1. D ANIELS B AKER Introduction to Patent Law Doug Yerkeson University of Cincinnati Senior Design Class April 6, 2005

2. 2 Why Protect Your Intellectual Property?  Provides a mechanism for stopping others from copying  Preserves your market share  Creates a barrier to entry against your competitors  Allows you to control access to a new market  Protects your research and development investment  Increases the bottom line value of your company  Provides a revenue source through sale or licensing  Acts as a bargaining chip in negotiations

3. 3 Federally Protected IP Rights  Patents  Copyrights  Trademarks Article I, §8, Cl. 8: "The Congress shall have the 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."

4. 4 Patents in General  Patents do not give the owner the right to make, use, sell or offer to sell anything.  They give the owner an exclusionary right.  Anyone making, using, selling or offering to sell the patented invention without the owner’s consent is an infringer.

5. 5 Requirements for Patentable Invention  Statutorily Patentable Subject Matter  Utility  Novelty  Non-Obvious

6. 6 What Can Be Patented?  New products or processes  Improvements on existing products or processes  Business methods  Computer software  Compositions of Matter

7. 7 Utility  Usefulness

8. 8 Novelty  The invention must not have been previously known or used by others before the applicant’s invention date or more than one year prior to the patent application filing date.  Public Use – In This Country  On Sale – In This Country  Published - Anywhere  Invention by Another – In This Country

9. 9 Non-Obviousness  Even though the precise invention was not previously known, the invention was obvious to one of ordinary skill in the art  Scope & Content of the Prior Art  Differences between the Prior Art & Invention  Level of Ordinary Skill in the Art

10. 10 Bars to Patentability United States  Application must be filed within a grace period of one year after:  Public disclosure (conventions, publications, non- confidential disclosures, etc.), OR  Offer to sell or sale of invention Most Foreign Countries  No grace period to file  Must file in U.S. or another country before public disclosure or sale/offer to sell

11. 11 Patented Combination A B C

12. 12 New Combination A B C D

13. 13 Patent Application Components  Drawings  Show preferred and alternative designs of the invention  Specification  Background and Summary of the Invention  Brief Description of the Drawings  Detailed Description of the Drawings  Describes the nuts & bolts of how to make and use the invention and its alternatives

14. 14 Patent Application Components  Claims  Define the invention(s)  A patent is infringed only if one or more of the claims cover the accused product or method  Usually, the claims are not limited to what is specifically shown in the drawings and described in the specification  Preferably, the claims cover features of the invention that provide a competitive advantage

15. 15 Patent Application The Process  Invention Disclosure Statement  Preparing and filing the application  Patent Office Action  Responses  Issuance/Appeal/Continuation

16. 16 U.S. vs. Foreign Patents  US patents only provide protection in US for:  Products & processes made, used, sold or offered for sale in U.S.  Imports into U.S.  Foreign patents must be obtained to provide protection for products and processes not made, used, offered for sale, sold, or imported in U.S.

17. 17 Patent Expiration Patents expire for:  Age (20 years from date of filing)  Failure to pay maintenance fees at 4, 8, and 12 years after issue

18. 18 Patent Protection  Patents give rights to EXCLUDE others from  Making  Using  Offering for sale  Selling  Importing  Patents do not give rights to ENGAGE in these activities.

19. 19 Patent Infringement  Patents only cover those products or processes described by the claims.  An infringing product or process must have each element of the claim.  The accused product or process may have more than required by the claim.

20. 20 Patent Infringement Test  Determine meaning of claim (“claim construction”)  Apply meaning to the accused device.  Literal Infringement  Equivalents

21. 21 Patent Rights & Remedies  Right to prevent another entity from making, using or selling a device covered by the claims of the patent  Injunctive Relief  Monetary Damages  Does not necessarily give the patent owner the right to make

22. 22 As a Practical Matter…  Loss of Investment  Time  Money  Absence from Marketplace  As a consequence, businesses need to be aware of patents in their field, particularly those of competitors

23. 23 Reasons to Design Around  Costs of Litigation “The cost to bring a patent case…ranges from $750,000 to $1 million for a simple dispute and from $4 million to $8 million for a modest one. Monster cases can cost $10 million or more.” – IP Worldwide, May 2002, p. 43

24. 24 Reasons to Design Around (cont.)  Disruption to Business During Litigation  Document Production  Depositions  Significant issue affecting business

25. 25 Avoiding Patents of Others  Look at the claims, not just the disclosure of the patent  The claims may be very narrow and may not protect the feature you want to use  Many patents can be designed around  Elimination of a claimed element avoids infringement  Avoiding literal infringement in a way that is deemed by the evidence to be significant  Look for corresponding foreign patents

26. 26 Patent Due Diligence Scope Of Review  New Products  New Processes  New Business Methods

27. 27 Patent Due Diligence How to Conduct 1.Search/Monitor:  Patent searches on relevant product lines of primary competitors  Patent searches directed to the specific product being introduced  Monitoring of relevant products being sold 2.Compare proposed new product or process to any relevant patents or competitor products 3. If necessary, search for prior art

28. 28 Patent Due Diligence When A Relevant Patent Is Found  Look at the claims, not just the disclosure of the patent.  Many patents can be designed around.  Has the patent expired?  Time or Maintenance Fee Nonpayment  Is the patent valid?

29. 29 Competitive Advantage  Patents can force hidden costs onto competitors:  Clearance Studies  Opinions  Noninfringement  Invalidity  Treble Damages & Fees  Redesigning around your patents

30. 30 Competitive Advantage (cont.)  Selling:  Written document assigning all rights  Record

31. 31 Competitive Advantage (cont.)  License:  An agreement that allows someone other than the patent owner to make, use, sell and/or offer to sell the patented invention in exchange for something else  Record

32. 32 Trademark Law

33. 33 Purpose of Trademark Law  Allow consumers to identify the source of goods or services  Ensure that consumers can rely upon a mark to identify, distinguish and indicate source without being confused by competitive products

34. 34 What Can Be a Trademark?  Almost anything that can meet the three requirements, including:  Word  Color  Sound (?)  BUT, not:  Immoral, deceptive, scandalous  Flag or coat of arms of US, state, foreign nation  Name, portrait, signature

35. 35 Copyright Law

36. 36 What Can Be Copyrighted?  Books  Manuscripts  Music  Software  Specifications  Photographs  Sculptures  Video & Audio Works

37. 37 Requirements for Copyright  Original “Work of Authorship”  Fixed in “Tangible Medium of Expression”  Copyright comes into being automatically when fixed  Registration & other “formalities” provide additional benefits

38. 38 The End  Questions?