Fundamentals of Patent Practice

Slides summarizing the presentation by Dr. Graham - 9/26/06

FUNDAMENTALS OF PATENT PRACTICE United States Patent and Trademark Office Two Types of Patents 1. Design Patent 2. Utility Patent

PATENTS: HISTORICAL PERPESPECTIVE CONGRESS PROVIDED FOR THE ISSUE OF PATENTS PROTECTED UNDER FEDERAL LAW SHORTLY AFTER THE COUNTRY GAINED ITS INDEPENDENCE THE INTENTION WAS TO INDUCE INVENTORS TO BRING FORTH THEIR INVENTIONS FOR THE BENEFIT OF THE NEWLY FORMED COUNTRY AND ITS PEOPLE

WHO CAN FILE AN APPLICATION? ANY INVENTOR CAN PREPARE AND FILE AN APPLICATION FOR PATENT ON HIS/HER OWN BEHALF HOWEVER, BECAUSE OF THE LEGAL FORMALISM (I.E THE RULES) THAT HAVE EVOLVED OVER THE YEARS, INVENTORS MOST OFTEN EMPLOYA REGISTERED PATENT AGENT OR PATENT ATTOURNEY

FILING A PATENT APPLICATION ANY APPLICATION FOR PATENT MUST BE FILED IN THE NAME(S) OF THE INVENTOR(S) IF MORE THAN ONE INVENTOR IS NAMED ON AN APPLICATION FOR WHICH A PATENT IS ISSUED ALL NAMED INVENTORS OWN AN EQUAL SHARE (IT IS "INTELLECTUAL PROPERTY") HOWEVER, TERMS F EMPLOYMENT MAY REQUIRE THAT AN INVENTOR "ASSIGN" OWNERSHIP OF THE INTELLECTUAL PROPERTY TO THE EMPLOYER LIFE OF A PATENT IS 17 YEARS FROM THE ISSUE DATE

DESIGN PATENTS Used when there is something visually (but not in a useful sense) important to the invention. Examples: The pattern of water emitted by a decorative water fountain The pattern of tread on an automobile tire The shape of an ashtray Patent consists simply of pictures of the design

UTILITY PATENTS Used for new, useful, and non-obvious products of manufacture or processes Product of Manufacture: Anything that is built that meets the requirements for patentability (e.g. a novel machine or machine part for an existing machine) Process: a series of steps carried out to produce a useful end result or product (e.g. oil or gas well treatments, chemical processes)

STATUTORY REQUIREMENTS FOR UTILITY PATENTS 1. It must be new (i.e. the inventor filing the patent must be the first inventor of the subject matter sought to be patented). 2. It must not be obvious to one of ordinary skill in the art to which the patent pertains.

NON-OBVIOUSNESS (To One of Ordinary Skill In the Art) The examiner will examine prior patents (US and Foreign) and combinations of patents i.e. two or more patents put together) to make an obviousness determination.

NON-OBVIOUSNESS Suppose: 1rst Inventor Patent Obtained for: I claim: i) a stool having three legs; and ii) a planar surface fixed to the top ends of the legs. 2nd Inventor Seeks to Patent the Following: I claim: i) a stool having four legs; and ii) a planar surface fixed to the top ends of the legs. Adding a leg would be obvious to one of ordinary skill in the art of stool making and the 2nd Inventor's Claim would be rejected.

STATUTORY TIME BAR Aninventor has one year from the first public disclosure to file an application for a patent. Public Disclosure: Publication in a trade journal, conference presentation textbook, etc. Public use or sale

A Patent Grants an Inventor "Exclusionary Rights" Only Exclusionary right to bar anyone from making and/or using your invention without your consent The rights are not inclusionary

Exclusionary Rights Example 1st Inventor's Patent I claim: A vehicle having: i) a frame, ii) a wheel rotatably mounted to said frame, iii) means for turning said wheel, and iv) means for steering said wheel. 2nd Inventor's Patent I claim: A vehicle having: i) a frame, ii) a wheel rotatably mounted to said frame, iii) means for turning said wheel iv) means for steering said wheel, and v) a headlight fixed to said frame.

What Rights does Each Inventor Have? Inventor 1's patent excludes inventor 2 from practicing his invention, since 1 holds the rights to the vehicle. Likewise, Invertor 2's patent excludes inventor 1 from producing a vehicle with a headlight. What to do? One inventor can sell his patent to the other. Or, one inventor can enter into a licensing agreement with the other involving royalties or fees.

U.S. is a "First-to-Invent" Country as Opposed to a "First-to-File" Country. First-to Invent Two or more independent inventors file patent applications for identical inventions. The inventor that can prove using witnessed disclosure statements, dated lab notebooks, etc. has rights to the invention/patent. First-to-File Two inventors make the same invention. Whoever files first has the rights. KEEP DETAILED AND DATED RECORDS OF YOUR WORK!

INFRINGEMENT Some entity is making and/or using your invention without your consent. Only way to stop the activity is to bring suit (or threaten to) in a Federal Court. $$$

PARTS OF A PATENT Specification Description Drawings Teaches how to make and use the invention The Claims Defines the legal boundaries protected by the patent