Patent Law Presented by: Walker & Mann, LLP Walker & Mann, LLP 9421 Haven Ave., Suite 200 Rancho Cucamonga, Ca Office Fax

Patents A patent is a Constitutional right. A patent is a Constitutional right. It is granted by the U.S. Patent and Trademark Office. It is granted by the U.S. Patent and Trademark Office. It is designed to encourage inventions that are useful to society. It is designed to encourage inventions that are useful to society. w w w. w a l k e r m a n n. c o m

What is a Patent A granted property right that allows the owner “ to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States” A granted property right that allows the owner “ to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States” Term is 20 years from filing application Term is 20 years from filing application w w w. w a l k e r m a n n. c o m

Types of Patents Utility Utility  Design  Plant w w w. w a l k e r m a n n. c o m

Utility Patents Processing Methods Processing Methods Machines Machines Manufacture Manufacture Compositions of Matter Compositions of Matter Improvements to One of These Improvements to One of These w w w. w a l k e r m a n n. c o m

Design Patents Limited to the ornamental design of an invention Limited to the ornamental design of an invention Unrelated to the function of the invention Unrelated to the function of the invention Term is 14 years from date of issue Term is 14 years from date of issue w w w. w a l k e r m a n n. c o m

Patent Law Basics An invention must be useful An invention must be useful An invention must be novel An invention must be novel An invention must be non-obvious An invention must be non-obvious An invention must be fully disclosed An invention must be fully disclosed w w w. w a l k e r m a n n. c o m

Useful “Whoever invents or discovers any new and useful …” “Whoever invents or discovers any new and useful …” Must have some usefulness (utility) Must have some usefulness (utility) The invention must work The invention must work Very few patents are rejected as being non-useful Very few patents are rejected as being non-useful w w w. w a l k e r m a n n. c o m

Novel The invention must be new The invention must be new Must be different from anything previously known Must be different from anything previously known Cannot get a patent: Cannot get a patent: Known or used by others in US before date of invention Known or used by others in US before date of invention Patented or published anywhere in world before date of invention Patented or published anywhere in world before date of invention w w w. w a l k e r m a n n. c o m

Novel In public use or on sale in US more than 1 year before patent filing date In public use or on sale in US more than 1 year before patent filing date Patented or published by inventor or others anywhere more than one year before patent filing date Patented or published by inventor or others anywhere more than one year before patent filing date Invented by someone else Invented by someone else w w w. w a l k e r m a n n. c o m

Non-obvious The invention must not be obvious to a person “skilled in the art” The invention must not be obvious to a person “skilled in the art” Must not be easily created or suggested by combining two or more previously known inventions Must not be easily created or suggested by combining two or more previously known inventions w w w. w a l k e r m a n n. c o m

Fully Disclosed Patent protection is granted in exchange for disclosure of everything known about the invention Patent protection is granted in exchange for disclosure of everything known about the invention Patent application must have a full, enabling disclosure Patent application must have a full, enabling disclosure Must disclose best mode of the invention Must disclose best mode of the invention w w w. w a l k e r m a n n. c o m

Three Steps to a patent: 1. Determine Patentability 2. Conduct a Patent Search 3. File for a Patent Application w w w. w a l k e r m a n n. c o m

Patentability A. Is the utility invention: A. Is the utility invention: –A process or method? –A machine? –An article of manufacture? –A composition of matter? Or –An improvement of one in the first four categories? B. Is the utility invention: B. Is the utility invention: –Useful? –Novel? –Non-obvious? w w w. w a l k e r m a n n. c o m

Patent Search Patent search Online: Patent search Online: Patent search Offline: Patent and Trademark Depository Libraries Patent search Offline: Patent and Trademark Depository Libraries Other sources for publications and scientific articles Other sources for publications and scientific articles w w w. w a l k e r m a n n. c o m

Filing a patent Preparing and Filing a Patent Application can be an Arduous Task Preparing and Filing a Patent Application can be an Arduous Task You must consider all the Uses and Variations on your Invention You must consider all the Uses and Variations on your Invention Professional Assistance Provides the Fullest Protection Professional Assistance Provides the Fullest Protection w w w. w a l k e r m a n n. c o m

Anatomy of a Patent Specification – thorough description of invention and uses Specification – thorough description of invention and uses Claims – the legal language which defines the boundaries of the invention Claims – the legal language which defines the boundaries of the invention Drawing Drawing w w w. w a l k e r m a n n. c o m

Inventor vs. Owner An inventor is any person who has contributed to any claim of patent An inventor is any person who has contributed to any claim of patent Inventorship never changes Inventorship never changes Ownership can change Ownership can change Patents are property Patents are property Patents can be sold or assigned to others Patents can be sold or assigned to others w w w. w a l k e r m a n n. c o m

Benefits of Licensing Patent owner (licensor) promotes commercial development and generates income Patent owner (licensor) promotes commercial development and generates income Licensee is free from suit Licensee is free from suit Both parties avoid infringement litigation Both parties avoid infringement litigation w w w. w a l k e r m a n n. c o m

Licensing Terms License Grant License Grant Authorized activities: make, use, sell … Authorized activities: make, use, sell … Nature of grant: exclusive vs. non-exclusive Nature of grant: exclusive vs. non-exclusive Geographic scope Geographic scope Terms and Conditions Terms and Conditions Limitations Limitations Excluded fields of use Excluded fields of use Others Others w w w. w a l k e r m a n n. c o m

Licensing Terms Licensing Fees Licensing Fees Term and Termination Term and Termination Expiration of patent Expiration of patent Termination for convenience Termination for convenience Termination for cause Termination for cause w w w. w a l k e r m a n n. c o m

Patent Lawsuits Federal Court Jurisdiction Federal Court Jurisdiction Process Process Pleadings – Complaint & Answer Pleadings – Complaint & Answer Discovery – Written & Depositions Discovery – Written & Depositions Markman hearing Markman hearing Summary Judgment Summary Judgment Trial Trial Appeals Appeals w w w. w a l k e r m a n n. c o m

Patent Infringement Literal Literal –Requires infringement of all elements of the claim Doctrine of Equivalents Doctrine of Equivalents –Insubstantial differences in the function, method or result w w w. w a l k e r m a n n. c o m

Challenge to Patent Validity Prior Art – Anticipation or Obviousness Prior Art – Anticipation or Obviousness Indefiniteness Indefiniteness Enablement Enablement Best Mode Best Mode Inoperable Inoperable Inequitable Conduct Inequitable Conduct w w w. w a l k e r m a n n. c o m

Defenses to Infringement Non-Infringement Non-Infringement Literal Literal Doctrine of Equivalents Doctrine of Equivalents Estoppel Estoppel Latches Latches w w w. w a l k e r m a n n. c o m

Lawsuit Remedies Injunctive Relief Injunctive Relief –Temporary Restraining Order –Preliminary Injunction –Permanent Injunction Damages Damages –Lost Profits –Reasonable Royalties –Costs and Attorney Fees –Punitive Damages w w w. w a l k e r m a n n. c o m

Cease and Desist w w w. w a l k e r m a n n. c o m

Cloth Purse w w w. w a l k e r m a n n. c o m

Thank you We, at Walker & Mann, would like to thank you for your time today. Please keep us in mind in the event that we may be of service. w w w. w a l k e r m a n n. c o m

Obtain your FREE Consultation when mentioning this Presentation and Contacting: Walker & Mann, LLP 9421 Haven Ave, 2 nd Floor Rancho Cucamonga, CA Office Fax w w w. w a l k e r m a n n. c o m