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
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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