Mark Chad lecture Flashcards
1
Q
Why do we have a patent system?
A
- Incentive to encourage disclosure
- Each party gives up something to get something
- Government gives up right of public to make what they want or practice that particular subject matter
- Patents were granted by King in England to court favor for 100-150 years
- Parliament made patents incentive to be first to innovate
2
Q
Patent specifications
A
- Provide “enabling description” of a claimed invention
- Needs to be able to be reproduced by someone skilled in the art without undue experimentation
3
Q
Patent claim
A
- Run-on sentence
- Defines area and bounds of intellectual property that a patent covers
- Every word is important
- To accuse of infringement., must be able to point to every word and clearly link it to the infringing product
- Enough words to distinguish from prior art but not so many that other people can practice the essence and I won’t be able to link all the words to their products
- Numbers used in patent are to allow for international readings even if language is not understood
4
Q
Inventor?
A
- Process to technician who runs test
- Would be author on technical paper
- Not an inventor
- If their contributions change or specify the claims, inventor
- Misjoinder of inventors can lead to patents being thrown out
- Wrong inventor added or someone left out
- Best practice is to have as fulsome a set of claim as possible
- Could help with patentability to put in details like pressure range from the technician
5
Q
USPTO through history
A
- Set of laws were passed to increase pendency at the patent office because patents were starting to become obsolete in usefulness
- Pendency usually 24 months
- Can grant longer than 20 years if it takes them past the pendency period to issue the patent
6
Q
Citations
A
- Duty to disclose all prior art found in search to the USPTO
- Information disclosure statement
- List patents and examiners will look into prior art
- The more cutting edge the tech, the harder it is to find all references in prior art
7
Q
Can you patentably distinguish prior patents, but still infringe them?
A
- Yes!
- Example: cup is vessel that holds liquids
- Prior art is cup
- New patent is bottle: distinguishing argument that is patentable
- Another new patent is a can
- All three patents out there
- Technically, can may infringe cup but not bottle if bottle patent uses words meant to distinguish enough from cup but now can does not infringe bottle
- Key: patents exclude they don’t permit
- They’ll ask if you have a patent to see if you can keep others from making your product
8
Q
Provisional application vs no-provisional
A
- Provisional: main aim is to file asap
- Early filing date only granted for what is disclosed
- So, if you miss something because there aren’t claims then they won’t be included in the provisional time
- Claims are everything
- But, don’t need to have claims, but if infringement comes into question the lawyer will compare word for word to show that the provisional does not support the later claims and material covered
- Nonprovisional: full application within a year
- Patent attorney: law school, bar exam, patent agency exam
- Patent agent: passed agency exam (prep applications and deal with patent office)
- Want to include alternatives, but not too many
- Mocha pot: “any metal, any solid” at some point branch into things that are not actually alternatives
- Avoid statements of relative importance to avoid having to address disparities in specs vs broad claims
- Patents are invalid if the filer is found to not be the true inventor
9
Q
Best mode
A
- Law says have to list best mode
-
Law is not in place anymore
- Makes US patent system more compatible with other countries
- If you’ve run experiments and seen that aluminum is best thing
- must disclose that!
- Changes to law in 2013 - no longer defense of infringement
- Disclose all operative modes but not the best one
- Manipulate file dates to get best mode you want (ex from testing)
10
Q
Costs
A
- Attorney fees to have your patent application filed: $8,000
- USPTO charges users
- Filing fee
- Review fee
- ~ $1000 for small company
11
Q
Rejected claims
A
- Usually rejected at first
- Probably found prior art
- First action allowance could mean you made it too narrow
- Goal is response within 18 months
- Respond to them within 3 months
- Amend claims
- Argue for differences
- Could add details that will be required for invention to be reproduced
- 7 / 10 filed will be issued
12
Q
Criminal penalties
A
- Copyright and trade secret only.
- These are infringed by access and use - not innocent.
- Patents and trademarks can be done without knowledge
13
Q
Design patent infringement damages
A
Defendants “Total Profits” from sale of “article of manufacture” that infringes.
- Injunctive Relief
- Lost Profits,
- Reasonable Royalty
14
Q
Types of infringement notice
A
Title 35 United States Code, Section 287:
- Patentees may obtain damages from an infringer dating back to when the infringer had “notice” of the infringement and continued to infringe.
Three Types of Notice:
- Constructive Notice –by listing patents that are embodied in products
- Actual Notice –receive a letter alleging infringement
- Filing Notice –filing a complaint with a court to commence infringement suit
- Earlier the notice (constructive or actual), more damages can be claimed.
15
Q
Trade Secret patents
A
If not derived from another -YES, you can obtain a patent on another party’s prior trade secret.
Patentee cannot enforce its patents against “Prior Commercial User”:
- Made/used the claimed invention
- to manufacture products, or otherwise internally in its commercial business activities,
- at least one year prior to filing date of patent
