Patent and Trademark Law Outline

 
 
PATENT AND TRADE SECRET SPRING 2015 LIM
 
 
INTRO/GENERAL PRINCIPLES:
-Introduction:
-The Patent Right:
–A patent is a right granted by the government that allows the patent owner to exclude others from practicing the invention during its term. 
-Right grounded in the Constitution, authorized by Congress to create protection for inventive works. Congress enacted legislation, set forth at Title 35 of the US Code, which provides the foundation for an inventor's ability to obtain patent protection for new and useful ideas. 
-To obtain a utility patent–one must submit an application to the US Patent & Trademark Office, federal agency responsible for patent examination. 
     -Consider whether the application includes all information required by the Patent Act. 
1- Detailed disclosure of the invention including how the invention can be made and used by others in the field. 
             2- Disclosure must demonstrate the invention's utility. 
             3- Must include at least one claim that provides notice of the elements of the asserted invention.
             4- Claimed invention must be novel 
5- Claimed invention must also fall within the purview of the Patent Act's statutory subject matter–that is, the invention must be among the types of 
             advances that are authorized for protection under the patent system.
6- Claimed invention must meet the non obviousness requirements, such that the application does not claim subject matter that would be obvious to those in the art.
-If requirements of patent law are met and US PTO issues a patent based on the application, right becomes enforceable against infringers.  A patentee may then choose to assert the right. (Ex: filing an infringement action in US District Court) If successful, the owner may obtain monetary relief and, under certain conditions, an injunction against further infringement. Subject to certain exceptions, under current law a patent has an effective life of twenty years from the application's filing date. 
 
-Patent Rights as an Appropriate Mechanism:
-Why is legal protection necessary?
-Rights to tangible good have attributes that permit the disposition of ownership and exclusion based on principles that are well established in the law. These rules seem less suited to regulating ideas and information. Tangible goods are rivalrous (possession of a good by one prevents possession by another)
-Intangibles do not easily fit within this construct because they are non-rivalrous (one person's possession of the idea does not diminish another's ability to share and possess that same idea.
                                -One cannot “fence out” another from using an idea after the information has been disclosed. 
                                -Information can easily be given away at low or no cost.
                                -Unlike tangibles, many people can use the same information at the same time.
-Patents are thought to solve some of these problems by acting as an appropriate mechanism. 
-Operationally, the patent system creates a legally enforceable right to protect ideas similarly to the manner in which a fence surrounds real property. Allows inventors and inventing firms to exclude others from practicing the invention disclosed in the patent by providing the patent owner with the ability to assert the right against infringers. The right to enforce preserves the value of the information, because although one learns the information from reading the patent, one cannot practice the patent without infringing the right.
-Arrow's Information Paradox: those interested in purchasing information cannot ascertain its value without full disclosure, but once full disclosure has been made the purchaser has learned the information without making any payment.
-Appropriability assists in resolving Arrow's information paradox–the patent right permits owners to share a fully disclosed invention with a potential purchaser, such that both parties can attempt to fully assess the value of the right while mitigating the concern that disclosure will lead to the devaluation of the idea. 
-Patent claim inventions for which there are few or no economic substitutes–
-For owners of such patents, the patent right translates into the ability to charge more for products that incorporate these inventions.
-Part of the patent law's incentive includes the financial return anticipated if a patented product is successful. Underlying assumption–patent systems that the patent owner expends resources in expectation of receiving this reward.
 
-Incentives and Patent Law:
1-One critical purpose of patent law is to provide an incentive to invent — patents granted when an application demonstrates a genuine invention that amounts to an advance in a technological art. 
2-US Patent right is intended to provide an incentive to inventors and to those who support invention with the ultimate goal of providing a public benefit. 
3-Provide an inventive to disclose inventions that might otherwise remain a trade secret — patentee's disclosure is quid pro quo for the government grant of exclusivity. Want to enrich the art by adding to the total available information in the field, and also to provide a roadmap for others to practice the invention once the patent term expires and the invention becomes part of public domain. 
4-Provide an incentive to design around to others in the same field. “Designing around” –efforts to create an implementation that falls outside the scope of a claim to avoid infringing another's patent. 
                                -Result has been favorable public benefit because the total amount of new inventions has increased. 
                                -Designing around brings a steady flow of innovations to the marketplace and therefore benefits the public. 
5-Incentive to commercialize the invention. Used to stimulate the investment of risk capital in the commercialization of useful patentable inventions so that the public gets some benefit from them, which may not occur in the absence of some patent protection . 
-Inventive activity fostered by the patent system will have a positive effect on society through the introduction of new products and processes of manufacture into the economy, and the emanation by way of increased employment and better lives for our citizens.
 
-How does the Patent “Right to Exclude” Operate?
-Infringement = patentee's violation of the right to exclude
-One infringes a patent when one engages in the unauthorized making, using, offering to sell, selling or importing into the United States any patented invention within the patent's term.
-Scope of patentee's right to exclude is embodied in one or more claims that define the invention. 
                                -A broad claim will be infringed by conduct that concerns more implementations than a narrow claim. 
-Infringement inquiry is performed by comparing the caused device, process or method to the patent claim. The infringer's state of mind is NOT part of this inquiry. Instead…direct patent infringement can be found where there is not intent to infringe, and even where the infringer is entirely unaware of the patent's existence. 
-There is no requirement that the infringer copy the invention –infringement can be found where the accused device, process or method has been independently developed by another. 
 
-What does one do with a Patent?
-Overall goal of patent system is public benefit, but patent inures as a private right to an individual patent owner.
-Private ownership implements—the economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in 'science and useful arts.' 
-Patent owners use these privately held rights in variety of ways: (Examples)
-Cover key products in order to assert the patent right offensively against any rivals who attempt to make and sell competing products that incorporate that invention. Can attempt to protect R&D expenses and to obtain a profit if the product is successful 
-If a rival attempts to make or sell invention in patent, the patentee can assert the claim in court against the rival to pursue monetary relief and injunctive relief. 
-A patentee may attempt to patent all effective formulations–can prevent potential competitors from entering “x” market Unless competitor can design around the patents by creating an effective compound that has not been already claimed
-A company may refrain from asserting its patent rights unless needed to defend against a charge of infringement of another's patent. 
                                -Cross-Licensing creates other opportunities–
-Some industries are composed of a limited number of companies, who engage in open-ended cross-licenses among them. Allows under such agreements freedom to operate–each company protected by such agreements can make and sell any manner of technological variations within that field without concern that another within the industry will sue for patent infringement.
-Patentees may raise revenue by licensing their patents to others who manufacture and sell products–if unconcerned about creating competition for use of the invention. 
-Some companies purchase patents invented by others with the goal of obtaining profits through the creation of a licensing revenue stream. (“patent troll”/”non-practicing entities”)
 
-US PTO: Obtaining a Patent/ Intersection with Trade Secrets:
-Introduction:
-United States Patent & Trademark Office (US PTO) is the federal administrative agency to which Congress has delegated the power to issue patents. Part of the US Dept. of Commerce, may exercise this delegated authority so long as it acts in a “reasonable manner not inconsistent with the existing statutory scheme.”
-US PTO Statutory Powers and Obligations:
-Agency may advice other branches of government about intellectual property policy and disseminate information
about patents to the public. 
-Examination of patent applications and conduct of proceedings relating to issued patents. Examiners look at petitions to correct errors in previously issued patents. 
-Patent Trial and Appeals Board (PTAB) includes administrative law judges who are appointed to consider: 1) appeals from adverse decisions of patent examiners; 2) reexamination proceedings; 3) derivation proceedings; 4) inter pates review; and 5) post-grant review. 
-Broad authority to govern the conduct of proceedings and the attorneys practicing before it and is also empowered to impose reasonable procedural requirements for patent applications. 
                                -PTO has made procedures for obtaining patents set forth in Title 37 Code of Federal Regulations
-Publishes Manuel of Patent Examini