. The sanctity of the public domain.

Answer:1. File your paper(s) as provisionals….





Angela asks:Can you deliberately not do any search on prior art and simply

claim to the PTO that you are not aware of any prior art when filing a patent? Would the PTO actually check for prior art themselves? Answer:

There is no duty to search but there IS a duty to tell what you know. (Who is “YOU”? See Rule 56). And yes, the PTO does a search, but the examiner may not be as good as the inventors – or, later, the accused infringers.

Why SHOULD you do a search?


Lisa answers:First, many inventors are well aware of other work being done in theirfield and therefore would have a good idea about the prior art even ifthey don't specifically search for it. Second, the examiners at thePTO may search for prior art. Examiners generally work in a narrowfield and so they are often well versed in the prior art in any case.

Angela asks:Can you deliberately not do any search on prior art and simply

claim to the PTO that you are not aware of any prior art when filing a patent? Would the PTO actually check for prior art themselves? Answer:

There is no duty to search but there IS a duty to tell what you know. (Who is “YOU”? See Rule 56). And yes, the PTO does a search, but the examiner may not be as good as the inventors – or, later, the accused infringers.

Why SHOULD you do a search?





Lisa asks:Does the on-sale bar apply only to your own published work andpatents? What if it has taken you several years to develop yourinvention and notebook entries from years back anticipate yourinvention?


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 politicsNever lie to the Patent OfficeDifferent "claims" (different aspects of the invention) may

have different inventors

Chrissy asks: Who does qualify as an inventor? Is there any advantage to listing more/less inventors on your patent?Answer:Invention = conception (as in other areas, sort of, usually)No real harm in listing the wrong people except

- If done with deceptive intent- If there is a subsequent falling out of

love: Each inventor can license the invention without getting the consent of the others (and maybe without owing them a penny??)




Fernando asks: Slide 31: I don't understand it. What has to do who qualifies as an inventor with not lying to the patent office? Who will benefit from putting extrainventors or fake inventors? What is the final answer to the main question of the slide?

Why lie to the patent office? Because inventors DO have certain advantages that non-inventors don’t? Because you and the non-inventor have some other shady deal going? Because?

The fake inventors might benefit from getting a piece of the invention.

Final answer: see previous slide.




Alvin asks:A2. [Inventors and Novelty, p31 and p22] On p31, who DECIDES on inventorship? What if there is a dispute among the possible inventors?On p22, I thought you said on the first day of class (Week 4 for grad students) that a patent does not have to be "new", but it has to be "different". Maybe I misheard you or someone in class.Answer: See above regarding inventorship.Disputes? Contract law! Unjust enrichment! (equitable cause of action).NO, I said it does not have to be BETTER, it just has to be different. It does have to be “new”. NEW means novel (not anticipated: no SINGLE piece of prior art has all the elements) or nonobvious.


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 & INFRINGEMENTSome things we may have left unsaid:

Do you need a working prototype to apply for a patent?




Chrissy asks: If the benchmark for evaluating a patent is whether a POSITA could followthe teachings of the patent, how can it be evaluated if an expert has neverattempted to produce a prototype?

Answer: the POSITA is a myth anyway, so you just mythologize about whether the POSITA could have made the invention. (Cf. ENABLEMENT)

Why would you spend all of this money on a patent if you hadn't worked the bugs out of the prototype?

Answer: Why, indeed? Why the rush, also? The on-sale bar, perhaps, or knowledge of a competitor’s introduction of a new product, one you think may be unpatented…


B. VALIDITY & INFRINGEMENTSome things we may have left unsaid:

Do you need a working prototype to apply for a patent?




Fernando asks: Slide 43: I am confused with the terms "conception" and "reduction to practice". Do we need a working prototype to apply? I think the answer is no, but it is not clear to me from the slide.

Answer: You’re right. You don’t need it to file the application. But the practical question – do you need it if you’re going to bother spending all that time and money getting a patent – may have a different answer!







Lisa asks:If you don't have to physically make the invention to get a patent,how close to being able to do so must you be? What if someone triesto follow your patent to make your invention later on and finds outthat it cannot be made as you specify?Shorthand Answer: ENABLEMENT, and invalidity for lack thereof.








Jeremy’s Answer: I am not certain about this, but I think this turns on whether or not the product is an obviously combination of existing technologies. I can't patent a time machine without a prototype because no one would consider it obvious that my claim of having a good design for a time machine was true. But if I'm just hooking two things together, and it's apparent how they'd function, then I don't need to make a prototype. And then at some later point, I will probably be in a weaker position when trying to argue if I get caught up in litigation than if I had a real device to point to. But I may be someone who just wants to turn a lot of ideas into a defense against being sued by someone else for doing something I need to do, or else maybe I don't want to do any work, but just want to try to make money by patenting lots of ideas and hoping some of them are defensible.








Fernando’s Answer:I believe you don't have to be any close to being able to physically make the

invention in order to patent it. There are companies that specialize inpatenting schemes or devices but they never build the device because it istoo expensive to do so. They just try their ideas in computer simulations.If somebody tries to follow the patent and finds out that it can not be madethen they don't have to worry anymore about patent infringement. The patent can be declared invalid since it doesn't specify enough how to build the idea for a person of ordinary skill in the art.


B. VALIDITY & INFRINGEMENTSome things we may have left unsaid:Do you need a working prototype to apply for a patent?




Alvin asks: A3. [Reduction to Practice, p43] I would like to know more about "Reduction to Practice" and "Provisional Applications". They are, indeed, relevant to me.

Answer: See previous slides regarding RTP. We will probably have talked about provisionals in connection with FEES.


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: OPPOSITIONSWhat 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":





– "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


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)


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)

Angela asks: How is it decided that the patent owner would get an injunction or monetarycompensation for damages?

Answer: The Patent Owner gets to choose (and then gets to prove its entitlement).

Why (not) choose both?


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.


Patents

Lisa’s Patent as guinea pig, beauty contest winner, etc.

https://coursework-j.stanford.edu/coursework/servlet/ShowFile?contentid=437050


Civil Procedure

• Federal v. State Courts

• Federal Court Jurisdiction

– Amount in Controversy

– Personal Jurisdiction (“touching with the magic paper”)

– Federal Question or “DIVERSITY”

• Patent law is a federal question. What cases involving patents might be tried in STATE court, or might require DIVERSITY to be tried in

Federal Court?

• Appellate Jurisdiction

– Final Judgment Rule

– Federal Circuit, rather than regional circuits

Useful site for statutes http://www.megalaw.com

http://www.megalaw.com/


Civil Procedure – The Magic Paper

• The Complaint

• Example: Ampex v. Mitsubishi

http://www.stanford.edu/~rjmorris/sciev/READINGS/ampex_complaint.pdf

http://www.stanford.edu/~rjmorris/sciev/READINGS/ampex_complaint.pdf


Civil Procedure – Final Judgment Rule

Final Judgment Rule – (28 USC 1291) rather than part of FRCivP or FRAppP

Rule 54, FRCivP is a bit circular on this subject

Vocabulary: INTERLOCUTORY APPEAL

PRELIMINARY INJUNCTION (injunction orders are the exception to the FINAL JUDGMENT Rule)

ACCOUNTING (equity’s word for DAMAGES) (permits patent cases to be appealed before damages trial; not true for other civil actions)

http://www.law.cornell.edu/uscode/html/uscode28/usc_sec_28_00001291----000-.html

http://www.law.cornell.edu/rules/frcp/Rule54.htm




Civil Procedure – Final Judgment Rule

Markman Hearing decisions (claim construction) that do not end in a final judgment (why not?) are not appealable by right, and the Federal Circuit routinely refuses to accept interlocutory appeals from Markman Orders.

How practitioners deal with this- concede issues (for purposes of appeal)- ask for preliminary injunction


Civil Procedure

• Federal v. State Courts

• Federal Court Jurisdiction

– Amount in Controversy

– Personal Jurisdiction (“touching with the magic paper”)

– Federal Question or “DIVERSITY”

• Patent law is a federal question. What cases involving patents might be tried in STATE court, or might require DIVERSITY to be tried in

Federal Court?

• Appellate Jurisdiction

– Final Judgment Rule

– Federal Circuit, rather than regional circuits


Next Week

Daubert in the Supreme Court; Daubert in Patent Cases; Daubert on remand (9 Cir.)


Law StudentsEltoukhy, Adam: EE PO San Jose,Cairo Santa Clara UFan, Jason: EE AI BethesdaMD HarvardHuang, Henry: Chem PO Los Alamos HarvardRosas, Ann Marie: ChemE AI Phoenix Ariz.S.U.

Grad StudentsAmat, Fernando EE Barcelona TechU of CataloniaBrown, Chrissy Chem Alexandria,KY UKyBarlian, Alvin ME Jakarta PurdueEngland, Jeremy Phys Durham,NH HarvardPerlson, Lisa (abs 11/15) Chem PlainviewNY BarnardZhang, Angela Immun Beijing Berkeley

Grad Student AuditorsGrad Student AuditorsSchuller, JonSchuller, Jon AppPhyAppPhy ?? ??Antoine, ChristopheAntoine, Christophe EEEE VersaillesVersailles Supelec Supelec Finkelstein, IlyaFinkelstein, Ilya ChemChem San Diego,CASan Diego,CA BerkeleyBerkeley

Now we are 4+6+?


Eltoukhy, Adam: EE PO San Jose,CairoSanta Clara UFan, Jason: EE AI BethesdaMD HarvardAmat, Fernando EE Barcelona TechU of CataloniaAntoine, ChristopheAntoine, Christophe EEEE VersaillesVersailles SupelecSupelecEngland, Jeremy Phys Durham,NH HarvardFinkelstein, IlyaFinkelstein, Ilya ChemChem San Diego,CASan Diego,CA BerkeleyBerkeley

Huang, Henry: Chem PO Los Alamos HarvardRosas, Ann Marie: ChemE AI Phoenix Ariz.S.U.Barlian, Alvin ME Jakarta PurdueBrown, Chrissy Chem Alexandria,KY KentuckyPerlson, Lisa-abs11/15Chem PlainviewNY Barnard Zhang, Angela Immun Beijing Berkeley

Schuller, Jon (Aud) Schuller, Jon (Aud) AppPhysAppPhys

Tentative Groups?


Are there at least 4 grad students who have the time to be in the simulations?

It will be very hard for the law students if there is less than one witness per attorney.

A number other than 4 (more than 4 but less than 8, or less than 4) means finding some creative solutions by early November.

By 11/1 we will have to engrave things in stone in order for everyone to get the most benefit out of doing the simulations.

Tentative Groups?

Sci.Ev. 2006-rjm Week 6 1 Today [Grad Students ONLY] Instant Patent Law Instant Civil Procedure ...

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Transcript of Sci.Ev. 2006-rjm Week 6 1 Today [Grad Students ONLY] Instant Patent Law Instant Civil Procedure ...