Reading and Understanding Patent Documents

Reading and Understanding Patent DocumentsTony [email protected]

What are we going to cover today?

Am I reading a patent or a patent application? Where and what are the patent claims? What do all of these dates mean on the front page of the document? What is a patent and how does it protect me? These questions and more will be answered as experienced patent attorney, Tony Gangemi, from the law firm Murtha Cullina, provides a road map for navigating your way thru patents and patent applications.

Am I reading a patent or a patent application?

Where and what are the patent claims?

What do all of these dates mean on the front page of the document?

What is a patent and how does it protect me?

Road map for navigating your way through patent documents.

And More…

Reading and Understanding Patent Documents


US Patent Law Basics

A Patent is a Bargain between the US government and inventor(s)

On one side of the Bargain, Inventor(s) reveal details of the invention, on the other side of the Bargain, in exchange for receiving the details of an invention, the US government provides inventors or assignees (the patent owner, e.g., a company) the right to

-Exclude others from making, using, selling, offering for sale the invention in the U.S., or importing the invention into the U.S.

-Sue for Patent Infringement of your patent claims (how it protects you)

Patent system is provided for in the Constitution-Art. 1, Sec. 8, Clause 8: “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”

Encourages others to design around current inventions-promotes the progress of science and useful arts, reduces inefficient use of resources spent “reinventing the wheel”-Encourages R&D efforts by giving patentee a competitive advantage for a limited time

Steps to Obtain a US Patent:

1. Patent Application – Highly technical document that includes enough information about your invention so that someone who is an expert in the subject matter (someone “skilled in the art”) can build your invention without undue experimentation (an “enabling disclosure” – cannot add “new matter” later)?

2. Application Submitted to the United States Patent and Trademark Office (“USPTO”)

3. USPTO Search and Examination (“Prosecution”)

4. Grant

Patent Process



What do I mean by patent documents and how can I tell them apart?

PUBLISHED APPLICATIONS

• US• International (PCT)

US UTILITY PATENTS

US DESIGN PATENTS

Common Patent Documents

US DesignPatent Intl. Pub. App

US Pub. App

US Patent

US DesignPatent

US Design Patent• 1 claim – the ornamental design in

the drawings Similar to trade dress protection

• Term is 15 years from grant date• Application does not publish; must

file within 6 months of priority application

Int’l. PublishedApplication

USPublishedApplication

USUtilityPatent

US + 7 digit #

Patent & Application Numbers Summary

Patent # Format

Application # Start With Type of Application

US1234567 01 - 14 US Utility Nonprovisional

n/a 60 or 61 US Provisional

D123456 29 US Design

RE12345 01 - 14 US Utility Nonprovisional Reissue



Basic Road Map

1. Claims2. Abstract3. Drawing4. Independent Claims

again



1. Claims

Where do you find the Claims?

YYY

The invention claimed is or What

is claimed is:

1. Claims

What are the Claims?

What are patent claims?

• The most important part of a patent

• Highly stylized or formalized language that define the scope of protection

The claims define what IP is owned by the inventor or assignee during the duration of the patent, and what she or he has a right to exclude others from in exchange for having disclosed the invention to the public.

Analogy: property metes and bounds in deed.

• Claims define the scope of exclusive rights conveyed by patent grant

• Right is for patentee to exclude others from• Making, using, offering to sell, selling, importing

• Must file lawsuit to enforce

• Grant of claims does not mean that patentee is free to practice invention

• Practice of invention may infringe on other’s rights

More on Scope of Protection

youothers

Tips for Reading Claims

1. Focus on the “Independent Claims”• Do not refer to another claim

1. A bladeless fan assembly for creating an air current, the fan assembly comprising:

• Broadest claims

• What you focus on in an infringement analysis

• If you don’t infringe any independent claims, you don’t infringe any dependent claims

Independent vs. Dependent ClaimsDependent Claims• Refer to an earlier claim, typically in a part of the claim called the

“preamble” (earlier claim is either base claim or intervening claim)

2. The fan assembly as claimed in claim 1,

• Incorporate all limitations of base and any intervening claims i.e., claim 2 = claim 1 + claim 2

• Narrower in scope than base claim

• Why have dependent claims?• Cost – extra fees for >3 independent claims• Claims stand or fall independently in litigation

• Dependent claims provide important back-up protection against invalidity arguments

Scope of Protection

Claim 1

Claim 2 = Claims 1 + 2

Claim 3 =Claims

1 + 2* + 3

Broader

Narrower

Tips for Reading Claims

2. Language

a. “Said” = The

b. “Comprising” = including

c. “Wherein” = and

d. Lookup definition of unfamiliar words in specification

and dictionary, e.g., distal, proximate…

1. A bladeless fan assembly for creating an air current, the fan assembly comprisingincluding:

a nozzle, anda device creating an air flow through the nozzle, the nozzle comprising an

interior passage, formed between a first wall and a second wall, wherein a distal endan end opposite from where it is attached to the assembly of the first wall overlaps a distal endan end opposite from where it is attached to the assembly of the second wall to form, near the distal ends of the first and second walls,

a mouth for receiving the air flow from the interior passage,a tapered region, located downstream from the mouth, andan outlet, located downstream of the tapered region, for releasing the air

flow from the nozzle, wherein a distance between the first wall and the second wall is greater at the mouth than at the outlet, and

a Coanda surfacea curved surface that the air current flows over located adjacent the outlet,

whereinand the first wall is curved proximate to its distal end to direct the air flow over the Coanda surfacea curved surface that the air current flows over, and

whereinand a thickness of the first wall decreases near the distal end, and a thickness of the second wall increases near the distal end.

Independent Claim – Claim 1

2. Abstract and 3. Drawing

2- Abstract (57)

More details – usually describes main

version/model or “embodiment”, BUT, remember - only the

Claims define scope of patent rights

3- Drawing

1. A bladeless fan assembly for creating an air current, the fan assembly comprisingincluding:

a nozzle, anda device creating an air flow through the nozzle, the nozzle comprising an

interior passage, formed between a first wall and a second wall, wherein a distal endan end opposite from where it is attached to the assembly of the first wall overlaps a distal endan end opposite from where it is attached to the assembly of the second wall to form, near the distal ends of the first and second walls,

a mouth for receiving the air flow from the interior passage,a tapered region, located downstream from the mouth, andan outlet, located downstream of the tapered region, for releasing the air

flow from the nozzle, wherein a distance between the first wall and the second wall is greater at the mouth than at the outlet, and

a Coanda surfacea curved surface that the air current flows over located adjacent the outlet,

whereinand the first wall is curved proximate to its distal end to direct the air flow over the Coanda surfacea curved surface that the air current flows over, and

whereinand a thickness of the first wall decreases near the distal end, and a thickness of the second wall increases near the distal end.

4. Independent Claims Again

Patentability assessment: requires review of remaining sections of the patent document to determine if substantive subject matter is disclosed that teaches the invention

Infringement assessment: you likely know enough at this point to do a rough assessment; attorney would first “construe” the claims

Going further: Patentability vs. Infringement

Infringement Analysis:• Do I infringe? • Do they infringe?

Organize Claim Language into a Chart

Claim 1 of US8308445 Present in accused device?

1. A bladeless fan assembly for creating an air current, the fan assembly comprising: a nozzle, and

a device creating an air flow through the nozzle

the nozzle comprising an interior passage

formed between a first wall and a second wall

wherein a distal end of the first wall overlaps a distal end of the second wall to form

near the distal ends of the first and second walls

a mouth for receiving the air flow from the interior passage,

a tapered region, located downstream from the mouth, and

an outlet, located downstream of the tapered region, for releasing the air flow from the nozzle,

wherein a distance between the first wall and the second wall is greater at the mouth than at the outlet, and

a Coanda surface located adjacent the outlet,

wherein the first wall is curved proximate to its distal end to direct the air flow over the Coanda surface, and

wherein a thickness of the first wall decreases near the distal end, and a thickness of the second wall increases near the distal end.

Simple Example of Patent Infringement Analysis

Simple Example, accused device is a mallet:

1. A hammer for striking objects, comprising:

a handle; anda head attached to said handle, said head including a mallet endand a claw end.

Claim:

http://www.toolking.com/shop/view.asp?ID=3970

Patent Infringement Analysis

Example (easy):

1. A hammer for striking objects, comprising:

Present in Accused Device, i.e., Mallet?Claim:

a handle

a head attached to said handlesaid head including a mallet end

and a claw end NO

Yes

Yes

Yes

Yes

http://www.toolking.com/shop/view.asp?ID=3970

Other sections • Title – often overly broad label of invention category• Reference to related applications:

• Priority applications – also on first page, we will discuss later

• Background of the Invention: Describes what others are doing and the problem that the invention solves

• Summary of the Invention: Brief overview of what the claims cover – often the independent claims written in sentence form

• Brief Description of the Drawings: explains drawings

• Detailed Description of the Invention: Describes each drawing in detail; refers to numbers on drawings

• Field of the Invention: Describes the overall area of technology

Other sections - takeaways• Only the claims define the scope of protection or the IP

covered by the patent

• Careful review of the Detailed Description in combination with the drawings is what you might do after you have gone thru steps 1-4 above

• Often, only necessary if you are assessing whether a patent teaches your invention, i.e., is substantively prior art – “patentability review/assessment”



1

23

4

9

8

1

2

3

4

89

.

.

.Foreign Priority Dates

Foreign Publication Dates

US Publication Date

US Filing Date

Grant Date

Legend

Date, dates, and more dates…• Patentability/Validity assessments

i. Prior art? This is only focused on whether reference is prior.

• Patent infringement analysisi. Date of enforcement?

ii. When did damages start accruing?

iii. End date of enforcement? For post expiration enforcement

• Patent term analysis

i. Basic term

ii. PTA & Terminal disclaimer

Patentability/Validity Assessments: Is it prior art?

• Determine “earliest effective filing date”

• Filed date -if no U.S. or foreign priority applications

OR

• Earliest date from U.S. or foreign priority applications

• Generally, if the patent or patent application has an earlier date than the earliest effective filing date, it is prior art and can impact patentability before grant and validity after grant

Sep. 4, 2007

4 8

US Patent Infringement Analysis

• Date of enforcement = date of grant

How dates on patent impact damages:

• Damages begin on date of grant if items are marked with patent number as of that date

• Damages begin earlier if similar claims are in US published application and actual notice of publication is given to infringer

• Date enforcement ends = end of patent term + 6 years

1

23

9

4 8

1

2

3

4

89

.

.



US Publication Date

US Filing Date

Grant Date

Legend

Date of Enforcement

Date of Publication

Patent Term Analysis

Earliest nonprovisional filing date + 20 years*

i. Can be increased by patent term adjustment

due to USPTO delays

ii. Can be decreased by terminal disclaimer – prevents double patenting of same/similar invention

*If filed before 6/8/1995, term is greater of earliest nonprov + 20 years or 17 years from

grant date

1

23

9

4 8

1

2

3

4

89

.

.



US Publication Date

US Filing Date

Grant Date

Legend

Earliest Nonprov Filing

Patent term adjustment

A little more…

Other important information on first page of patent:

• Assignee name (owner of patent)

• Cited references (usually closest prior art)

QUESTIONS?

Tony GangemiMurtha Cullina LLPNew Haven, [email protected]