1. What Engineer Inventors Do Not Know About Patents May Hurt Them! By Stephen Harbulak Intellectual Property Counsel CECOM LCMC Legal/IPLD Fort Monmouth, NJ stephen.harbulak@us.army.mil © 2010 Stephen Harbulak

2. 2 Disclaimer and Purpose of Talk Views and comments presented herein are solely those of the author/speaker and do not represent the policies, views, comments and/or positions of any other party or organization other than the author/speaker. What is the purpose of this presentation? Avoid some pitfalls! Will not show you everything you need to know about patents. See Manual of Patent Examining Procedure

3. 3 PTO website has info for inventors http://www.uspto.gov/patents/basics/index.html General Information Concerning Patentshttp://www.uspto.gov/patents/basics/index.html http://www.uspto.gov/inventors/independent/inde x.jsp Independent Inventorshttp://www.uspto.gov/inventors/independent/inde x.jsp http://www.uspto.gov/inventors/patents.jsp Patents for Independent Inventorshttp://www.uspto.gov/inventors/patents.jsp http://www.uspto.gov/inventors/iac/index.jsp Inventors Assistance Center (IAC)http://www.uspto.gov/inventors/iac/index.jsp

4. 4 Summary of Presentation Executed Oath or Declaration 1. REVIEW CONTENTS AND CLAIMS 2. RULE 56 DISCLOSURE OBLIGATION 3.INVENTOR(S) 4.FINE OR IMPRISONMENT 18 U.S.C. 1001

5. 5 Executed Oath or Declaration 1. REVIEW CONTENTS AND CLAIMS I hereby state that I have reviewed and understand the contents of the above identified application, including the claims, as amended by any amendment specifically referred to above. 2. RULE 56 DISCLOSURE OBLIGATION I acknowledge the duty to disclose information which is material to patentability as defined in 37 CFR 1.56, including for continuation- in-part applications, material information which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application. 3. INVENTOR(S) I hereby declare that: (1) …;and (2) I believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which is claimed and for which a patent is sought on the invention titled: 4. FINE OR IMPRISONMENT 18 U.S.C. 1001

6. 6 1. REVIEW CONTENTS AND CLAIMS I hereby state that I have reviewed and understand the contents of the above identified application, including the claims, as amended by any amendment specifically referred to above.

7. 7 Parts of a Patent Specification (Description and Claims) The specification should have the following sections, in order: (1) Title of the Invention. (2) Cross Reference to related applications (if any). (Related applications may be listed on an application data sheet, either instead of or together with being listed in the specification.) (3) Statement of federally sponsored research/development (if any). (5) Background of the Invention. (6) Brief Summary of the Invention. (7) Brief description of the several views of the drawing (if any). (8) Detailed Description of the Invention. (9) A claim or claims. (10) Abstract of the disclosure.

8. 8 Claims - at the end of the patent What can you get a patent for? Patent rights are available to anyone who invents "any new and useful process, machine, manufacture, or composition of matter, or any new or useful improvement thereof." 35 U.S.C. § 101. A patent grants an inventor the right to exclude others from making, using, offering for sale, or selling devices that embody the patented invention. See 35 U.S.C. § 271(a)35 U.S.C. § 10135 U.S.C. § 271 Let’s look at who in history got some patents!

9. 9 A. Einstein Refrigeration 1,781,541

10. 10 A. Einstein Refrigeration 1,781,541

11. 11 Edison Electric Lamp 223,898 I claim as my invention_ 1. An electric lamp for giving light by incandescence, consisting of a filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth.

12. 12 Bell 174,465 what I claim, and desire to secure by Letters Patent is as follows: 1. A system of telegraphy in which the receiver is set in vibration by the employment of undulatory currents of electricity, substantially as set forth.

13. 13 Samuel L. Clemens 121,992 What I claim as new…As an article of manufacture, the adjustable and detachable back-strap for garments, it being provided with devices for adjusting its length, and with button-holed ends for direct attachment to the clothing, substantially as set forth.

14. 14 Samuel L. Clemens Twain also believed strongly in the value of the patent system. In his book, A Connecticut Yankee in King Arthur's Court, Hank Morgan, the Connecticut Yankee, said "...the very first official thing I did in my administration-and it was on the very first day of it too-was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab and couldn't travel anyway but sideways and backwards.“

15. 15 Lincoln 6469 What I claim as my invention and desire to secure by letters patent, is the combination of expansible buoyant chambers placed at the sides of a vessel, with the main shaft or shafts C, by means of the sliding spars or shafts D, which pass down through the buoyant chambers and are made fast to their bottoms, and the series of ropes and pullies, or their equivalents, in such a manner that by turning the main shaft or shafts in one direction, the buoyant chambers will be forced downwards into the water and at the same time expanded and filled with air for buoying up the vessel by the displacement of water; and by turning the shaft in an opposite direction, the buoyant chambers will be contracted into a small space and secured against injury.

16. 16 How to be sure Inventor reads claims Publication US 2004/0161257 A1

17. 17 Publication US 2004/0161257 A1

18. 18 US Patent 242,601 1881

19. 19 US Patent 6,932,710 B1 2005

20. 20 2. RULE 56 DISCLOSURE OBLIGATION I acknowledge the duty to disclose information which is material to patentability as defined in 37 CFR 1.56, including for continuation-in-part applications, material information which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.

21. 21 Title 37 Code of Federal Regulations 1.56- Patents, … (a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. …

22. 22 Title 37 Code of Federal Regulations 1.56 Patents, (cont) (b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or …

23. 23 Failure to Disclose – Inequitable Conduct Applicants for patents have a duty to prosecute patent applications in the Patent Office with candor, good faith, and honesty. A breach of this duty - including affirmative misrepresentations of material facts, failure to disclose material information, or submission of false material information - coupled with intent to deceive, constitutes inequitable conduct.

24. 24 SEMICONDUCTOR ENERGY LABORATORY CO., LTD., V. SAMSUNG ELECTRONICS CO., LTD., 98-1377, 99-1103 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT DECIDED: MARCH 2, 2000 We perceive no clear error in the district court's conclusion that SEL effectively failed to disclose the Canon reference to the PTO by providing a one-page, partial translation of the entire 29-page application. the '636 patent to be unenforceable – patent gone When in doubt, disclose to Patent Office

25. 25 SEL 5,543,636

26. 26 SEMICONDUCTOR ENERGY LABORATORY CO., LTD., V. SAMSUNG ELECTRONICS CO., LTD., 98-1377, 99-1103 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT DECIDED: MARCH 2, 2000 As Samsung’s expert, Dr. Fonash, explained, a fully translated Canon reference would have provided a "good blueprint" for making the exact device described by the ’636 patent. Consequently, taken together with the Tsai article, the Canon reference would have rendered obvious the asserted claims of the ’636 patent.

27. 27 MANUAL OF PATENT EXAMINING PROCEDURE Chapter 2000 Duty of Disclosure 37 CFR 1.56 further states that “no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.”

28. 28 Analysis Of 652 Patent Asserted Against Enhanced Night Vision Goggles

29. 29 Analysis Results 652 Patent Unenforceable For Failure to Disclose Material Information Eight (8) Other Independent Defenses

30. 30 1999 color publication - Fused image: 55% FLIR & 100% Color I2 Not disclosed to Patent Office

31. 31 Fused image combining Color Digital Video with FLIR imagery Not disclosed to Patent Office

32. 32.45 ACP Tracer Ammo image Color I2 & FLIR Not disclosed to Patent Office

33. 33 First Result of Analysis No lawsuit Second Result of Analysis

34. 34