IP pre-midterm Flashcards
Utility Patents
- About 12 million so far.
- 90% of documents sent to USPTO in recent years were utility.
- Cost $5k to >$15k.
- Includes lawyer, filing, search, examination, maintenance fees.
- Can be cut down if you write it yourself.
- Almost every single one is rejected at first.
- Most have no proof of requirement.
- Last for period of up to 20 years from date of application filing.
- Subject to payment of maintenance fees.
Types
-
Process/Method
- Remote control system
- Door sanitization system
- Surgical, business method
- but only on tech invention associated with it, not the idea itself (ex: new suture pattern method - NO, new nylon suture material - YES)
-
Machine
- Ex: Steam engines, sewing machines
-
Composition of matter
- Newly synthesized molecule / alloy
- Or, new use for known material
- Material conventionally used as a structural material, used as a dielectric material in an electronic device, may be patentable.
-
Manufacture
- Ex: Ceramics, shoes, shovels
- Or a new and useful improvement thereof
Provisional Patents
- “Provisional application for patent”
- $500-$1500
- Much cheaper than full utility patents
- 1-5 pages
- Gives time before finite details
- USPTO files right away without looking usually unless challenged or claims aren’t written properly.
- Not worth much for legitimacy
- But, can be used to go to investors
- 12 month pendency from date of application
- Cannot be extended
- Corresponding non-provisional application for patent must be filed during the 12 months in order to benefit from provisional.
- Must contain specific reference to provisional.
Design Patents
New, original, and ornamental design
for an article of manufacture.
- 1000-2000
- Owner can exclude others from make/use/sell design for up to 14 years from date it was granted.
- No maintenance fees.
- Can be valuable if it is the identification method that makes people recognize something as well known
- Ex: Apple, Lamborghini, Rolex
What do inventors and the government get out of patents?
Inventors (+)
- Everything - total monopoly.
- Usually pay in increments until sure it will be worth the investment to go for 20 years.
Government (+/-)
- Provides incentive for patents because they lead to companies, jobs, and new technologies that stimulate economy.
- But, if inventors are given a monopoly then the government can’t enforce universal access like they did with the radio, or would with health advancements.
Patent Costs
- Provisional: $500-$1500 including lawyer fees.
- Utility: $5k-$15k
- Maintenance fees over 20 years.
- Design: cheaper than utility.
- No maintenance fees over 14 years.
- Plant patent: no maintenance fees.
- Small businesses (<500) pay 50% of fee for first few
- One-person “micro” inventor pays 25% of filing fee
- Trade secret is free
- Copyright and trademark cost few hundred
- If you’re an inventor working with/for an owner/assignee they pay legal fees and give you 30% of profits
- BU will make sure whatever they patent is being developed further, technology transfer department.
- In class, not paid, you own what you come up with.
- Cost is same in all countries, but new patents required for each country so this cost accumulates
- Most patents do not make money.
Why would the government want people to get patents?
- Accelerate economic growth
- Lead to companies and jobs
- Sharing details of inventions through patents allows for lateral improvements in those fields
- If you’re growing a new country you can incentivize more by cutting cost / free patents
Downside of patents
- Monopoly for inventors
- Could keep live-saving inventions from the public
USPTO
- 7000 examiners (BS/MS/PhD/Lawyers)
- Patent costs go towards paying examiners
- Only government agency fully funded (profiting) on its own
George Washington Carver
- Came up with 300 uses for peanuts in the 1920s
- Ex: adhesives, grease, paint
Can you get a patent on a natural law?
No. Patents not allowed for laws of nature, natural phenomena, abstract ideas, products of nature.
But, if this law is used to do something new that is patentable.
- Ex of natural law: E=mc2
- Note: The Supreme Court has never provided a concrete definition or a legal test for what makes a natural “law,” “phenomenon,” or “product.”
Do US patents protect ideas in other countries?
No, so long as the products/devices are not being made nor sold in the US.
- Need to get patents in other countries as well to expand your reach
- Cost the same in other countries $$$
Revolutionary inventions and monetary profit
- History shows that revolutionary inventions that change the course of history (light bulbs, airplanes, telephones, etc.) are not big patent money earners
- Light bulb: not much infrastructure when it was invented so profit limited in time
- Lasers: no immediate means of getting money, potential realized later
- Most patents are only incremental improvements, evolutionary.
- These make money quickly.
Lasers
- Invented in 1960
- Possible to get many patents on lasers, because
- they can be used to do many different things (measurements, apply heat)
- how they work/operate can be changed (frequency)
- 18 Nobel prizes for lasers
Timeline of IP laws in the US
- IP law started in Italy in the 1300s-1400s
- Davinci got his money traveling around giving insight into protection for the city, this involved patents
- Then England - guilds: knife-maker, locksmiths
- Patents and copyrights: 1787
- Trademarks: 1870 (revisions in 1946)
- Trade secrets: between 1974-1985
- More can come as time goes on as these are human-created laws
- Nothing sacred about them as opposed to physical laws (gravity)
- These exist in most countries.
Patent Review
Method and apparatus for measuring the profile of small repeating lines
Concept
Atomic force microscopes use light to allow for visualization of very small targets, but require that the visualized target be destroyed in the process. This patent attempted to enable visualization with preservation of the target as an alternative.
- By IBM employees David Paul and Edward Conrad (friends of Prof. Cole)
- Took 2 years to go from filed to issued
- Patent was sold by IBM later for $10 mil
IBM
- Has had the most patents of any other US company for 28 years
- Had 9130 patents in 2020
- Company is not as large a player as it used to be
- Most R&D funded by cross-licensing with other companies
- 30-40% of profits from patents alone
Background of Invention section of a patent
- Tells you what the patent is about
- End of the section will say that the existing problems listed beforehand will be resolved with the design laid out in this patent
Should patents be as long and detailed as possible?
Not necessarily.
Providing more detail and including more references to what the design can/can’t do, the more limited/restricted your ownership will be to just those things specifically mentioned.
Do patents have to have proof of requirement?
No.
Most actually do not.
Jefferson’s influence on IP
- First patent examiner.
- Had 33 patents.
- Said if the US wants to grow its economy it needs a strong patent system.
- Realized that inventors were creating products and processes simultaneously, waste of time when one will suffice - not productive to society.
- If idea is worthwhile, and you want a patent, you need to publicize details of your idea so everyone can reproduce it.
- Need to include all details of our design / device so everyone around the world can examine and learn from it, improve on it.
- Back then patents lasted for ~ 10 years.
- First patent in US history given in 1790
- Method for producing Potassium Carbonate used in soap, glass
- Heating ash from wood fire to make concentrated chemical
Sources of IP law
Constitution
- Statement about patents and copyrights
- Put there because of Jefferson
Common law
- Unwritten, reasoning and just universally understood codes of conduct (like divorce proceedings with Judge Judy)
-
Ex: Left a rake out in the house and someone trips and injures themselves.
- No law explicitly stating how you need to arrange your house for “safety.”
- Common law is if you leave something out that’s dangerous, you may be liable for health bills.
Court cases
Patents themselves
- Patents, copyrights, trademarks, trade secrets.
Cross-licensing
Pen and pencil example
Lets’ consider…
- The invention of the pencil and claim that it was a “cylindrical object with medium in the center that could mark paper.”
- Then, later on in history, someone else invents the pen.
- The pencil definition is encompassed in the pen concept, so the pencil’s patent rights need to be obtained before the pen can be legally sold.
- The inventor of the pencil can receive royalties the pen market if they choose to allow pen creator to cross-license.
- The pen inventor already has the patent for the pen. This means that the pencil inventor cannot steal that idea if it chooses not to cross-license. However, the pen creator cannot make or sell its product without corss-licensing agreement.
Patent Requirements
Needs to be well-written such that
**someone who is skilled in the art can reproduce it without undo experimentation**.
Four criteria:
- Statutory
- Must be a process, machine, article of manufacture, composition of matter
- New/novel
- Useful
- Non-obvious/intuitive
Patent Infringement
Infringement: Violation of patent law that incurs massive financial liabilities (criminal for copyright violations).
- It is a patent owner’s responsibility to enforce their patent rights.
Factors affecting likelihood of infringements:
- The more often a patent is cited (Xerox, 2,168 times), the more fundamental it is and the harder to get around without infringing.
- When a company sites a number of your patents, likelihood of infringement increases.
- The further afield from your original application a firm’s use of similar tech is, the more likely it is infringing
Plant Patent
New and distinct, invented or discovered asexually reproduced plant
- cultivated sports, mutants, hybrids, and newly
found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state - owner can exclude others from
making, using, or selling the plant for a period of up to 20 years from the date of patent application filing. - Not subject to the payment of maintenance fees.
Cross-licensing
If your patent idea uses another patent, there are two
options:
- cross-license, or
- purchase each device and use
it in each of your inventions, one at a time.
- Compare top 50 highest earning patents with the most coverage of the current tech field.
- Done to make sure that no-one is wasting time and working on the same things.
- Allows for MFG freedom without infringement.
- Don’t need to cross-license after 20 years have passed from the original patent issue date.
Direct Infringement
- Making
- Experimenting
- Selling
- Advertising
- Importing
a patented product.
Indirect Infringement
Contributory
Sells or offers to sell a component that can only be used in infringing a patented invention.
- “Only reason you’re making something is to fulfill part of the design outlined in a patent.: - D.Cole
- Ex: Ford’s cover for the sedan, this part of the design has been replicated by others, but the whole mechanism was not reproduced (direct) so it’s not contributory infringement
- Must show direct infringement occurred.
Indirect Infringement
Contributory
Who is sued for contributory infringement?
Suppliers.
- Not practical to pursue each consumer for individual acts of patent infringement; to do so would be
- cumbersome,
- unlikely to recoup damages
- very likely to alienate the customer base
- won’t stop the infringement at the source.
Indirect Infringement
Contributory
Categories to qualify
- the product’s only reasonable use is an infringing use;
- the product is not a ‘staple commercial product’ and the supplier had reason to believe the person to whom they supplied it would put it to an infringing use; or
- the supply is accompanied by any instruction, inducement or advertisement that suggests an infringing use.
Indirect Infringement
Contributory
How to protect against your ideas being infringed?
- independent claims for every product that can be sold, made or distributed;
- claims that are directed to the individual components of a process (especially if a process can be performed by components that are distributed across multiple locations), and
- claims that are directed to only the vital components of the invention (i.e. excluding unnecessary peripherals that may be omitted by a contributory infringer).
Indirect Infringement
Inducement
Instructs or causes another party to infringe a patent.
- Must show direct infringement occurred.
-
Ex: Method patent for chemical formula.
- If materials are purchased and instructions printed, then all sold by hardware store owner, this is inducing people to commit direct infringement.
- Materials must be useful in other contexts as well not exclusive to this design.
- The final direct infringement can be contributed by single or multiple entities.
- However, if “from USPTO…” was listed on contents, burden shifted entirely to consumer.
Indirect Infringement
Contributory vs. Inducement
Substantial non-infringing use
- If the sold product/material used to commit direct infringement can be used in other contexts/applications, may prevent contributory guilt.
- But, if infringement is encouraged, guilt of inducement is likely.
US Patent Act
Patentability
Precludes the granting of a patent if the claimed invention was in public use, on sale or otherwise available to the public more than one year prior to the effective filing date of the corresponding patent application.
US Patent Act
Exceptions
Experimental-use
- statutory one-year time bar will not apply if the applicant can demonstrate that the actions relating to the use or sale were experimental in nature.
- qualifies if:
- test a claimed feature of the invention; or,
- determine whether an invention will work for its intended purpose.
- If evidence shows that the inventor was uncertain as to whether or not the invention would work as intended, then the testing will likely qualify as experimental.
-
Ex: Track company using running shoes
- Collected data and made changes based on analysis.
Publication
- If you were the one who published it, you have 1 year to file.
Independent and dependent claims
Independent
- Standalone claim that contains all the limitations necessary to define an invention.
Dependent
- Refers to a claim previously set forth and must further limit that claim.
- Incorporates by reference all the limitations of the claim to which it refers.
- “As in claim X, but … modification.”
Ex: Headphones for hearing aids
- Independent: Headphones you can use with hearing aids
- Dependent claim 1: Headphones you can use with hearing aids via connection with bones in skull.
- Dependent claim 2: Headphones you can use with hearing aids via connection with bones in skull within frequency range of X to Y Hz.
- etc.
Product vs. Patent
Products can be protectable, useful and be sold but not be patentable.
- Can still make money from these.
Inventions that are not patentable on their own:
- discovery, scientific theory or mathematical method (natural law)
- aesthetic creation,
- scheme, rule or method for performing a mental act, playing a game or doing business
- presentation of information,
- procedure for surgical or therapeutic treatment, or diagnosis, to be practiced on humans or animals.
- software / computer program
Patent Mining
Act of mining particular patents from a patent portfolio that match one’s business or technical requirements.
It allows you to identify technologies that you can license or sell to generate revenue and patent assets that you can abandon for reducing costs.
Infringement
Remedies
Through litigation, a judge can stop the infringement (civil).
- Will deliberate on how much money is owed for infringement. Usually, linked to how much profit they made, if the inventor can sell to all the people the infringer did.
- Injunction
- Lost profits
- Reasonable royalty
Infringement
Defenses
- Patent invalidity issues
- Patent misuse
- Infringing acts outside the US
