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Introduction to Patents
Sean Bedford
February 19, 2018
Note: The contents of this presentation does not constitute legal advice, should not be relied upon as a
substitute for the direct advice of a licensed attorney, and is intended only as an informational overview of
the patent system. The various rules and procedures herein are always subject to change. Please consult
a registered patent practitioner for legal advice regarding any specific inventions or other legal issues.
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Presentation Topics
Types of intellectual property
Identifying patentable inventions
Process for obtaining patents in U.S. & abroad
Patent rights & infringement
Pitfalls & Strategy
Practical considerations
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Types of Intellectual Property
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Types of Intellectual Property:
Trademarks
A symbol, design, or expression that consumers associate with a particular brand or product
E.g., brand names, logos, or other marks
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Types of Intellectual Property:
Copyrights
For original works of authorship fixed in any tangible medium of expression
E.g., books, photos, music
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Types of Intellectual Property:
Trade Secrets
For formulas, processes, designs, etc. that are not publicly known and provide an economic advantage to a business
E.g., formula for Coca-Cola, Google’s search algorithm, criteria for NYT bestseller list
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Types of Intellectual Property:
Patents
Utility Patent – for things that are new and useful (machine, method, composition, etc.)
Design Patent – for purely aesthetic, non-functional designs
Utility Design
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What is a Patent?
A right to exclude others from:
Making,
Using,
Selling,
Offering for sale, or
Importing
For a specific location
U.S. patents only work in the U.S.
protection abroad requires foreign patents
For a limited time
20 years from filing for utility patents in the U.S.
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"Congress shall have the power...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.”
U.S. Constitution
Article 1, Section 8.
Why does the Government grant these rights?
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What can be patented?
How do you get one?
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Requirements for Patentability:
“Any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof”
“Ideas” are not patentable (e.g., an algorithm alone)
Software per se is not patentable, but there are still ways to
protect software implementations via patents
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A patentable invention must be not “obvious”
Legal Question: Would the invention have been
obvious to “a person of ordinary skill in the art” at
the time the invention was made?
Inventions can come in small advances/improvements
Often involve combinations of known elements
Indicators of non-obviousness:
Long-felt but unsolved needs
Prior attempts and failure of others
Prior art teaches away
Commercial success
Predictable combinations are often held obvious and non-
patentable
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Process for Obtaining US Patent:
1. Prior Art Searching & Pre-Filing Evaluation
2. File Provisional Application (optional)
3. File Non-Provisional Application (within 12 months of
provisional)
4. Examination by USPTO to Determine if Invention is Patentable
5. Patent Issues
6. Optional: Can file additional “child” applications before issuance
(e.g., “continuation” or “divisional” applications)
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Provisional Application
Placeholder application
Disclosure of what you know (so far)
No claims required
Never examined, never issued, no rights
Can be relatively cheap
Allows you to claim the benefit of the filing date with a
nonprovisional application filed within 12 months
Great for securing a filing a date and buying yourself one
year to figure out what to do with the invention
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Non-Provisional Application
Full description of the invention (with Figures)
Must enable person of ordinary skill to practice invention
Claims define what you are protecting
Examined by patent office and may issue as an enforceable
patent
Must be filed within 12 months of provisional to claim benefit of
earlier filing date
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Examination of Application by USPTO
Examiner will search for “prior art”
Types of Prior Art
Patents & Published Applications (anywhere)
Any “printed publication” (articles, books, websites)
Public Use / Sale / Offer for Sale
Inventor Actions – sale, use, publication, other public
disclosure more than one year before filing date.
Claims can be amended: Examination is a negotiation with the
USPTO over what rights, if any, you are entitled to.
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Other Aspects of Application Filing
Inventorship
Inventors are those who contributed to the conception of the
claimed invention.
Inventors have common ownership of patent
But… assignments, employment agreements, etc.
Information Disclosure Statements
Must disclose known prior art
Filing and prosecution can be done “pro-se” or by registered
practitioner
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Patent Rights & Infringement
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Porsche invents a new type of convertible…
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Prior Art: Earlier version of the car
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Patent Claims
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Patent Claims
Like a wall – define the “perimeter” of the
property right
Claims define what exactly you can
exclude others from making/using/selling
You are your own “lexicographer.” Words
mean what you say they mean in the
patent specification.
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5. A cabriolet vehicle, comprising:
a body structure formed with a rear lid, left
and right openings formed through the rear
lid,
tensioning bracket holding devices mounted
to the rear lid and defining inner limits of the
respective openings,
tensioning brackets fastened to the respective
tensioning bracket holding devices and
projecting into the respective openings; and
a roof structure having a top with a top
material, the top material having a main
section and left and right lateral rear
elongation sections threaded into openings of
the body structure and attached to the
respective tensioning brackets.
Example Claim
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Example Claim
5. A cabriolet vehicle, comprising:
a body structure formed with a rear lid, left
and right openings formed through the rear
lid,
tensioning bracket holding devices mounted
to the rear lid and defining inner limits of the
respective openings,
tensioning brackets fastened to the respective
tensioning bracket holding devices and
projecting into the respective openings; and
a roof structure having a top with a top
material, the top material having a main
section and left and right lateral rear
elongation sections threaded into openings of
the body structure and attached to the
respective tensioning brackets.
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Example Claim
5. A cabriolet vehicle, comprising:
a body structure formed with a rear lid, left
and right openings formed through the rear
lid,
tensioning bracket holding devices mounted
to the rear lid and defining inner limits of the
respective openings,
tensioning brackets fastened to the respective
tensioning bracket holding devices and
projecting into the respective openings; and
a roof structure having a top with a top
material, the top material having a main
section and left and right lateral rear
elongation sections threaded into openings of
the body structure and attached to the
respective tensioning brackets.
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Patent Infringement
Product must include every limitation of at least one claim.
Limitations can be met “literally” or “equivalently” depending on prosecution history of application.
E.g., are clips “tensioning brackets”? Velcro? Depends.
Product can still infringe open-ended claims, even if it has additional features that are not claimed.
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Infringement Example
Accused Product: Lotus Elise Soft Top
Meet every limitation?
No tensioning brackets
Roof does not have lateral rear elongation sections
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Infringement Example
Accused Product: Porsche Boxster Spyder with Rocket Power.
Meet every limitation?
Yes. Doesn’t matter that this car adds a super awesome
rocket because we used open-ended language in claims
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Remedies for Infringement
Money
Damages “adequate to compensate” for the infringement
Can be tripled in cases of willful infringement
Largest Patent Verdicts:
$2.5 Billion. Merck & Co. v. Gilead Sciences (2016). Hepatitis C
drugs.
$1.7 Billion. Carnegie Mellon University v. Marvell Technologies
(2013). Integrated circuit technology.
$1.05 Billion. Apple v. Samsung (2012). Smartphone technology.
Injunction
Stops infringer from continuing to infringe
More difficult to obtain
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Patent Rights
Patent grants the right to exclude others from:
Making,
Using,
Selling,
Offering for sale, or
Importing
For a limited time (20 yrs. from filing in the U.S.)
For a specific location (e.g., in the U.S.)
Not enforceable until patent issues.
Only the right to exclude others is granted
Does not assure freedom to practice. Product with a patented
feature may still infringe other patents.
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Value of Patent Rights
Enhance Company Value
increase valuation, provide source of revenue, use as collateral to obtain loans
Attract investors
patents make company more attractive to investors; more likely to invest than compete
investors prefer companies with limited or no viable competition
Offensive Utility
Direct Revenue Source: Licensing, Damages (possibly in other markets)
Indirect Revenue Source: Market share, barriers to entry
Defensive Utility
Provides ammunition for counterclaims in litigation
Prevents others from obtaining patent rights that could prevent you from making your product
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Pitfalls, Strategy, & Practical
Considerations
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Important Pitfalls
Any of these things triggers a one-year countdown to file an
application before you forfeit patent rights:
Publication (e.g., advertisement, brochure)
Public use (e.g., display at trade show)
Sale or offer for sale
But… no grace period abroad (e.g., Europe). Doing any
of these things can cause immediate loss of rights
abroad.
First to File Rule:
If two people independently invent the same thing, first
to file has rights to the invention.
Can institute “derivation” proceeding if someone steals
your invention and files themselves.
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Money Professional Prior Art Search & Evaluation: $2,000 - $5,000
USPTO Fees (filing, search, exam; always subject to change)
Attorney’s Fees for Preparing Non-Provisional Patent Application
$10,000 to $35,000 depending on subject matter / complexity / atty rates
Attorney’s Fees for Prosecuting Non-Provisional Application
Very difficult to predict (often same as, or more than, preparing application)
Patent Infringement Law Suits are Extremely Expensive
$500K to $3M (average) in attorneys fees to get through discovery.
$1M to $6M (average) in attorneys fees to get through trial. High profile
cases even more.
Large Entity Small Entity Micro Entity
Provisional $250 $125 $62
Non-Provisional $1,260 $630 $315
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There Are No Guarantees
It is possible your invention is not patentable
USPTO finds prior art you were not aware of
USPTO decides your invention is obvious
If your invention is patentable, it is possible your claims might be
so narrow the resulting patent has minimal value
There is even more uncertainty after the patent issues…
Patents can be invalidated or cancelled in proceedings before
Federal Courts or the USPTO
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Dealing With Investors, VCs, Venture Partners, Etc.
Non-Disclosure Agreements (NDAs) are your friend.
Not everyone will agree to sign an NDA. A patent application can give
you some leverage to prevent others from stealing your idea.
Remember that investors are adverse to you.
Be very careful about assigning over your rights to a patent or patent
application. Always know what you are agreeing to.
Confidentiality & IP agreements:
With customers
With suppliers
With manufacturers
With consultants
With partners
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Tips, Strategies, & Final Thoughts
Early consideration of patentability. Beware of statutory bar actions
and deadlines!!!!
Consider provisional application filing to buy yourself time.
Working prototype is not necessary if invention is fully contemplated.
Keep notebooks and other records reflecting timeline of invention and
inventive progress.
A patent attorney will do a better job than you at preparing and
prosecuting a patent application. If you can afford one, you’re better off.
Attorneys usually bill by the hour. Make it easy for them by doing your
homework and providing detailed information.
Not getting a patent does not mean your company will fail; getting a
patent does not mean your company will succeed.
An inventor with a patent is better off than they would be without
one.
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Questions?
CLT/20010955