Transcript
Patents Are Business Tools
May 14, 2010
David A. Jones
Patents Are Business ToolsTopics:• GOALS• RISK MANAGEMENT• DEVELOPING A PATENT PROGRAM• PATENT PROCUREMENT OVERVIEW
Disclaimer: Many complicated legal issues are summarized herein in order to briefly present some fundamental strategies and principles. Moreover, many statements are fact specific. Therefore, consult your legal counsel with specific facts before assuming that any information herein is advisable in any particular case.
Business IP Goals• Protect IQ Biolabs’s Products, Services, and
Income• Generate Income by Assigning (Selling) or
Licensing (Renting) Patent Rights to Others• Protect Research and Development
Investments• Obtain a Legitimate Monopoly for Future
Exploitation• Create Bargaining Assets
Risk Management• Avoid Infringement of Patents of Others
a. Clearance Search for Products
b. Design/Invent Around a Competitor’s Patent
c. Avoid Treble Damagesi. Opinion of Non-Infringement
ii. Opinion of Invalidity
d. Invalidate Patents by Re-Examination
Risk Management - continued
a. Title Search
b. Title Opinion
c. Validity and Patentability Opinions
d. Scope of Patents and IP Audits
e. Infringement Opinions
f. Broadening of Patents?
g. Disclosure
h. Engineering Tests
i. Liens
j. Confidentiality Program
k. Enforcement
l. Revenue Enhancement
• Perform Due Diligence in Conjunction with Acquisitions
Risk Management - continued• Ensure that Title to New Developments is
Secured with IQ Biolabsa. Confidential Disclosure Agreements/NDAsb. Executed and Recorded Assignments Upon Filing of
Applicationsc. Agreements with Contractors, Consultants, Suppliers,
and third-party business associatesd. Agreements Divesting Any Part of the Businesse. Agreements Regarding Financing, Joint Ventures,
Settlementsf. Transferability
Risk Management - continued• Establish a Licensing Program
a. Obtain License for Technology Patentedby Others
b. Generate Income by Licensing IQ Biolabs Patented Technology
• Establish an Enforcement Program (Future)a. Monitor Market
b. Challenge Infringing Products and Services
c. Exclude Competitors
d. Negotiation/Litigation
Developing A Patent Program• Establish a Confidentiality Program
a. Signed confidentiality and non-competition agreements with all employees
b. Exit interviews with all departing employees reminding them of their post-employment confidentiality obligations
c. Review of all publications and speeches by company personnel before such presentations and speeches are made public
Developing A Patent Program - continued
• Establish a Confidentiality Program – continued
d. Use of dated laboratory books or research notes by all company technical personnel
e. Labeling of all trade secret documents as “confidential.” Use of measures, such as paper shredders, encryption, and passwords, to protect confidential information
Developing A Patent Program - continued
• Obtain Disclosure of Inventionsa. Solicitation of Inventions
i. Scheduled Invention Disclosure Meetings with Technical People
1. Once a Month
2. Prior to Product Launch
ii. Patent Disclosure Form
iii. Incentives
b. Retention Policy of Invention Records
• Review Disclosed Inventionsa. Establish a Review Board –Technical and
Business People
b. Classify Ideas Based on Business Objectivesi. Important Patents to Company
ii. Important Patents to Competitors
iii. Product Coverage vs. Defensive Patents
iv. Abandoned Technology
c. Patentability Searchingi. Prior Art Database
Developing A Patent Program - continued
Developing A Patent Program - continued
• Determine in Which Foreign Jurisdictions to File Counterpart Patent Applicationsa. What Foreign Jurisdictions (if any) Will the
Product be Marketed or Manufactured?i. Specific Countries
ii. PCT (non-contracting countries)
Developing A Patent Program - continued
• Monitor the Patent activities of othersa. Includes US and Foreign Competitors
b. Identify Technologies of Interest to Competitors
Developing A Patent Program - continued
• Other IPa. Trademarks
b. Trade Secrets
c. Copyrights
U.S. Patent Rights• Right to EXCLUDE others from
a. Making
b. Importing
c. Using
d. Selling
the “invention”
U.S. Patent Rights• Limited to United States of America, its
possessions and territories.• Limited Duration
a. 20 years from the earliest effective filing date
• Does NOT guarantee patentee will be able to practice her or his own invention.
• Enforcement is Not Automatic• Public Policy
i. Full Disclosure of Technologyii. Dedicated to Public After Expiration
Anatomy of a Patent• Bibliographic Section
a. Issue Dateb. Filing Datec. Related Patentsd. Inventorse. Assignee of Patent
Rightsf. Prior Art Considered by
the Patent Examinerg. Abstract of the Invention
Anatomy of a Patent• Background Section
a. Overview of prior art
b. Problems Addressed by Patent
• Summary of the Inventiona. “Executive Summary”
• Detailed Description of Embodiments of the Invention
i. Drawings
ii. Written Description
Anatomy of a Patent• Patent Claims
a. Numbered paragraphs at the end of the specification
b. Define the scope of protection afforded by the patent
c. Objective is to obtain the “broadest” claims possible in light of the prior art
What Can be Patented?(Patentable Subject Matter -- 35 U.S.C. § 101)
• Any NEW and USEFULa. Process
b. Machine
c. Manufacture
d. Composition of Matter
• Any new and useful improvement thereof
Patentable Subject Matter35 U.S.C. § 101
• Computer Softwarea. Specific type of “process” (i.e., computer
implemented process)
• Business Methoda. Provided it produces a “concrete, tangible and
useful result”
Standards for Patentability 35 U.S.C. §§ 102 and 103
• Novelty• Non-obvious
Novelty 35 U.S.C. § 102(a)
A person shall be entitled to a patent unless . . . the invention was
i. known or used by others in this country
ii. patented or described in a printed publication in this or a foreign country
prior to the invention thereof by the applicant.
U.S. Patent System based on “First-to-Invent”
• Section 102(a) focuses on date of invention• Invention – requires completion of two steps:
a. Conceptionb. Reduction to Practice
i. Actual Reduction to Practiceii. Constructive Reduction to Practice
1. Filing a Patent Application
• Diligencea. First to Conceiveb. Last to Reduce to Practice
• Priority Contesta. Proof of Earliest Possible Invention Dateb. Importance of Good Record Keeping
Novelty 35 U.S.C. § 102(b)
A person shall be entitled to a patent unless . . . the invention was
i. patented or described in a printed publication in this or a foreign country; or
ii. in public use or on sale in this country
more than one year prior to the date of application for patent in the United States.
Section 102(b)First Public Use, Disclosure, Sale or Offer for Sale
6/6/01
6/5/02Statutory Bar Date/Deadline
One Year Grace Period
to file U.S. patent
application
Section 102(b) Scenarios• Public Disclosures
a. Trade Shows
b. Beta Tests
• Publication in Trade Literaturea. by Client, Inc.
b. by Competitor
• Sale or Offer for Sale
Novelty• Determination made by Patent Examiner• Evaluation is based on the patent claims• Claim is rejected if Examiner finds a single
prior art reference (e.g., patent, printed publication, etc.) that discloses every element of the claim
• Applicant can amend claims to overcome rejection
Non-obviousness• Examiner can rely upon two or more prior art
references to reject a claim as “obvious”• There must be some teaching/suggestion in
the prior art references that would provide the motivation to combine them
• Evaluation is through the eyes of one having “ordinary skill in the art”
• Applicant can amend claims, and/or offer arguments to overcome rejection
Adequate Disclosure• “Written Description”
a. The patent specification must contain a full description of the invention that is claimed in the claims.i. Drawings
ii. Detailed description of the technology shown in the drawings
Adequate Disclosure - continued
• “Enablement”a. The patent specification must teach one skilled
in the art to make and use the invention
b. TEST: whether one skilled in the art could make or use the claimed invention from the specification along with information known in the art without undue experimentation
Adequate Disclosure - continued
• Disclosure of “Best Mode”a. The specification must describe the best
mode, contemplated by the inventor at the time of filing, for carrying out the invention
• Do Not Withhold Information as a “Trade Secret”
Patent Application Process• Identify Inventions
a. Patent Review Board
b. Prior Art Search
• Prepare Written Invention Disclosurea. Assists in evaluating whether patent should
be pursued
b. Assists in conducting a prior art search
c. Assists in preparing the patent applicationi. Drawings, technical information, literature, documentation
(disclosure requirements)
ii. Educates patent attorney
Invention Disclosure Form• Descriptive Title of Invention• List of Inventors• List of Important Invention Dates and Events• Technological Background of the Invention
a. Problems to be solved
b. Prior attempts of others
• Description of the Invention• Related Products and Strategic Value• Signatures of the Inventors and Witnesses
Patent Application Process - continued
• Invention Disclosure Meeting With Attorneya. Additional technical information, documentation
• Prepare Draft of Patent Applicationa. Review processb. Confirm inventorship
• File Application with USPTOa. “Patent Pending” status
• Prosecution of Application at the USPTOa. Assigned to Patent Examinerb. Examiner conducts search of prior artc. Office Actions issued regarding patentability of invention
(typical 16-18 months)i. Claim rejections typical
Patent Application Process - continued
• Respond to Office Action Rejections/Objectionsa. Amend Claims
b. Legal/Technical arguments
c. Personal hearing before Examiner(s)
• Patent Approvala. Notice of Allowance
b. Improvements/Proper claim coverage?i. Continuation applications advisable
c. Payment of Issue Fee
d. Publication of Patenti. Patent Marking on corresponding products
Patent Application Process - continued
• “Duty of Candor”• Ongoing Duty to Disclose Known Relevant Prior Art
to the USPTOa. Any person (attorneys, inventors etc.) involved in process
of preparing and prosecuting application must disclose existence of any relevant prior art (patents, publications, sales, public uses, etc.) that is known to the person
b. An active search of the prior art is not required
U.S. vs. Foreign Patent Systems
U.S. Patent System• First-to-Invent
a. Importance of Good Record Keeping
• One Year Grace Period to file application
U.S. vs. Foreign Patent Systems
U.S. Patent System• First-to-Invent
a. Importance of Good Record Keeping
• One Year Grace Period to file application
Foreign Patent Systems• First-to-File
a. Importance of Early Filing Date
• Absolute Novelty -- NO Grace Period for filing patent application
Paris Convention• File application in “home” country• File corresponding foreign applications in other
Paris Convention member countries within 12 months after filing date of home country applicationa. Corresponding foreign applications deemed to have
been filed as of the date of the filing date of the “home” country application
b. Effective Filing Date of Foreign Applications = Actual Filing Date of “Home” Application
Paris ConventionFiling Date of Home Country Application6/6/01
6/5/02Paris Convention Filing Deadline
One Year Grace Period to file foreign
applications
Paris Convention -- Example 11/1/9
8
A invents in US and files US application (same day)
Paris Convention -- Example 11/1/9
8
7/1/98
A invents in US and files US application (same day)
B invents and files application in Germany
Paris Convention -- Example 11/1/9
8
7/1/98
A invents in US and files US application (same day)
B invents and files application in Germany
12/31/98
A files German application, claiming benefit of US filing date
Paris Convention -- Example 11/1/9
8
7/1/98
A invents in US and files US application (same day)
B invents and files application in Germany
12/31/98
A files German application, claiming benefit of US filing date
6/31/99
B files US application, claiming benefit of German filing date
Paris Convention -- Example 21/1/9
8A invents in US
Paris Convention -- Example 21/1/9
8
7/1/98
A invents in US
B invents and files application in Germany
Paris Convention -- Example 21/1/9
8
7/1/98
A invents in US
B invents and files application in Germany
8/1/98
A files US application
Paris Convention -- Example 21/1/9
8
7/1/98
A invents in US
B invents and files application in Germany
6/31/99
B files US application, claiming benefit of German filing date
8/1/98
A files US application
Paris Convention -- Example 21/1/9
8
7/1/98
A invents in US
B invents and files application in Germany
7/31/99A filed German application, claiming benefit of US filing date
6/31/99
B files US application, claiming benefit of German filing date
8/1/98
A files US application
Paris Convention -- Example 31/1/9
8A invents in US
Paris Convention -- Example 31/1/9
8
7/1/98
A invents in US
B invents and publishes details of invention via the internet (same day)
Paris Convention -- Example 31/1/9
8
7/1/98
A invents in US
B invents and publishes details of invention via the internet (same day)
8/1/98
A files US application
Paris Convention -- Example 31/1/9
8
7/1/98
A invents in US
B invents and publishes details of invention via the internet (same day)
7/31/99A files German application, claiming benefit of US filing date
8/1/98
A files US application
Recap – Preserve Your Right to Obtain a Patent
• Preserve Evidence of: a. Earliest Possible Invention Dates
i. Conception
ii. Reduction to Practice
b. Diligence
Recap – Preserve Your Right to Obtain a Patent
• Early U.S. Filing Datea. Initiate application process early
Recap – Preserve Your Right to Obtain a Patent
• Anticipate Potential Statutory Barsa. Trade Shows
b. Scholarly Publications
c. Large Sale Beta Tests
d. Anticipated Sales or Offers for Sale
Recap – Preserve Your Right to Obtain a Patent
• Use Confidentiality Agreements
Recap – Preserve Your Right to Obtain a Patent
• Watch for Publication or other Public Disclosures by Competitors
Recap – Preserve Your Right to Obtain a Patent
• One Year Grace Period in U.S.a. Not applicable in most foreign countries
b. File U.S. application prior to any disclosure to preserve opportunity to file foreign applications later
Documenting Your Inventions• Classic Example – Lab Notebooks
a. Bound
b. Written in Ink
c. Religiously Dated
d. Periodically reviewed and witnessed
• Electronic Lab Notebooka. “Save As”
b. Periodically produce hard copies, which are reviewed, dated and signed by witnesses, and systematically stored
c. Periodic Electronic Backup
Patent Claims• Patent Claims
a. Like property description in a Deedi. Described “metes and bounds” of the invention -- what
you claim as your exclusive property
Patent Claims• Claims drafted in “comprising” format are
“open-ended”
Patent Claims• Claims drafted in “comprising” format are
“open-ended”
Claimed Invention
A widget comprising:
Element A;
Element B; and
Element C.
Patent Claims• Patentability vs. Infringement
a. Claims must distinguish over the prior art (Sections 102 and 103)
Patent Claims• Patentability vs. Infringement
a. Claims must distinguish over the prior art (Sections 102 and 103)
Prior Art
A widget comprising:
Element A; and
Element B.
Claimed Invention
A widget comprising:
Element A;
Element B; and
Element C.
Patent Claims• Patentability vs. Infringement
a. Claims must distinguish over the prior art (Sections 102 and 103)
b. However, unnecessary limitations limit scope of claim for infringement purposes
Patent Claims• Unnecessary limitations limit scope of
claim for infringement purposes
Claimed Invention
A widget comprising:
Element A;
Element B; and
Element C.
Patent Claims• Unnecessary limitations limit scope of claim
for infringement purposesa. Think in terms of the “least common denominator”
Patent Claims• Unnecessary limitations limit scope of claim
for infringement purposesa. Think in terms of the “least common denominator”
b. “Less is More”
Patent Claims• Unnecessary limitations limit scope of claim
for infringement purposesa. Think in terms of the “least common denominator”
b. “Less is More”
c. But, remember, you still have to distinguish over the prior art to get the claim allowed in the first instance
Claim Drafting Example
Invention
Claim Drafting Example
1. A chair comprising:
a generally flat seat member; and
means for supporting said seat member in a generally horizontal fashion so that a person may be seated thereon.
Invention
First Office Action
1. A chair comprising:
a generally flat seat member; and
means for supporting said seat member in a generally horizontal fashion so that a person may be seated thereon.
Cited Prior Art
Response to First Office Action
Cited Prior ArtInvention
Response to First Office Action
1a. (Amended) A chair comprising:
a generally flat, polygonally shaped seat member; and
[means for supporting] a vertical post attached at each corner of the polygonally shaped seat member so as to support said seat member in a generally horizontal fashion so that a person may be seated thereon.
Cited Prior ArtInvention
Response to First Office Action
1b. (Amended) A chair comprising:
a generally flat seat member; [and]
means for supporting said seat member in a generally horizontal fashion so that a person may be seated thereon; and
means for providing a back rest attached to said seat member.
Cited Prior Art
Invention
Infringement Analysis
Accused Device
Infringement Analysis – Claim 1a1a. A chair comprising:
a generally flat, polygonally shaped seat member; and
a vertical post attached at each corner of the polygonally shaped seat member so as to support said seat member in a generally horizontal fashion so that a person may be seated thereon.
Accused Device
Infringement Analysis – Claim 1b1b. A chair comprising:
a generally flat seat member;
means for supporting said seat member in a generally horizontal fashion so that a person may be seated thereon; and
means for providing a back rest attached to said seat member.
Accused Device
How Important is Claim Scope?
1a. A chair comprising:
a generally flat, polygonally shaped seat member; and
a vertical post attached at each corner of the polygonally shaped seat member so as to support said seat member in a generally horizontal fashion so that a person may be seated thereon.
How Important is Claim Scope?
1b. A chair comprising:
a generally flat seat member;
means for supporting said seat member in a generally horizontal fashion so that a person may be seated thereon; and
means for providing a back rest attached to said seat member.
Corporate IP Protection• Record Keeping
a. Guidelines for memorializing R&D work
• Invention Submissions/Disclosuresa. Invention Disclosure Form
• Periodic Review of Invention Submissions• Preparation of Patent Application
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