Intellectual Property Primer for October 3, 2011 Robert Teel.

Intellectual Property Primer for

October 3, 2011

Robert Teel

What is Intellectual Property (IP)?

©

® ™ Pat. Pending

U.S. Patent No. 6,366,389

Under license

Trade Secrets

Ideas

ExpressionsBrand

Names

• INVENT IT—patents, trade secrets

• CREATE IT—copyright, trade secrets

• USE IT—trademark

• REGISTER IT—patent, copyright, trademarks

• BUY IT

How to Obtain IP

• Not a Trademark:

• Not Trade Dress:

• Not a Trade Secret:

• Not a Copyright or Mask Work:

What a Patent is Not

Mask Work for Intel 4004 chip

What a Patent is

Full public disclosure

Right to exclude(if patentable)

Alternatives to Patents

• No protection at all• Trade secrecy

– Viable if others cannot discern what the invention is or how to recreate it

– Requirements• Value attributable to secrecy• Reasonable precautions to safeguard the secret(s)

• Considerations– Is secrecy possible?– Low level of innovation?– Ephemeral market?– Money spent better in other ways?– Can desired exclusivity be obtained another way?

Types of PatentsUtility (or “Patent”) Design

Plant

Another “Type?” Provisional Pat. Apps.• A One-year placeholder

– Allows you to file a non-provisional application within 1 year

– Expires in one year (does not mature into a patent itself)

• Requirements– No special format required– No claim required– But, it must adequately describe the invention as

claimed later in the follow-on non-provisional• Danger: Disclosure turns out to be inadequate

– Lack of thought about how to claim the invention– Ignorance of the prior art

• Disadvantage: Delay grant of patent

The Patent Process

I. InventII. Prepare a patent applicationIII. File a patent application at USPTOIV. Wait (2–5 years)

– Application will publish in about 18 mos. (usually)

V. Negotiate patentability of claims with patent examiner– Examiner makes rejections– Overcome rejections by amendment and/or

argument

VI. Patent will issue if successful

I. Invent: Identifying Your Inventions

• Your invention ≠ your product (usually)• Focus on product features

– “Sales points”• Focus on problems solved

– Each solution might be a patentable invention• Not purely in terms of advantages

II. Prep: Working with a Patent Attorney1. Client and/or inventor identify candidate inventions2. Inventors write descriptions of inventions3. Client screens inventions4. Attorney interviews inventor5. Search prior art6. Attorney drafts sample claim(s)7. Attorney & client discuss sample claim(s)8. Client decides if worth pursuing9. Attorney drafts specification and full claim set10. All inventors review draft11. Revise draft as necessary12. File application when complete

III. File: Parts of a Utility Patent• Examples: google.com/patents• Front page• Drawings• Specification

– Background– Summary– List of Drawings– Detailed Description of Embodiments

• Claims– Meaning of claims depends on specification – Meaning of claims also depends on prosecution

history

IV. Wait• Backlog

V. Negotiate: Patentability Reqs.• Eligible Subject Matter• Timeliness • Novelty• Nonobviousness• Clarity• Adequate disclosure in specification

– Describe what the invention is– Describe how to make it– Describe how to use it– Describe inventor’s favorite form of it– Written for PHOSITA

VI. Issuance: Allowance Rate

So What Can You do with a Patent?• Exclude competitors from making, using, or

selling– Protect or gain market share– Force competitors to offer inferior products

• Defensive posturing– Deters others from suing you for infringement – Cross-license to protect your freedom to operate

• Revenue generation– License your patent to others– Sell them for cash (Assignments!)– Use as collateral for loan

• Gain credibility with VCs

How: What it Means to Infringe• Only claims are infringed or not infringed• Infringement of any one claim is enough• Infringement requires that the infringing

device/process has/performs every claim limitation– Absence of one limitation No infringement– Difference from claim language in any way No

infringement (usually)

• A good patent is imperative!

What Makes a Good Patent• Good Claims

– Variety of different types– Rich sets of dependent claims– No unnecessary limitations or words– Covers the inventive concept as broadly and

generically as the prior art allows– Infringement can be detected and proven– Infringed by desired target infringer by itself

• Good Specification– Supports full breadth of claims– Does not imply limiting meanings to claim terms– No gaps in explanation

• Good Prosecution– Does not distort or unduly limit meaning of the

claims

What Makes a Bad Patent• Bad Claims

– Few in number and type– Few meaningful dependent claims– Unnecessary limitations or words– Infringement difficult to detect or prove– Infringement requires combination of multiple things/actors

together• Bad Specification

– Describes few embodiments (maybe only one)– Uses patent profanity (e.g., describes embodiments as “the

invention”; “must”; “essential”; “critical”; “key”; “necessarily”)

– Implies limiting meanings to claim terms– Makes admissions about the prior art

• Bad Prosecution– Distorts or unduly limits meaning of the claims

Prior Art

Invention

Claim for a Round Inflatable Ball

A ball comprising:

a covering configured to expand to a round shape;

a bladder positioned within the covering and configured to retain air when inflated; and

a valve extending from the bladder through the covering.

Claim Scope

XX

Proper Drafting

Prior Art

Invention

Soccer Ball Claim

A ball comprising:

a covering configured to expand and comprising a plurality of hexagon and pentagon shaped components;

a bladder positioned within the covering and configured to retain air when inflated; and

a valve extending from the bladder through the covering.

Claim Scope

XXXX X

Avoiding the Prior Art

Prior Art

Invention

Claim for a Football A ball comprising:

a covering, wherein the covering is expandable to an ellipsoidal shape;

a bladder positioned within the covering and configured to retain air when inflated; and

a valve extending from the bladder through the covering.

Claim Scope

Dependent Claim “wherein the covering has a linearridge adapted for finger placement”

XXXX X

Poor Drafting

Claim Types

• Tangible Things– Machine– Article of manufacture– Composition of matter

• Process• Computer Readable Medium• Independent vs. Dependent

– Dependent claims• Can help broaden independent claim• Provide fall-back position

Foreign Patenting• Timeliness and Novelty requirements are

different!– No one-year grace period for your own public

disclosure– Novelty measured from date of filing, not date of

invention• Can do within one year of U.S. filing

– If you filed a provisional in U.S., that starts the 1-year clock

• Two options– Direct filing in countries of interest ($$$ × N)– Patent Cooperation Treaty (PCT)

• File one international application within the 1-yr. date ($)

• Receive preliminary search and patentability report• File “national stage” applications in countries of

interest within 18 mos. of PCT filing• Excellent way to defer costs and reserve options• Not Taiwan, Argentina, Chile (and others)

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Robert TeelAssociatePortland, OR(503) 294-9463 [email protected]

900 SW Fifth Ave., Suite 2600Portland, OR 97204

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