Patent Outline

Patent Law Safrin Spring 2014

I Intro. – Class Discussion [1/13]

1. Areas that use Patent Lawyers

a. Civil litigators (looking for work)

b. Corporate Attorneys

i. License agreements

ii. Mergers and Acquisitions (intellectual property)

c. Patent Attorney – Prosecute

d. Entrepreneur / start-ups / small business

e. Health and pharm related

2. Oliver Evans – a great American inventor. [T. Jefferson letter – 8/13/1813]

a. Kinda patented the first elevator

b. Thomas Jefferson – Does he have the right to obstruct others in the use… of the elevator.

c. “Exclusive right” to use it.

d. Did he innovate or was he the first to invent it ?

e. Why give to the first inventor ? à don’t take knowledge away that people have.

f. T. Jeff finds many previous inventions that are very much like the elevator.

i. He is moving methodically through the prior art.

ii. If only the leather strap is new, then that should be the only thing that can be patented.

iii. He does seem to find the hooper-boy to be new.

g. Is this “New Enough”;

i. Change of form -> not a biggie.

ii. Change of use -> does not count (you can use for water, coal, dirt, etc…)

h. Is it useful?

i. Exclusive -> flames lit from another candle à can be used without diminishment!

i. Not quite true when it comes to creative arts…

3. Thomas Jeff did not really seem to like patents.

Patents must be; [1/15/14]

1. New (Novelty requirement)

a. First to market

b. Do not deprive something out there.

2. Non-obvious (have you invented ‘enough’) [Word came from 1952.]

a. To someone of similar skill, working in the same industry

b. NOT obvious to someone in light of what is already out there….

c. Changing the color would be considered obvious.

d. In Europe -> OBVIOUS -> “Does it reflect an inventive step?”

3. Useful

a. In Europe -> susceptible to industrial application.

4. Sought -> Filed for AND INVENTOR must disclose it.

a. The invention must be disclosed…!

5. Pennock v. Dialogue 1829

a. Releases invention (7 years before) filing for a patent.

b. He would have had 7 years PLUS 14 years of usage = 21 years, and infringed on those already using it.

c. Does not get one, because many people ‘copy’ it.

6. In Patent land, you get the right to exclude…

7. “The Congress shall have Power To promote the Progress of [literary] Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” –> From the Constitution.

a. Two powers given to congress:

i. Create a Patent System (shown above by underline)

ii. Create a Copyright system. (shown above by double underline)

8. Mickey mouse expire issue:

a. Another 20 years added to 70 for copyrights.

Patents must be; [1/16/14]

1. 1 – 1,000,000 took 100 years

2. To go from 5-6 million took 8 years

3. 6-7 million took 4 years

4. 8 million in US, in 2009; 466,000 patents filed.

a. Many foreign countries are now filing in US.

5. General all patents have;

a. Number patent

b. Inventor name

c. References

d. Foreign documents

e. Abstract – brief description, and/or what it does.

f. Background of inventor

g. Summary

h. Detailed description

i. Claims

6. America Invent act now allows companies to get patents (and not just the employee working for the company).

7. Look at the Patent on Page 21;

a. Difference already exist between general wheelbarrows

i. Special purposes wheelbarrows for bringing things

ii. Dumping – pivots

iii. Stability – large wheels

iv. Self leveling

b. Difference already exist between general wheelbarrows

c. The essense of the art: Claim too much or too little.

8. Intellectual property

a. Intangible – can’t touch this.

b. Very easy to copy (easy to copy story).

c. Very dependent on the law to protect.

d. The fence is a legal fence.

e. HEAVILY dependent on the law.

9. Ideas can not be patented -> implementation of the idea can; something practical.

10. Copyright and Patent, from Constitution

11. Trademark is original, and includes something more (money behind it)

12. Poster guy (Friend of Safrin’s) can

a. Patent (more powerful)

b. Copyright (it is code, but easy to copy)

c. Trade Secret (don’t tell anyone…)

d. Publish it

13. Trade Secret(2)

a. No fixed time (Coke is a TRADE SECRET -> no patent!) only 2 people know it

b. Databases, customer lists.

c. You are only liable (TORT) for taking a trade secret if you steal it, or take from a confidential manner, and the person TRIED to protect it.

d. FIRST: Must show it is a secret, and you try to keep secret!

e. SECOND: It is information worth money; commercial value.

f. THIRD: It was stolen.

14. How can a trade secret be taken:

a. Breach of confidentiality (express or implied) – Misappropriation.

b. Breach of a confidentiality agreement.

c. Obtained by improper means (stolen, fraud, lies, espio