LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Patents Michael I. Shamos, Ph.D., J.D. Institute for Software Research School of Computer Science Carnegie Mellon University

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS

The Moshovos (WARF) Invention

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Nature of Patents Unlike copyrights, patents protect ideas, underlying processes and methods of operation – things copyrights expressly do NOT protect The term of a patent is shorter (20 years), but patents are much more difficult (and expensive) to obtain and retain than copyrights Independent creation is a defense to copyright infringement (copying is required), but not to patent infringement (copying is not required)

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Purpose of Patents Encourage technological innovation by rewarding inventors Allow society to benefit (build structural capital, a repository of technical knowledge) Natural justice theory: “Justice gives every man a title to the product of his honest industry.” John Locke, Two Treatises on Civil Government (1690)

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Rewarding Inventors Pay them –Buy out invention –Pay royalties (Soviet Union) Allow them freedom to exploit the invention In the U.S., confer a monopoly for 20 years The contract or “compact” theory: –You tell us all about your invention –We protect your ability to make money Patents existed in the U.S. before the Constitution First federal Patent Act: 1790

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Patent History Patents date back to the Industrial Revolution Pennsylvania issued patents before the U.S. was formed U.S. Patent Office founded: 1790 Patents issued through November 3, 2015: 9,179,586 Total patents issued per week, 2015: ~6700 Internet-related patents issued per week, 2015: ~1400 Software patents issued so far: >400,000

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Parts of a Patent Specification –Must tell how to make and use the invention –Usually background (prior art) + need for the invention Claims –One or more statements defining what the inventor regards as his invention(s) –Written in highly stylized language (“patentese”) that looks similar to English Each claim is its own “mini-patent.” Infringing any one claim infringes the patent

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Infringement is determined by reading the claim “on” the accused device

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS ISSUED MAY 25, 2004 Automatic Mattress Selection System U.S. Patent 6,741,9506,741,950

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS ISSUED MAY 25, 2004 Automatic Mattress Selection System U.S. Patent 6,741,9506,741,950

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS (AMAZON 1-CLICK PATENT)

ADMINISTRATIVE DATA

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS … … DESCRIPTION (SPECIFICATION) CLAIMS

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS What is Patentable? “Whoever invents or discovers any new and useful 1. process, 2. machine, 3. manufacture, or 4. composition of matter,or 5. any new and useful improvement thereof, may obtain a patent therefor …” 35 U.S.C. §101 If none of these 5, it’s not patentable.

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS What is Not Patentable? Unimplemented ideas, e.g., “an anti-gravity machine” Laws of nature: E = mc 2 Natural phenomena, substances Printed matter Mathematical formulas: Purely mental steps FORMERLY, “methods of doing business”

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Extra Requirement of Non-Obviousness “A patent may not be obtained … if the... subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.” 35 U.S.C. §103

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS What’s Obvious? Conventional transformations and operations on objects: “Negative rules of invention” –changing size –substituting a new material –making an apparatus portable –omitting parts, moving parts around Combining references –Need either “suggestion to combine” or combination of well-known techniques to produce an expected result

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Obviousness Obviousness is not a subjective standard The examiner cannot reject a claim because he thinks it is obvious or that it seems elementary A reference to the prior art MUST be furnished

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Inventions and Prior Art OBVIOUS BASED ON PRIOR ART PRIOR ART VALID PATENT INVALID (ANTICIPATION) INVALID (OBVIOUSNESS)

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS The Patent Process Search, e.g. U.S. Patent and Trademark OfficeU.S. Patent and Trademark Office Application –Specification –Claims Examination –Comparison with “prior art” Amendments are allowed –But no “new matter” Issuance (term = 20 years from filing date) Maintenance fees during life of patent Enforcement (patents can be found invalid in litigation)

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Patent Applications Pursuing a patent application is called “prosecution” Assigned to an examiner Examiner performs a “prior art” search Prosecution is a negotiation between PTO and applicant –clarity of specification, arguments over obviousness, wording of claims Usually takes 9 months to 2 years, often much longer Application can be amended, but no “new matter” can be added

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS What is a Patent? “Every patent shall contain … a grant to the patentee … of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” 35 U.S.C. §154 (Term: 20 years from application date)

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS U.S. Patent System U.S. SUPREME COURT U.S. DISTRICT COURTS (91) COURT OF APPEALS FOR THE FEDERAL CIRCUIT PATENT INFRINGEMENT CASES APPEAL BY PETITION APPEAL AS OF RIGHT PATENT SYSTEM IS FEDERAL ONLY BOARD OF PATENT APPEALS AND INTERFERENCES PATENT APPLICATIONS PATENT EXAMINERS (2000) U.S. PATENT AND TRADEMARK OFFICE Can declare patents invalid (A Federal Executive Branch Agency) (Judicial Branch)

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Who Owns a Patent? Only humans can be inventors –For a corporation to own a patent, it must get it from a human being, often by written agreement Employer –Non-inventive employee Employer may have a “shop right” –Specifically inventive Employer owns specific invention –Generally inventive Employer owns all inventions pertinent to his business

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS 2014 Top 10 U.S. Patentees 2013 Stats 1. IBM (7534)(1, 6788) 2. Samsung (4952) (2, 4652) 3. Canon (4055)(3, 3918) 4. Sony (3224) (4, 3315) 5. Microsoft (2829) (6, 2814) 6. Toshiba (2608) (7, 2679) 7. Qualcomm (2590)(--, ----) 8. Google (2566) (10, 2190) 9. LG Electronics (2122) (5, 3117) 10. Panasonic (2095) (8, 2649) SOURCE: PATENTLYAPPLEPATENTLYAPPLE

Major Ideas To be patentable, an invention must be new, useful and non-obvious A patent application must teach those skilled in the art how to make and use the invention (the specification) Every patent must contains one or more claims defining the invention Each claim is its own mini-patent and can be infringed separately from every other claim of the patent Infringement is determined by reading a claim “on” an accused device or process If any claim is infringed, the patent is infringed Infringement is making, using or selling the invention or method Patent term: 20 years from the date of application

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS Q A &

After issuance, IBM was embarrassed into withdrawing this patent