1. Patents Copyright © 2009 - Jeffrey Pittman

2. Pittman - Cyberlaw & E- Commerce 2 Legal Framework of Patents The U.S. Constitution, Article 1, Section 8: "The Congress shall have power to... promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries"

3. Pittman - Cyberlaw & E- Commerce 3 The Patent Act, as amended by The American Inventors Patent Act "[W]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore."

4. Pittman - Cyberlaw & E- Commerce 4 Patent Protection –The original length for patent protection was 4 years –The current length is 20 years for utility and plant patents; 14 years for design patents

5. Pittman - Cyberlaw & E- Commerce 5 Patent Law Administration –Patent law is an exclusive federal field; the states have no control over patent issues –The United States Patent & Trademark Office (USPTO) administers the Patent Act (See www.uspto.gov) The USPTO is an agency of the U.S. Department of Commerce The role of the USPTO is to grant patents for the protection of inventions and to register trademarks The Court of Appeals for the Federal Circuit hears all patent appeals, followed by the Supreme Court

6. Pittman - Cyberlaw & E- Commerce 6 Patent Law as it Relates to Business Practices Patentable subject matter –Any invention or discovery, e.g., a machine, article, process, or composition ("anything under the sun that is made by man") that is: Novel Useful, and Nonobvious

7. Pittman - Cyberlaw & E- Commerce 7 Novel Novel - A patent will not be granted if –“(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or –“(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States”

8. Pittman - Cyberlaw & E- Commerce 8 Useful There must be a practical benefit to the invention –The subject matter must have a useful purpose and also operate, that is, a machine which will not operate to perform the intended purpose is not useful

9. Pittman - Cyberlaw & E- Commerce 9 Nonobvious The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention –Even if the subject matter sought to be patented is not exactly shown by the prior art, a patent may still be refused if the differences would be obvious

10. Pittman - Cyberlaw & E- Commerce 10 Items not Eligible for Patent Protection The laws of nature Physical phenomena Abstract ideas, and A mere idea or suggestion (A complete description is required of the actual machine or other subject matter for which a patent is sought)

11. Pittman - Cyberlaw & E- Commerce 11 Battles over Patent Ownership –The U.S. operates under a "first-to- invent" system of patent law; most countries use a "first-to-file system" of priority for patents

12. Pittman - Cyberlaw & E- Commerce 12 Types of Patents Utility patents –Granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof Design patents –Granted to anyone who invents a new, original, and ornamental design for an article of manufacture Plant patents –Granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

13. Pittman - Cyberlaw & E- Commerce 13 Software Patents In 1981, Diamond v. Diehr, the Supreme Court recognized patents for computer software –Note the overlap between copyright law and patent law –Patent law protects the idea, while copyright law only protects the particular software language used

14. Pittman - Cyberlaw & E- Commerce 14 Business Methods Patents In State Street Bank & Trust (1998), the Court of Appeals first recognized business methods patents In a broad sense, business methods patents potentially protect any method of doing or conducting business (35 U.S.C. §273(a)(3))

15. Pittman - Cyberlaw & E- Commerce 15 Patent Ownership Issues Who invented the patented item? Are there prior contractual arrangements between the parties regarding ownership Shop rights – did the inventor use employer resources to develop the patent

16. Pittman - Cyberlaw & E- Commerce 16 Enforcing Patent Rights Literal infringement - a copycat invention in all aspects The doctrine of equivalents - insignificant changes made to patent

17. Pittman - Cyberlaw & E- Commerce 17 Defendant’s Case Noninfringement – no literal or equivalent infringement Invalidity – the patent is not valid

18. Pittman - Cyberlaw & E- Commerce 18 Remedies Equitable remedies – assign patent, rewrite inventorship, enjoin violations Damages – reasonable royalty, lost profits, treble damages for intentional violations Attorney’s fees

19. Pittman - Cyberlaw & E- Commerce 19 Patent Analysis Using ustpo.gov, analyze the following patents: –U.S. Patent No. 6,241,641 (exercise devices) –U.S. Patent No. 5,851,117 (janitorial training) –U.S. Patent No. 6,349,820 (choosing spices) –U.S. Patent No. 6,494,210 (mouth guard advertising)