Sci.Ev rjm Week 6 1 Today [Grad Students ONLY]  Instant Patent Law  Instant Civil Procedure  Looking at real things  A Complaint  A Patent, especially its claims  Next Week. For class: Re-read Daubert itself and Daubert in patent cases. New assignment: read Daubert on remand.  Housekeeping: Teams?

Sci.Ev rjm Week 6 2 OUTLINE A.What is a patent (concrete) B.What is a patent (abstract) C.Major issues in Patent Law 1.Is [it] valid? 2.Is [it] infringed? 3.So what? (Remedies) “it” refers to a specific CLAIM of the patent, not “the patent” itself

Sci.Ev rjm Week 6 3 OUTLINE A.What is a patent (concrete) B.What is a patent (abstract) C.Major issues in Patent Law 1.Is [it] valid? 2.Is [it] infringed? 3.So what? (Remedies) “it” refers to a specific CLAIM of the patent, not “the patent” itself

Sci.Ev rjm Week Can we get a patent? - Can someone else sue us on their patent? These questions reflect two basic concepts of patent law: VALIDITY and INFRINGEMENT. But to understand them, you have to understand what a patent is, and what a patent is not. Researchers Wonder:

Sci.Ev rjm Week 6 5 These questions reflect two basic concepts of patent law: VALIDITY and INFRINGEMENT. But to understand them, you have to understand what a patent is, and what a patent is not. Lisa asks:What is the difference in definition and in legal consequences for infringing literally vs. infringing under the doctrine of equivalents? Definition: Literal=every element found identically. Equivalents=triple identity test(FWR) or insubstantial differences. Legal Consequences None. Infringed is infringed. (But, there’s always the other hand: LORE, and subjective feelings of judge and jury, and proof problems, and strategic problems…)

Sci.Ev rjm Week 6 6 expired Mar. 30,1999

Sci.Ev rjm Week 6 7 What is a patent (concrete) A patent can be divided into two parts: SPECIFICATION and CLAIMS What does the patent CLAIM? The CLAIMS are the special language that defines the legal significance of the patent, validity prior art -as to its “validity” over the “prior art”, and infringement - as to someone else’s infringement of it. What does the patent teach? Find the answer in the SPECIFICATION [no S, please]: {all the talk and the figures}

Sci.Ev rjm Week 6 8 In the coffee lid patent, U.S. Patent No. 4,322,015, the SPECIFICATION is the text starting at4,322,015 column 1, line 1 and ending at column 5, line 11. The CLAIMS are the text in column 5, line 12 to the end. There is also a "cover sheet" (the top page). SPECIFICATION: The part of the patent where the inventor TEACHES you the art of the invention. CLAIMS: The part of the patent that defines the “metes and bounds” of the invention. The CLAIMS need to be valid. The CLAIMS determine what will infringe.

Sci.Ev rjm Week 6 9 why the invention is different from the prior art claim to "priority" Drawings - necessary except for chemical inventions "Preferred Embodiment" another "term of art"

Sci.Ev rjm Week 6 10 Figure 1 Claim 1

Sci.Ev rjm Week 6 11 Filing: 300/150 +Search 500/250 +Examination 200/100 +Processing: Provisional 50, Regular 130 (no small entity break) Issue Fee: $1400/700 Maintenance: 3.5 years $900; 7.5 years $2300; 11.5 years $3800 (small entities pay half) U.S. PATENT FEES (eff. Oct. 14,2006) What is a patent (concrete): What does it cost? Compare before: one fee of ~800/400 The larger number is for anyone whose patent application is ASSIGNED to a big company. Independent inventors, universities, and employees of small businesses pay the HALF rate.

Sci.Ev rjm Week 6 12 FMI/FYI The change in examination – eff. 12/8/04 The change in examination – eff. 12/8/04 “The President has signed the Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act), for the remainder of Fiscal Year 2005 (H.R. 4818). The Consolidated Appropriations Act also revises patent fees during the remainder of fiscal year 2005 and during fiscal year Specifically, for the remainder of fiscal year 2005 and for fiscal year 2006, the Consolidated Appropriations Act revises patent fees, including maintenance fees, and provides for a separate patent filing fee, search fee, and examination fee, and requires an additional fee for any patent application whose specification and drawings exceed 100 sheets of paper (application size fee). The new fees are set forth in the below fee schedule.” Q&A are linked here. here.

Sci.Ev rjm Week 6 13 What is a patent - abstract –A patent has nationality. –A patent is a right to exclude, not a right to do. –"Patents don't last forever"

Sci.Ev rjm Week 6 14 What is a patent - abstract –A patent has nationality. –A patent is a right to exclude, not a right to do. –"Patents don't last forever" Jeremy asks: Germany doesn't have to respect an American patent, but are there laws on imports of foreign goods that would infringe an American patent if they were manufactured in the US? Answer: Yes. Infringement = MUOSI (used to be MUS) Make, Use, Offer for Sale, Sell, Or Import

Sci.Ev rjm Week 6 15 What is a patent - abstract –A patent has nationality. –A patent is a right to exclude, not a right to do. –"Patents don't last forever" Jeremy asks: Germany doesn't have to respect an American patent, but are there laws on imports of foreign goods that would infringe an American patent if they were manufactured in the US? Answer: Yes. Infringement = MUOSI (used to be MUS) Make, Use, Offer for Sale, Sell, Or Import Alvin’s Answer: A patent is a right granted by the U.S. government to the patent owners to exclude others from making, using, and selling the invention IN THE U.S. or importing the invention INTO THE U.S. If foreign goods are manufactured in a foreign country, they must comply with U.S. patent laws when brought into the U.S. for commercial purposes. If foreign goods are manufactured in the U.S., undoubtedly they must abide by the U.S. patent laws.

Sci.Ev rjm Week 6 16 What is a patent - abstract –A patent has nationality. –A patent is a right to exclude, not a right to do. –"Patents don't last forever" Alvin asks: A1. [Types of US Patents, p12] I have heard of the terms: "Utilities Patent", "Plant Patent", etc. It seems that there are a few types of US Patents. I would like to know more about them and how patents are different from other IPs, such as Copyrights, etc. Answer: There are 3 types of patent: utility, plant (on asexually reproduced plants), and designs (on the esthetic appearance of a device; but if the appearance has a functional aspect, it can’t be protected by the DESIGN patent…) Copyright protects {creative} EXPRESSION (not idea). Patents protect [claimed] inventions. Trademarks protect identification of origin (sort of).

Sci.Ev rjm Week 6 17 Patent laws are territorial: You can not sue in the US for infringement of a Korean, German or British patent, and vice versa. But stay tuned for Microsoft v. AT&T, currently before the Supreme Court… And of course there are wrinkles for things assembled overseas and brought here, or assembled in parts here and sold overseas…

Sci.Ev rjm Week 6 18 A patent confers the right to exclude, NOT the right to do W invents and patents the WHEEL. B later invents and patents the BICYCLE. Who can make and sell BICYCLES?

Sci.Ev rjm Week 6 19 A patent confers the right to exclude, NOT the right to do Not W, without a license from B -- or the risk of a lawsuit. Not B, without a license from W -- or the risk of a lawsuit (unless B wants to sell wheel-less frames to W’s customers). Who can make and sell BICYCLES?

Sci.Ev rjm Week 6 20 The Right to Exclude A patent confers the Right to Exclude -- NOT The Right to Do so what happens when patents COMPETE? Licensing Retreat - Retool Lawsuit FISH STORY [M&A]

Sci.Ev rjm Week 6 21 How the dilemma may be resolved OR

Sci.Ev rjm Week 6 22 “Patents don’t last forever.” FRONT END: In general, you can not enforce your patent against infringers until the patent ISSUES. The patent process can take several years: APPLICATION EXAMINATION (office actions [rejections], amendments, appeals) ISSUANCE At every step, you pay the Patent Office a fee. = SUE! [start a lawsuit]

Sci.Ev rjm Week 6 23 “Patents don’t last forever.” FRONT END: In general, you can not enforce your patent against infringers until the patent ISSUES. The patent process can take several years: APPLICATION EXAMINATION (office actions [rejections], amendments, appeals) ISSUANCE At every step, you pay the Patent Office a fee. = SUE! [start a lawsuit] Fernando asks: Slide 18: according to the slides the delay between filing a patent and issuing it can be between 2 ‑ 5 years. If you are in cutting edge technology how can you wait for your patent to be issued to enforce it? By the time you enforce it your competitor probably has a dominant position in the market or the technology has changed. Answer: See next slides regarding pre-issuance recovery. Practical solutions: Write broad claims, so you can assert infringement against later developments. Even if your competitor has a dominant position (or because of it) your potential to get an injunction, not to mention damages, might lead to a favorable settlement – or merger …

Sci.Ev rjm Week 6 24 “Patents don’t last forever.” FRONT END: In general, you can not enforce your patent against infringers until the patent ISSUES. The patent process can take several years: APPLICATION EXAMINATION (office actions [rejections], amendments, appeals) ISSUANCE At every step, you pay the Patent Office a fee. = SUE! [start a lawsuit] Fernando asks: Slide 18: according to the slides the delay between filing a patent and issuing it can be between 2 ‑ 5 years. If you are in cutting edge technology how can you wait for your patent to be issued to enforce it? By the time you enforce it your competitor probably has a dominant position in the market or the technology has changed. Answer: See next slides regarding pre-issuance recovery. Practical solutions: Write broad claims, so you can assert infringement against later developments. Even if your competitor has a dominant position (or because of it) your potential to get an injunction, not to mention damages, might lead to a favorable settlement – or merger … Chrissy’s Answer” You are free to market your invention while the patent is pending, so you will still have the "first- to-market" advantage over your competitors. (On Sale Bar does not apply here b/c you have already applied for the patent.) I would also think that in fast moving technology sectors a lot of inventors would apply for provisional patents to establish their ownership as quickly as possible.

Sci.Ev rjm Week 6 25 “Patents don’t last forever.” Great Minds Dept. Lisa asks: In what ways is your invention protected during the time between the filing date and when the patent is issued? Angela asks: Do you get any legal protection after you have filed the patent application but before the patent issues? Answer In the old days, not at all. The law passed in 1999 that provided for LAYING OPEN (aka publication) of applications 18 months after filing. This legislation was enacted in order for the US to be in harmony with the rest of the world, changed things. Now if a patent issues with a claim that is substantially similar to an issued claim filing, the owner is entitled to a reasonable royalty (but not lost profits…) See 35 USC 154(d).

Sci.Ev rjm Week usc 154(d) (d) Provisional Rights.— (1) In general.— In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122 (b), or in the case of an international application filed under the treaty defined in section 351 (a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued— (A) (i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or122(b)351(a) (ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and (B) had actual notice of the published patent application and, in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a translation of the international application into the English language. (2) Right based on substantially identical inventions.— The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.

Sci.Ev rjm Week 6 27 MIDDLE: Maintenance fees must be paid to the Patent Office to keep the patent in force. These fees must be paid in every country where you want patent protection. The fees to the various Patent Offices are only part of the costs. The other part is attorney fees. You will usually hire an attorney during the application process. You may also hire an attorney after the patent issues if you want to license or sue on your patent. “Patents don’t last forever.”

Sci.Ev rjm Week 6 28 END: Patents expire after a certain amount of time. (Generally, 20 years from date of FILING.) So, how long DO patents last? Roughly, about 18 years, if all the fees are paid, and you have an easy time in the Patent Office (2 years from application to issuance) “Patents don’t last forever.”

Sci.Ev rjm Week 6 29 The parts of a patent: the specification and the claims –and the claim chart –The idea of a patent search The phrase " prior art " The concept " person of ordinary skill in the art " Concepts and "terms of art" Major Issues in Patent Law Is it valid? Is it infringed? So what?

Sci.Ev rjm Week 6 30 “anticipated” means the CLAIMED invention is found in a SINGLE piece of prior art Validity – to be valid a claim must be “new” (not ANTICIPATED, and not OBVIOUS) and “useful” Is it valid? Is it infringed? So what?

Sci.Ev rjm Week 6 31 claim chart prior art If you made a claim chart, with each element of the claim on the left side, you could complete the right side by quoting/pointing to something in this single piece of prior art. What if something is missing in that piece, but you can find it in some other piece? Answer: then maybe the claimed invention is ‘OBVIOUS.’ Claim Chart – a 2 column chart that permits you to compare the claim of a patent to something else, in a visually informative way. prior art Prior Art – evidence that the invention, or at least some aspects of it, existed before this inventor’s activities. Actual devices, journal articles, advertisements, manuals, and of course other patents, can all be prior art.

Sci.Ev rjm Week 6 32 The Claim 1. A container lid... comprising: - a central portion --adapted to nest within and below the rim of a container and -- rim engaging means --- around the entire periphery of the lid, - said rim engaging means being adapted to secure said lid... The Prior Art pretty standard stuff for a coffee lid Claim Chart

Sci.Ev rjm Week 6 33 THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA) Does the specification ENABLE the POSITA to make and use the invention? Are the claims OBVIOUS to the POSITA? OBVIOUSNESS, as well as other things in patent law, are judged from the point of view of:

Sci.Ev rjm Week 6 34 THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA) Does the specification ENABLE the POSITA to make and use the invention? Are the claims OBVIOUS to the POSITA? OBVIOUSNESS, as well as other things in patent law, are judged from the point of view of: Jeremy asks: 2. How can one possibly place constraints on "obviousness," especially at the level of issuing the patent before any kind of suit. Who's making the argument in either direction, and who's making the judgment? Answer: 102: A patent shall be issued UNLESS. Thus the PTO has the BOP (preponderance) to show that the invention is obvious. 282: Once issued, the patent is PRESUMED valid. And so on. It seems to me that virtually every patent of recombinant DNA except the first one is obvious. Same question, but for usefulness. Lots of things that are patented are only useful for doing scientific experiments. So, if I made a random protein sequence, it would be useful for studying the properties of random sequences. Can I patent that? Answer: We can discuss ‘intermediate’ inventions, and inventions of research tools and …

Sci.Ev rjm Week 6 35 THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA) Does the specification ENABLE the POSITA to make and use the invention? Are the claims OBVIOUS to the POSITA? OBVIOUSNESS, as well as other things in patent law, are judged from the point of view of: Jeremy asks: 2. How can one possibly place constraints on "obviousness," especially at the level of issuing the patent before any kind of suit. Who's making the argument in either direction, and who's making the judgment? Answer: 102: A patent shall be issued UNLESS. Thus at the application stage, the PTO has the BOP (preponderance) to show that the invention is obvious. 282: Once issued, the patent is PRESUMED valid, and the AI has the BOP (clear & convincing) to show it is NOT valid. It seems to me that virtually every patent of recombinant DNA except the first one is obvious. Same question, but for usefulness. Lots of things that are patented are only useful for doing scientific experiments. So, if I made a random protein sequence, it would be useful for studying the properties of random sequences. Can I patent that? Answer: We can discuss ‘intermediate’ inventions, and inventions of research tools and … Angela answer: The standard for assessing non-obviousness is made to a person having ordinary skill in the art (PHOSITA). There are three factors to consider when deciding whether an invention is obvious or not: the scope and content of the prior art; differences between the prior art and the claims at issue; and the level of PHOSITA. If a PHOSITA, given the prior art, would immediately see what the person seeking the patent did at the time the invention was made, then it would fail the non-obvious requirement. Regarding the usefulness requirement, I think it is a relatively rare issue in the Patent Office and a rather minimal obstacle to obtaining a patent. A patent will not be withheld even if the invention works only in an experimental setting and has no proven use in the factory. In this case, the utility requirement would be met as long as you could show any specific utility for the protein sequence when the patent is filed. My understanding is that only if an invention has absolutely no practical utility will a patent be denied.

Sci.Ev rjm Week 6 36 THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA) Does the specification ENABLE the POSITA to make and use the invention? Are the claims OBVIOUS to the POSITA? OBVIOUSNESS, as well as other things in patent law, are judged from the point of view of: Angela answer: The standard for assessing non-obviousness is made to a person having ordinary skill in the art (PHOSITA). There are three factors to consider when deciding whether an invention is obvious or not: the scope and content of the prior art; differences between the prior art and the claims at issue; and the level of PHOSITA. If a PHOSITA, given the prior art, would immediately see what the person seeking the patent did at the time the invention was made, then it would fail the non-obvious requirement. Regarding the usefulness requirement, I think it is a relatively rare issue in the Patent Office and a rather minimal obstacle to obtaining a patent. A patent will not be withheld even if the invention works only in an experimental setting and has no proven use in the factory. In this case, the utility requirement would be met as long as you could show any specific utility for the protein sequence when the patent is filed. My understanding is that only if an invention has absolutely no practical utility will a patent be denied. RJM NOTE: Utility became a big issue in biotech in the 80s- 90s (often for the reasons Jeremy alludes to). The PTO issued special directives about UTILITY. (Cite available).

Sci.Ev rjm Week 6 37 What is “prior”? Anything more than 1 year before your application date ALSO Anything that is before your invention date. TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT US PATENT LAW: The on-sale bar: anything YOU did more than a year before your application date could invalidate your patent. The duty of candor: you MUST tell the Patent Office what you know about prior art. You don’t have to search, but you have to be honest about what you know, and what you find.

Sci.Ev rjm Week 6 38 What is “prior”? Anything more than 1 year before your application date ALSO Anything that is before your invention date. TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT US PATENT LAW: The on-sale bar: anything YOU did more than a year before your application date could invalidate your patent. The duty of candor: you MUST tell the Patent Office what you know about prior art. You don’t have to search, but you have to be honest about what you know, and what you find. Jeremy asks: 3. Can a patent holder invalidate his patent by not being candid about something he knew about that was a _potential_ case of prior art, even if that potential piece of prior art later turns out to be ruled to not be prior art by a court. In other words, can you get in trouble for hiding something regardless of whether that thing turns out to be relevant to your patent? Answer: Yes. It’s a jungle out there. But the law does evolve (and smart people settle…) Issues on “inequitable conduct”: intent and materiality.

Sci.Ev rjm Week 6 39 What is “prior”? Anything more than 1 year before your application date ALSO Anything that is before your invention date. TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT US PATENT LAW: The on-sale bar: anything YOU did more than a year before your application date could invalidate your patent. The duty of candor: you MUST tell the Patent Office what you know about prior art. You don’t have to search, but you have to be honest about what you know, and what you find. Chrissy asks: 1. Slide 26 - Self-Invalidation What is the logic behind "on-sale bar" invalidating your own patent? Is this a problem for patents coming out of academic labs where a lot information/knowledge is shared with collaborators? What if a patent evolves out of a project that has taken years to complete and has produced multiple papers?

Sci.Ev rjm Week 6 40 Chrissy asks: 1. Slide 26 - Self-Invalidation What is the logic behind "on-sale bar" invalidating your own patent? Is this a problem for patents coming out of academic labs where a lot information/knowledge is shared with collaborators? What if a patent evolves out of a project that has taken years to complete and has produced multiple papers? Answer: 1. The sin of commercial exploitation (applies to things SOLD as well as papers). 2. The sanctity of the public domain. Answer: 1. File your paper(s) as provisionals….

Sci.Ev rjm Week 6 41 TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT US PATENT LAW: The on-sale bar: anything YOU did more than a year before your application date could invalidate your patent. The duty of candor: you MUST tell the Patent Office what you know about prior art. You don’t have to search, but you have to be honest about what you know, and what you find. Angela asks: Can you deliberately not do any search on prior art and simply claim to the PTO that you are not aware of any prior art when filing a patent? Would the PTO actually check for prior art themselves? Answer: There is no duty to search but there IS a duty to tell what you know. (Who is “YOU”? See Rule 56). And yes, the PTO does a search, but the examiner may not be as good as the inventors – or, later, the accused infringers. Why SHOULD you do a search?

Sci.Ev rjm Week 6 42 Lisa answers: First, many inventors are well aware of other work being done in their field and therefore would have a good idea about the prior art even if they don't specifically search for it. Second, the examiners at the PTO may search for prior art. Examiners generally work in a narrow field and so they are often well versed in the prior art in any case. Angela asks: Can you deliberately not do any search on prior art and simply claim to the PTO that you are not aware of any prior art when filing a patent? Would the PTO actually check for prior art themselves? Answer: There is no duty to search but there IS a duty to tell what you know. (Who is “YOU”? See Rule 56). And yes, the PTO does a search, but the examiner may not be as good as the inventors – or, later, the accused infringers. Why SHOULD you do a search?

Sci.Ev rjm Week 6 43 What is “prior”? Anything more than 1 year before your application date ALSO Anything that is before your invention date. Lisa asks: Does the on-sale bar apply only to your own published work and patents? What if it has taken you several years to develop your invention and notebook entries from years back anticipate your invention?

Sci.Ev rjm Week 6 44 Infringement: get out that old claim chart. Write the claim in the left column. The right hand column will have information about the “accused device.” invalid If the claim “reads on” the prior art, it is invalid. infringed If the claim “reads on” the accused device, it is infringed. Is it valid? Is it infringed? So what?

Sci.Ev rjm Week 6 45 So what? “Damages”: no LESS than a “reasonable royalty” Opportunity for Multiplying those “damages” by a number up to 3 Opportunity for having the other side pay your attorney fees Prejudgment interest Injunctions: preliminary or permanent Is it valid? Is it infringed? So what? If the patent owner violated the duty of candor, for example by knowing it has an “on-sale bar” and not telling the Patent Office, and despite that the patent owner pursues the lawsuit, the court could order it to pay the accused infringer’s attorney fees.

Sci.Ev rjm Week 6 46 BACK TO YOUR QUESTIONS Can we get a patent?  Who is "we"?  And a patent on what? the device ? a "method of doing business" ? a special component or material ?

Sci.Ev rjm Week 6 47 Who is - or should be - "WE" : that is: Who qualifies as an "inventor"? Some possible answers –Everyone on the team –The professors –The person who machines some parts for the prototype, writes some code for the software, etc. X wrong ^ CAN WE GET A PATENT?

Sci.Ev rjm Week 6 48 Who qualifies as an "inventor"? Forget politics Never lie to the Patent Office Different "claims" (different aspects of the invention) may have different inventors Chrissy asks: Who does qualify as an inventor? Is there any advantage to listing more/less inventors on your patent? Answer: Invention = conception (as in other areas, sort of, usually) No real harm in listing the wrong people except - If done with deceptive intent - If there is a subsequent falling out of love: Each inventor can license the invention without getting the consent of the others (and maybe without owing them a penny??)

Sci.Ev rjm Week 6 49 Who qualifies as an "inventor"? Forget politics Never lie to the Patent Office Different "claims" (different aspects of the invention) may have different inventors Fernando asks: Slide 31: I don't understand it. What has to do who qualifies as an inventor with not lying to the patent office? Who will benefit from putting extra inventors or fake inventors? What is the final answer to the main question of the slide? Why lie to the patent office? Because inventors DO have certain advantages that non-inventors don’t? Because you and the non-inventor have some other shady deal going? Because? The fake inventors might benefit from getting a piece of the invention. Final answer: see previous slide.

Sci.Ev rjm Week 6 50 Who qualifies as an "inventor"? Forget politics Never lie to the Patent Office Different "claims" (different aspects of the invention) may have different inventors Alvin asks:A2. [Inventors and Novelty, p31 and p22] On p31, who DECIDES on inventorship? What if there is a dispute among the possible inventors? On p22, I thought you said on the first day of class (Week 4 for grad students) that a patent does not have to be "new", but it has to be "different". Maybe I misheard you or someone in class. Answer: See above regarding inventorship. Disputes? Contract law! Unjust enrichment! (equitable cause of action). NO, I said it does not have to be BETTER, it just has to be different. It does have to be “new”. NEW means novel (not anticipated: no SINGLE piece of prior art has all the elements) or nonobvious.

Sci.Ev rjm Week 6 51 Can we get a patent? –Why would we want to? Protect the “exclusivity” we hope to get (anyway) by being first-to-market Bargaining chip/defensive strategy Financing/Venture capital –What country/countrieses? –How much will it (they) cost? Fees to the Patent Office + Fees to attorneys

Sci.Ev rjm Week 6 52 Can we get a patent? Answer: Yes, unless there is PRIOR ART that TEACHES the POSITA how to make and use our invention. (If that PRIOR ART is a patent, it will TEACH this in its SPECIFICATION.) If there is such prior art, then the PRIOR ART will make our CLAIMS unpatentable (=invalid) by making them OBVIOUS or ANTICIPATED. [The CAPITALIZED words are all “terms of art.”]

Sci.Ev rjm Week 6 53 Can someone else sue us on their patent? Answer: NO, unless their CLAIMS “READ ON” our device or method. If one or more of their patent’s claims do “read on” our device, they may sue us (or offer us a license). If we are sued, it will not help us that - we did not know they had a patent, or - we invented the thing ourselves (we did not copy) INNOCENT INFRINGEMENT IS STILL INFRINGEMENT.

Sci.Ev rjm Week 6 54 If we make our product, can someone else sue us for patent infringement? How will we know? WE find their patent THEY find us How can we protect ourselves from aggressive patent owners? –FIRST, get educated –Then maybe Get a license Design Around Get an opinion of counsel

Sci.Ev rjm Week 6 55 Thank You. Questions?

Sci.Ev rjm Week 6 56 Let W(x) be the operation of determining the worth of x; and let P=pictureF=figure C=ChartG=Graph D=DiagramH=Histogram E=EquationI=illustration w=word and let P = C ∪ D ∪ E ∪ F ∪ G ∪ H ∪ I then W(P) ≥ 1000W(w)

Sci.Ev rjm Week 6 57 A.YOUR QUESTIONS -- Concepts –SEARCHING FOR PATENTS (US) number search word search –Technology –Assignee using the PTO's Classification System (often the best) –Finding the right class/subclasses »use a patent you know about »word search the index

Sci.Ev rjm Week 6 58 A.YOUR QUESTIONS -- Concepts –"Prior Art" Patents Printed Publications –Books, Theses, Journal Articles, Print Advertisements and Brochures, Websites (even) "THINGS" - real objects that are "known or used" [by the public] or "in public use or on sale" Your own activities (more than 1 year before your US filing date)

Sci.Ev rjm Week 6 59 A.YOUR QUESTIONS -- Concepts Your own activities (more than 1 year before your US filing date) If you offer your product for sale, even if you do not have a working prototype, that COULD “start the clock.” Patent lawyers speak of the ON SALE bar, but the bar applies to offers, and to publications, preprints, trade show displays, etc. Other countries do not give you a ONE-YEAR grace period.

Sci.Ev rjm Week 6 60 B. VALIDITY & INFRINGEMENT The ‘duty of candor’ who has it, and what those folks must do consequences of violation of this duty –The WHOLE patent is unenforceable – The patent owner may be liable for attorney fees of the accused infringer who defeated it

Sci.Ev rjm Week 6 61 B. VALIDITY & INFRINGEMENT Validity of the specification –description –'enablement’ –'best mode’ Validity of the claims –Use Claim Chart to compare claims to prior art - “alone or in combination”

Sci.Ev rjm Week 6 62 B. VALIDITY & INFRINGEMENT Some things we may have left unsaid: Do you need a working prototype to apply for a patent? –"Conception" and "Reduction to Practice" –Why do an 'actual' reduction to practice? –Why not? "Provisional Applications"

Sci.Ev rjm Week 6 63 B. VALIDITY & INFRINGEMENT Some things we may have left unsaid: Do you need a working prototype to apply for a patent? –"Conception" and "Reduction to Practice" –Why do an 'actual' reduction to practice? –Why not? "Provisional Applications" Chrissy asks: If the benchmark for evaluating a patent is whether a POSITA could follow the teachings of the patent, how can it be evaluated if an expert has never attempted to produce a prototype? Answer: the POSITA is a myth anyway, so you just mythologize about whether the POSITA could have made the invention. (Cf. ENABLEMENT) Why would you spend all of this money on a patent if you hadn't worked the bugs out of the prototype? Answer: Why, indeed? Why the rush, also? The on-sale bar, perhaps, or knowledge of a competitor’s introduction of a new product, one you think may be unpatented…

Sci.Ev rjm Week 6 64 B. VALIDITY & INFRINGEMENT Some things we may have left unsaid: Do you need a working prototype to apply for a patent? –"Conception" and "Reduction to Practice" –Why do an 'actual' reduction to practice? –Why not? "Provisional Applications" Fernando asks: Slide 43: I am confused with the terms "conception" and "reduction to practice". Do we need a working prototype to apply? I think the answer is no, but it is not clear to me from the slide. Answer: You’re right. You don’t need it to file the application. But the practical question – do you need it if you’re going to bother spending all that time and money getting a patent – may have a different answer!

Sci.Ev rjm Week 6 65 B. VALIDITY & INFRINGEMENT Some things we may have left unsaid: Do you need a working prototype to apply for a patent? –"Conception" and "Reduction to Practice" –Why do an 'actual' reduction to practice? –Why not? "Provisional Applications" Lisa asks: If you don't have to physically make the invention to get a patent, how close to being able to do so must you be? What if someone tries to follow your patent to make your invention later on and finds out that it cannot be made as you specify? Shorthand Answer: ENABLEMENT, and invalidity for lack thereof.

Sci.Ev rjm Week 6 66 B. VALIDITY & INFRINGEMENT Some things we may have left unsaid: Do you need a working prototype to apply for a patent? –"Conception" and "Reduction to Practice" –Why do an 'actual' reduction to practice? –Why not? "Provisional Applications" Lisa asks: If you don't have to physically make the invention to get a patent, how close to being able to do so must you be? What if someone tries to follow your patent to make your invention later on and finds out that it cannot be made as you specify? Shorthand Answer: ENABLEMENT, and invalidity for lack thereof. Jeremy’s Answer: I am not certain about this, but I think this turns on whether or not the product is an obviously combination of existing technologies. I can't patent a time machine without a prototype because no one would consider it obvious that my claim of having a good design for a time machine was true. But if I'm just hooking two things together, and it's apparent how they'd function, then I don't need to make a prototype. And then at some later point, I will probably be in a weaker position when trying to argue if I get caught up in litigation than if I had a real device to point to. But I may be someone who just wants to turn a lot of ideas into a defense against being sued by someone else for doing something I need to do, or else maybe I don't want to do any work, but just want to try to make money by patenting lots of ideas and hoping some of them are defensible.

Sci.Ev rjm Week 6 67 B. VALIDITY & INFRINGEMENT Some things we may have left unsaid: Do you need a working prototype to apply for a patent? –"Conception" and "Reduction to Practice" –Why do an 'actual' reduction to practice? –Why not? "Provisional Applications" Lisa asks: If you don't have to physically make the invention to get a patent, how close to being able to do so must you be? What if someone tries to follow your patent to make your invention later on and finds out that it cannot be made as you specify? Shorthand Answer: ENABLEMENT, and invalidity for lack thereof. Fernando’s Answer: I believe you don't have to be any close to being able to physically make the invention in order to patent it. There are companies that specialize in patenting schemes or devices but they never build the device because it is too expensive to do so. They just try their ideas in computer simulations. If somebody tries to follow the patent and finds out that it can not be made then they don't have to worry anymore about patent infringement. The patent can be declared invalid since it doesn't specify enough how to build the idea for a person of ordinary skill in the art.

Sci.Ev rjm Week 6 68 B. VALIDITY & INFRINGEMENT Some things we may have left unsaid: Do you need a working prototype to apply for a patent? –"Conception" and "Reduction to Practice" –Why do an 'actual' reduction to practice? –Why not? "Provisional Applications" Alvin asks: A3. [Reduction to Practice, p43] I would like to know more about "Reduction to Practice" and "Provisional Applications". They are, indeed, relevant to me. Answer: See previous slides regarding RTP. We will probably have talked about provisionals in connection with FEES.

Sci.Ev rjm Week 6 69 B. VALIDITY - patent applications Filing Date, and 'Office Actions' –Unique to the US: 'Interferences' and the 'first-to- invent' system Why you must keep lab notebooks What to do with them, and how often –Other Countries: OPPOSITIONS What the Patent Examiner Will Probably Do: REJECT the CLAIMS

Sci.Ev rjm Week 6 70 B. VALIDITY - patent applications How to respond to a Final Rejection: Amend, Appeal, Abandon –The Three A's and when and why to do which

Sci.Ev rjm Week 6 71 B. INFRINGEMENT - protecting patent rights –Marking (Why does our coffee lid have a patent number?) –Writing a Letter Licensing Starting the “damages” clock (“They” can’t plead ignorance)

Sci.Ev rjm Week 6 72 B. VALIDITY & INFRINGEMENT –Calculating the "TERM" of a Patent [that is, determining when it expires] Concepts you need: –EARLIEST and MOST RECENT APPLICATION –"F+20" »F = filing date of EARLIEST application »20 = 20 years (to the day) –"I+17" »I = issue date of patent »17 = 17 years (to the day) –WARNING: Calculation assumes that patent owner pays all the MAINTENANCE FEES

Sci.Ev rjm Week 6 73 Calculating the “term” of a US Patent No Which is later? 17 years from date of issue OR 20 years from date of filing of EARLIEST [US, regular] application Term is I+17 Term is F+20 Patent expires 20 years from date of EARLIEST application Was the MOST RECENT application on file by 6/8/95?

Sci.Ev rjm Week 6 74 A.YOUR QUESTIONS -- Concepts [specification and claims]

Sci.Ev rjm Week 6 75 The two basic LIABILITY issues of patent law: VALIDITY and INFRINGEMENT VALIDITY: whether the invention - as CLAIMED - is "new." If it is, and if the application meets the other legal requirements, the patent is VALID. Patents are EXAMINED before they are issued (unlike copyrights). They are PRESUMED valid in court, but can be proven invalid. INFRINGEMENT: whether some UNAUTHORIZED person is using the inventions as CLAIMED.

Sci.Ev rjm Week 6 76 A.YOUR QUESTIONS -- Concepts What is the legal significance of the SPECIFICATION (no “s”) and and of the CLAIMS in connection with VALIDITY? We'll need one more "term of art": THE "PERSON OF ORDINARY SKILL IN THE ART" (POSITA) Does the specification ENABLE the POSITA to make and use the invention? Are the claims OBVIOUS to the POSITA?

Sci.Ev rjm Week 6 77 A.YOUR QUESTIONS -- Concepts –"Prior Art" Patents Printed Publications –Books, Theses, Journal Articles, Print Advertisements and Brochures, Websites (even) "THINGS" - real objects that are "known or used" [by the public] or "in public use or on sale" Your own activities (more than 1 year before your US filing date)

Sci.Ev rjm Week 6 78 A.YOUR QUESTIONS -- Concepts Your own activities (more than 1 year before your US filing date) If you offer your product for sale, even if you do not have a working prototype, that COULD “start the clock.” Patent lawyers speak of the ON SALE bar, but the bar applies to offers, and to publications, preprints, trade show displays, etc. Other countries do not give you a ONE-YEAR grace period.

Sci.Ev rjm Week 6 79 B. VALIDITY & INFRINGEMENT Validity of the specification –description –'enablement’ –'best mode’ Validity of the claims –Use Claim Chart to compare claims to prior art - “alone or in combination”

Sci.Ev rjm Week 6 80 B. VALIDITY & INFRINGEMENT The ‘duty of candor’ who has it, and what those folks must do consequences of violation of this duty –The WHOLE patent is unenforceable – The patent owner may be liable for attorney fees of the accused infringer who defeated it

Sci.Ev rjm Week 6 81 B. VALIDITY & INFRINGEMENT Some things we may have left unsaid: Do you need a working prototype to apply for a patent? –"Conception" and "Reduction to Practice" –Why do an 'actual' reduction to practice? –Why not? "Provisional Applications"

Sci.Ev rjm Week 6 82 B. INFRINGEMENT - protecting patent rights –Marking (Why does our coffee lid have a patent number?) –Writing a Letter Licensing Starting the “damages” clock (“They” can’t plead ignorance)

Sci.Ev rjm Week 6 83 C. REMEDIES Now let’s consider what the outcome of a patent infringement lawsuit might be. We may be the patent owner, and we may be the accused infringer in that lawsuit. Or we might even be both!

Sci.Ev rjm Week 6 84 C. REMEDIES –Injunctions (shutting down your plant) If the patent owner asks for a “preliminary injunction” the accused infringer will face enormous time presssure in mounting a defense Whether or not the patent owner obtains a preliminary injunction (one entered before the complete trial on all the facts), the patent owner will very often obtain a “permanent injunction” against any further infringement –Contempt proceedings (for violating an injunction)

Sci.Ev rjm Week 6 85 C. REMEDIES –Injunctions (shutting down your plant) If the patent owner asks for a “preliminary injunction” the accused infringer will face enormous time presssure in mounting a defense Whether or not the patent owner obtains a preliminary injunction (one entered before the complete trial on all the facts), the patent owner will very often obtain a “permanent injunction” against any further infringement –Contempt proceedings (for violating an injunction) Angela asks: How is it decided that the patent owner would get an injunction or monetary compensation for damages? Answer: The Patent Owner gets to choose (and then gets to prove its entitlement). Why (not) choose both?

Sci.Ev rjm Week 6 86 SUMMARY You can get a patent, and maybe it is worth doing so. It is certainly worth checking whether you are likely to infringe, especially the patents of your big, strong competitors –In (either) process, you may find some expired or disclaimed patents with good ideas in them. –It pays to pay attention to patents.

Sci.Ev rjm Week 6 87

Sci.Ev rjm Week 6 88 Patents Lisa’s Patent Lisa’s Patent as guinea pig, beauty contest winner, etc.

Sci.Ev rjm Week 6 89 Civil Procedure Federal v. State Courts Federal Court Jurisdiction –Amount in Controversy –Personal Jurisdiction (“touching with the magic paper”) –Federal Question or “DIVERSITY” Patent law is a federal question. What cases involving patents might be tried in STATE court, or might require DIVERSITY to be tried in Federal Court? Appellate Jurisdiction –Final Judgment Rule –Federal Circuit, rather than regional circuits Useful site for statutes

Sci.Ev rjm Week 6 90 Civil Procedure – The Magic Paper The Complaint Example: Ampex v. MitsubishiAmpex v. Mitsubishi

Sci.Ev rjm Week 6 91 Civil Procedure – Final Judgment Rule Final Judgment Rule – (28 USC 1291) rather than part of FRCivP or FRAppP28 USC 1291 Rule 54, FRCivP Rule 54, FRCivP is a bit circular on this subject Vocabulary: INTERLOCUTORY APPEAL PRELIMINARY INJUNCTION (injunction orders are the exception to the FINAL JUDGMENT Rule) ACCOUNTING (equity’s word for DAMAGES) (permits patent cases to be appealed before damages trial; not true for other civil actions)

Sci.Ev rjm Week 6 92 Civil Procedure – Final Judgment Rule Markman Hearing decisions (claim construction) that do not end in a final judgment (why not?) are not appealable by right, and the Federal Circuit routinely refuses to accept interlocutory appeals from Markman Orders. How practitioners deal with this - concede issues (for purposes of appeal) - ask for preliminary injunction

Sci.Ev rjm Week 6 93 Civil Procedure Federal v. State Courts Federal Court Jurisdiction –Amount in Controversy –Personal Jurisdiction (“touching with the magic paper”) –Federal Question or “DIVERSITY” Patent law is a federal question. What cases involving patents might be tried in STATE court, or might require DIVERSITY to be tried in Federal Court? Appellate Jurisdiction –Final Judgment Rule –Federal Circuit, rather than regional circuits

Sci.Ev rjm Week 6 94 Next Week Daubert in the Supreme Court; Daubert in Patent Cases; Daubert on remand (9 Cir.)

Sci.Ev rjm Week 6 95 Law Students Eltoukhy, Adam:EEPOSan Jose,CairoSanta Clara U Fan, Jason: EEAIBethesdaMDHarvard Huang, Henry: ChemPOLos AlamosHarvard Rosas, Ann Marie: ChemE AIPhoenixAriz.S.U. Grad Students Amat, FernandoEEBarcelonaTechU of Catalonia Brown, ChrissyChem Alexandria,KY UKy Barlian, AlvinMEJakartaPurdue England, JeremyPhysDurham,NHHarvard Perlson, Lisa (abs 11/15) ChemPlainviewNYBarnard Zhang, AngelaImmunBeijingBerkeley Grad Student Auditors Schuller, JonAppPhy?? Antoine, ChristopheEEVersaillesSupelec Finkelstein, IlyaChemSan Diego,CABerkeley Now we are 4+6+?

Sci.Ev rjm Week 6 96 Eltoukhy, Adam:EEPOSan Jose,CairoSanta Clara U Fan, Jason: EEAIBethesdaMDHarvard Amat, FernandoEEBarcelonaTechU of Catalonia Antoine, ChristopheEEVersaillesSupelec England, JeremyPhysDurham,NHHarvard Finkelstein, IlyaChemSan Diego,CABerkeley Huang, Henry:ChemPOLos AlamosHarvard Rosas, Ann Marie: ChemE AIPhoenixAriz.S.U. Barlian, AlvinMEJakartaPurdue Brown, ChrissyChem Alexandria,KY Kentucky Perlson, Lisa-abs11/15ChemPlainviewNYBarnard Zhang, AngelaImmunBeijingBerkeley Schuller, Jon (Aud) AppPhys Tentative Groups?

Sci.Ev rjm Week 6 97 Are there at least 4 grad students who have the time to be in the simulations? It will be very hard for the law students if there is less than one witness per attorney. A number other than 4 (more than 4 but less than 8, or less than 4) means finding some creative solutions by early November. By 11/1 we will have to engrave things in stone in order for everyone to get the most benefit out of doing the simulations. Tentative Groups?