THE PATENT PROCESS
USING THE PATENT LAW TO YOUR ADVANTAGE
Timothy E. Siegel Intellectual Property Attorney 503.650.7411 www.intproplaw.com
We Live In An IP World
Manufacturing is easier than before The mechanics of design are easier Making a record of a design is easier Information is more easily stored and transmitted Physical assets quickly become obsolete Intellectual property has become more important
Small Business Has An Advantage
There are extreme diseconomies of scale in the patent world Patent Mining is an admission of failure
Imagine an inventory of manufacturing facilities: Weve discovered that we have an unused factory in Ohio.
Small entity fees But small businesses frequently miss patenting opportunities
What Is Patentable
[A]ny new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof . 35 USC 101 This includes
Methods of Use Methods of Doing Business
Only the inventor(s) may apply for a patent
Patent Rights
A U.S. Patent gives to the patent owner the exclusive right to make, use and sell the invention in the United States, to import the invention into the United States and to import the end product of a process patent into the United States
Cant They Change One Small Detail?
Not if the patent is broadly drafted The patent applicant initially defines the invention in the claims The patent office determines if the initial claims are too broad Final claim scope is usually determined in a process of argument and negotiation between applicant and patent office
Should We Try?
Will competitors be placed at a disadvantage by being unable to practice the invention as claimed?
Value Patentability
Factors in Determining
Patentability Search Industry Knowledge Try to design around your own invention definitions Market evaluation
Size of market Are there other markets that would be opened
Can invention be kept as a trade secret?
AT WHAT STAGE IN DEVELOPMENT PROCESS CAN A PATENT APPLICATION BE FILED A properly prepared patent application is considered to be a constructive (has the legal effect of, even though it is not) reduction to practice (building of prototype) To be properly prepared a patent application must enable one of ordinary skill in the art to practice the invention (as claimed) without undue experimentation; but The patent application must disclose the best mode of practicing the invention as of the time of filing
WHO WINS A PATENT RACE
In the US, the person who invents first has the right to a patent, as opposed to the rest of the world, where the person who files first has the patent rights Date of invention is the date of conception if conception can be linked to reduction to practice by due diligence There is a presumption of due diligence if there is no gap longer than two years
Strategy wrt Previous Slide
If you file too early, it may turn out that you have not filed an enabling disclosure, but you dont have to enable high performance if you dont claim high performance If you patented a television, but your disclosure would only enable the construction of a set with a very, very grainy image, it would still be enabling, unless you had language dictating a smooth image in your patent claim If you file comparatively late, you may be compelled to disclose a better best mode than if you filed earlier
What to Expect After You Have Filed
Within two weeks you should have a serial no. and a filing date The Semiconductors and Electrical Circuitry portion of the patent office is taking slightly more than a year to respond substantively to patent applications It is very likely that most or all of the claims will be rejected when a first Office Action is received
What to Expect After the First Office Action
It will cost between $600 and $1,500 to respond to the first Office Action Probability of receiving a Notice of Allowance Rises dramatically after first response Second Office Action may include a final rejection
Final is not Final
In response to a final rejection, applicant may: Telephone the patent examiner and negotiate Appeal the case to the Board of Patent Appeals and Interferences File an amendment (need not be entered) File a Request for Continuing Examination, together with a filing fee (currently $385 for a small entity) and an amendment, and keep trying to gain allowance
After Allowance
After a Notice of Allowance is received: An Issue Fee is due ($665) within three months It is time to consider filing a continuation application After issuance, competitors will study the patent claims and try to find a way around them Keeping an application pending gives you the right to address design-arounds with a new set of claims Right limited by the Gentry Gallery case, but not entirely dead
Preserving Foreign Rights
Most Foreign Countries Have An Absolute Novelty Provision: If the invention is made known to the public before a first patent application is filed, it can never be patented If a U.S. patent application is filed before the invention is made known to the public, the foreign filing date(s) may claim priority from the U.S. filing date, if the foreign application(s) or an international application is filed within a year of the U.S. filing
Three Cases
U.S. Application Filed
Invention made public-foreign rights lost Invention made public U.S. Application Filed Invention made public U.S. Application Filed 366 days pass post U.S. filing, foreign rights dead International Application filed 364 days post U.S. Filing Rights alive
Preserving U.S. Rights
Rights Lost One Year Post: Invention described in a printed publication, here or abroad Invention placed in public use in the U.S.
Experimental use exception
Invention placed on sale in the U.S. Invention placed into secret commercial operation in the U.S.
Patentability and Infringement
For any device there are four possibilities: It infringes a patent and is not patentable itself
Dont make it
It is patentable itself and does not infringe any patent
Patent it
It infringes a patent and is itself patentable
Chair patentable over a stool patent
It does not infringe a patent and is not patentable
Subject of an expired patent or described in a printed publication more than one year old
Infringement Analysis
If even one claim is infringed, the patent is infringed Every element of the claim must be met, in order for the claim to be infringed Doctrine of Equivalents states that even when a claim is not literally infringed, it may still be infringed if there are mere insubstantial differences between claim language and accused device Prosecution History (aka file wrapper, file history) is the record of communication between applicant and patent office during patent prosecution (process of obtaining a patent). These records can be very valuable in construing words used in patent claims and limiting doctrine of equivalents claim scope
Opinion Letters
Willful patent infringement may result in an award of treble damages, but Reasonable reliance on the opinion of counsel is a good defense against a finding of willfulness So, have a noninfringement opinion or invalidity opinion on file if there is a reasonable chance (>5%) of being found liable for patent infringement
Strategy
IP success lies in being aware and engaged at the highest corporate level Schedule regular patent meetings
Quarterly meetings may be adequate Enough to keep the issue alive
Keep laboratory notebooks, sign and date pages Check the patent claims yourself, question every word Keep an application pending Dont spend too much money on foreign applications
