Basic concepts and definitions Flashcards
What is innovation?
Innovation is the fuel for wealth.
What is a patent?
A patent is the reward for innovation. A strong patent policy fuels innovation.
What does a patent give?
The opportunity to have priority over an invention (exclusivity). That is, the right to exclude or allow others from making, using, selling, offering for sale or importing the claimed invention, thereby gaining economic advantage. Nevertheless, it does not grant the assignee or 3rd party to which the rights have been transferred the right to make, use or sell the invention.
In patents, how is the property holder called?
The “patent asignee”.
What can a patent asignee do with the patent?
- Lease some or all of the stake of the claimed invention.
- The intellectual property space may be sold to another party.
- The patent asignee might want to occupy it.
What are the requirements for patentability?
UNN-WEB: Utility, novelty, non-obviousness, written description, enablement, and best mode
What does novelty mean as a patentability criteria?
That the invention is sufficiently different from what has been disclosed in earlier patents, papers, etc.
What are the assignee’s options if practicing the patent might infringe claims of another patent?
1) Find a way to practice the patent that avoid the rights claimed in the other patent;
2) Approach the other patent assignee and propose to license specific rights;
3) Disregard it, if he thinks that specific claims in the prior art patent that could affect his freedom to operate are questionable regarding their validity, and get the patent invalidated if a court case is raised.
What is freedom to operate?
It is a shield, as in it defends the assignee wanting to operate the invention from charges of infringement.
It is a sword, as in it allows the assignee to exclude others from the claimed space of his patent.
What is a Markush claim?
It is a generic claim that covers a genus of compounds. The scope is defined by the core structure and variables. Any particular compound within the Markush genus is called a specie.
What is infringement under the doctrine of equivalents?
Using a chemical “performing substantially the same function, in substantially the same way, to achieve substantially the same result”.
How to act when relevant prior act is uncovered?
A) Design a process that does not infringe said patent, or
B) Seek a license from the prior patent holder, or
C) Buy the compound from the patent holder or from other party holding the license to make and sell the compound, or
D) Question the validity of the patent.
What is a “double selection” patent?
It is a patent for an assignee B for a compound that maybe was already covered in another patent (assignee A), but in a novel, non-obvious, useful way; for example, for a new use in combination with another compound. Company B has no freedom to operate due to exclusion from dominant prior art patent A. Assignee A is also excluded from using the compound in the specific combination and way covered in patent B. Thus, BOTH parties are blocked from commercializing a portion or all claimed inventions.
What is the difference between assignment and licensing?
Licensing does not transfer the entirety of the ownership interest; only a limited part of that interest.
Assignment of a patent right is the transfer of the entire ownership interest, for example, through selling the selection patent.
What is the challenge for getting a patent?
Whether the invention meets the criteria for patentability (UNN).
