1. www.bipc.com © 2012 Copyright Buchanan Ingersoll & Rooney PC William C. Rowland Fang Liu Buchanan Ingersoll & Rooney Introduction to Intellectual Property

2.  The legal right to prevent the unauthorized making, using, selling, and offering for sale in the United States, and the importation into the United States, of the invention set forth and claimed in the patent. What Are Patents? 2

3.  A trademark is a word, symbol, color, sound, or device that is used to identify a product or service and to distinguish that product or service from those of others. Trademarks 3

4.  Copyrights generally protect the particular expression of an idea, rather than the idea itself. Copyrights 4

5.  Trade secret protection is similar to patent protection in that it can be used to protect products and methods of making or using them. Trade Secret Protection 5

6. Can innovation be kept secret?  If NO, then you either patent it or give it away ▫Exploitation requires disclosure ▫Can’t sufficiently lock down the information  If YES, then look to potential economic impact of losing trade secret status and longevity of value ▫Status can be lost if independently developed, or ▫Insufficient standard of care in preserving trade secrets ▫Balance risks Patenting vs. Maintaining Trade Secret 6

7.  Patents viewed as economic tools  Protect market ▫Prevent competitor from copying ▫“Chilling” effect – Often greatest but unquantifiable value ▫Maintain product differentiation ▫Raising barriers for entry into a market  Revenue through licensing/assignments/judgments  Develop reputation as innovator/prestige ▫Helps with credibility/advertising  Defensive ▫Others may or may not be willing to fight a patent portfolio ▫“You fight patents with patents” Potential Economic Value of Patents 7

8.  Utility Patents  Design Patents  Plant Patents There are Three Types of Patents 8

9.  A utility patent may be issued for a process, a machine, products of manufacture, compositions of matter, and improvements thereof. Utility Patents 9

10. A utility patent has a term that usually expires twenty years from the first effective filing date of the application. Utility Patents cont. 10

11.  A provisional patent application is a simple, inexpensive way to obtain an early effective filing date for a disclosure in the United States. Provisional Patent Applications 11

12.  Provides no enforceable rights  Effective placeholder at the USPTO  Viable for only one year Provisional Patent Applications 12

13.  A design patent protects an original and ornamental design for an article of manufacture. Design Patents 13

14.  Most people overestimate the requirements for a U.S. patent: ▫level of "technical complexity" Recognizing Patentable Subject Matter 14

15. A Method of Swallowing a Pill 15

16.  A combination of two or more known elements may be patentable Combination Patents 16

17.  If certain events occurred before the date of the invention, the inventor will not be entitled to a patent, for example: ▫the invention was known or used by others in the US; ▫the invention was patented or described in a printed publication in any country ▫OLD LAW (but still in effect for a while) Statutory Requirements – old law 17

18.  New law focuses on filing date of patent application – not date of invention!  Advantage to prompt filing of the patent application Statutory Requirements – new law 18

19.  Many countries require “absolute novelty” in order to obtain a patent. Absolute novelty requires that a patent application be filed before any public disclosure of the claimed invention. Absolute Novelty 19

20.  Because of the absolute novelty requirements of some countries, it is recommended to file the patent application before any public disclosure of the invention. Absolute Novelty 20

21.  The law prohibits the issuance of a patent if, when compared to the "prior art", the invention would have been obvious at the time the invention was made. Obviousness 21

22.  Some non-obvious difference between an invention and the known technology; and  Some benefit or advantage can be attributed to the difference Test for Patentability 22

23.  The claims are the true measure of the scope of the protection of the patent, and they must be precisely drafted. What is Covered by a Patent? 23

24.  If a claim is too broad, it may be found to cover previously patented or other public material and thus declared invalid. Claim Scope 24

25.  On the other hand, if the claim is too narrow, the inventor will not be receiving all of the protection to which the inventor is entitled. Claim Scope 25

26.  A product or process infringes a patent only if it includes every element, or an equivalent thereof, of at least one claim of the patent.  Except in limited circumstances, it does not matter that the infringing product or process includes other elements as well. Claims 26

27.  It is a fundamental principle of patent law that a patent may not cover or protect something that has previously been known or disclosed in the prior art. What is not Covered by a Patent? 27

28.  A common defense to an accusation of patent infringement is to show that the accused product or process was known in the prior art prior to the "invention" thereof by the inventor of the patent at issue. What is not Covered by a Patent? 28

29.  In the US, business methods may constitute patentable subject matter.  Many patents have issued claiming business methods involving computer software and/or the internet. Business Method Patents 29

30.  Amazon.com received U.S. Patent No. 5,960,411 for its “one-click” ordering method Business Method Patents 30

31. A method of placing an order for an item comprising:  [ ], displaying information identifying the item; and  in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system;  [ ];  retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and  [ ];  fulfilling the generated order to complete purchase of the item [ ]. Amazon.com's "one-click" Patent 31

32.  Patents are intended to protect ideas  Patents include a description of preferred embodiments of ideas  But – patents protect the broader concept, i.e., the idea, not the specific disclosed embodiment of the idea Patents Protects Concepts – Not Embodiments 32

33.  Disclosed preferred embodiment may include a bolt  Patent could protect any type of fastener – nail, screw, rivet, etc. Example 33

34.  Preferable to include as much detail as possible  Describe as many alternative embodiments as reasonable  Large amounts of detail in the description can actually make the patent broader Detail in Patent Description 34

35.  As the Supreme Court has recognized, patentable subject matter includes "anything under the sun that is made by man”. Patentable Subject Matter 35

36.  Patentability of software is a rapidly changing area of the law  Requires foresight and imagination! Patentable Subject Matter Includes Software 36

37.  In some cases, the user interface is one of the most important aspects of software.  User interfaces (GUI’s) are well suited for design patent protection. Why Use Design Patents for Software? 37

38. Examples of Software Design Patents – Graphical Elements of O/S 38

39. Examples of Software Design Patents - Animation 39

40.  In reality, the main limitations on what type of business methods can be protected by patents are the prior art and the imagination of the patent attorney. Clearly however, abstract business methods will be more difficult to obtain than those which are concretely tied to a computer system or the internet. Limitations of Business Method Patents 40

41.  Contact IP Counsel if accused of infringement ▫Offers to license sometimes trigger duty to investigate, particularly if directed to specific product or activity  Willful infringement can result in tripling the damages  Defense to charge of willful infringement is that you, given the totality of the circumstances, reasonably relied on advice of counsel ▫Should be outside U.S. counsel who provides a reasoned authoritative opinion based on a review of the patent and its prosecution history at a minimum When You’re the Accused Infringer 41

42. Thank You 42 Bill Rowland 703-838-6510 william.rowland@bipc.com Fang Liu 703-838-6686 fang.liu@bipc.com