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Slide 1 - PATENTS
Slide 2 - “A grant of a property right made by the USPTO (U.S. Patent and Trademark Office) giving the right to exclude others from making, using, or selling the invention in the United States or importing the invention into the United States.
Slide 3 - 3
- FUNDAMENTAL RATIONALE
- Stimulate research and development of new inventions by giving inventors:
- a. Government grant of limited “monopoly”
- b. Ample opportunity for rewarding the
- inventor’s “creative energies.”
- Provide public access to further encourage follow on development and improvements
Slide 4 - 4
- PATENT PROTECTION(Benefits)
- Inventor can prevent others from independently creating and marketing the same invention.
- a. Litigation option
- b. Settlement action
Slide 5 - 5
- PATENT PROTECTION (Drawbacks)
- Invention must meet criteria for patent
- Patent process costly:
- a. Application/maintenance fees
- b. Need for specialized attorneys
- c. Expenses of an international scope
- Enforcement Expenses
- Fertile ground for replicators and those seeking to create copies that fall outside the patent protection.
Slide 6 - 3 TYPES OF PATENTS
- UTILITY-USEFUL PROCESS, MACHINE, ARTICLE OF MANUFACTURE, OR COMPOSITION OF MATTER, OR ANY NEW OR USEFUL IMPROVEMENT THEREOF
- DESIGN-NEW, ORIGINAL AND ORNAMENTAL DESIGN FOR AN ARTICLE OF MANUFACTURE
- PLANT-ASEXUALLY REPRODUCES ANY DISTINCT AND NEW VARIETY OF PLANT
Slide 7 - 7
- rEquirements for PATENT protection
- MUST BE NOVEL
- MUST BE NON-OBVIOUS
- MUST HAVE SOME UTILITY
Slide 8 - 8
- NOVELTY(Three Principals)
- Person may not stake a claim to an invention that was publicly available before the person invented it (Prior Art).
- Priority for patent entitlement is to the person deemed to have invented first (rather than who filed first).
- Rapid disclosure (One Year Rule)—if published or put into use more than one year prior to date patent application filed.
Slide 9 - 9
- It’s considered nonobvious if someone skilled in the particular field of the invention would view it as an unexpected or surprising development.
- Must do one of the following:
- a. Solve a problem that someone in the field has
- been trying to solve for some time;
- b. Do something significantly faster than was
- previously possible; or
- c. Perform a function that could not be performed
Slide 10 - 10
- Must have some usefulness…even if
- humorous (e.g. musical condom).
- 2. Must work (at least in theory).
Slide 11 - 11
- UNPATENTABLE INVENTIONS
- Mathematical formulas and algorithms
- Laws of nature; fundamental scientific principles; mental process (pure thought); abstract ideas
- Newly discovered substances that occur naturally in the world
- Purely theoretical phenomena
- THEY ARE DISCOVERED NOT INVENTED
Slide 12 - 12
- TIME FACTORS
- Patent lasts approximately 17-18 YEARS.
- a. Statutory period for a utility patent is 20 years after the
- date of filing (if it takes 2-3 years to obtain a patent then
- have 17-18 years of effective protection).
- b. Provisional Application affords 12 month interim notice,
- which is not subtracted from the 20 years
- For Design Patents, the statutory period is 14 years from date of issuance.
Slide 13 - 13
- SOFTWARE PATENTS
- Diamond v. Diehr (1981)—Supreme court held that an algorithm may be patentable if it works in connection with a specific apparatus.
- State Street Bank & Trust v. Signal Financial Group, Inc. (1998)—Patent laws were intended to protect any method, whether or not it required the aid of a computer, so long as it produced a “useful, concrete, and tangible result.” Software, even if it merely manipulates numbers, produces something tangible. (opened internet business methods patents)
Slide 14 - 14
- SOFTWARE PATENT ARGUMENTS(CON)
- Software routines simply manifest ideas
- PTO examiners have insufficient expertise
- PTO has inadequate search facilities
- Patent challenges are too expensive
- Too expensive to police infringements
- Patents not needed to stimulate innovations
- Patents on software not required because computer programs are protected by copyright
Slide 15 - 15
- SOFTWARE PATENT ARGUMENTS(PRO)
- PTO contends with technology learning curve
- Patents are required for investments in software, which are complex/expensive
- Copyrights protect fewer aspects of computer programs
- Without patents, software becomes trade secrets and will not be shared
- One can repair poor patent decisions through litigation or re-examination
Slide 16 - 16
- REMEDIES FOR INFRINGEMENT
- PAYMENT OF COMPENSATION
- a. Lost profits—”had the infringer not infringed, what
- would the patent holder have made?”
- b. Reasonable royalty—minimum entitlement
- c. Prejudgment interest—loss due to delay
- d. Willful infringement—treble damages and
- attorney’s fees
- e. Price erosion—forced lowering of sales price
Slide 17 - 17