Intellectual Property Snow Fall 2015
Overview
· Patent
o Stop anyone from doing anything with your invention
o Shortest of any type: lasts 20 years from filing date
o Must Be:
§ (1) useful;
§ (2) nonobvious; AND
§ (3) novel
o PTO must issue patent after application
o Independent creation is no defense
· Copyright
o Exclusive right in the expression to copy
o Rights to:
§ (1) prepare derivative works;
§ (2) publically perform or display
§ (3) distribute; AND
§ (4) reproduce
o Lasts life of author +70 years
o Needn’t register to have a copyright, but you can register (and need to to claim damages in federal court)
o Must be:
§ (1) in a tangible medium; AND
§ (2) original
o Independent creation IS a defense
o Fair use is a defense
o It is meant to promote learning “useful arts”
· Trademark
o Exclusive right to use mark in commerce w/o consumer confusion
o Meant to protect the consumer, s your actually getting a Nike show when you but the shoe w/ the swoosh on it
o Lasts as long as it is used, so can last forever
o Needn’t register
o Must be:
§ (1) used in commerce to signify the good/service
§ (2) distinct in the market
o Independent creation is NOT a defense
Patent
· Intro
o Right to an invention
§ A product/process someone has created
o What it is:
§ Right to exclude anyone from:
· (1) using;
· (2) offering for sale; OR
· (3) selling the invention in the US
o Patent must be:
§ (1) novel;
§ (2) nonobvious; AND
§ (3) useful
o Liability is strict, don’t have to know breaking patent law to be liable
o To gain a patent over invention, must have:
§ (1) applied for it
· Application process
o Patent prosecution
§ Process of applying for a patent w/ the PTO
o Process consists of:
§ (1) a specification (w/ a written description)
· Teaches meaning of words & claims
§ (2) drawings (as necessary to understand the invention)
§ (3) a declaration by the inventor
§ (4) filing fees
§ (2) application has 2 primary parts:
· (a) Written description
o Describes the invention, teaches how to use it
o Enablement
§ The written description must fully enable someone to use the invention & duplicate it
§ Assess the prior art and what knowledge a PHOSITA has
§ Factors to consider:
· (1) quantity of experimentation
· (2) lack of direction/guidance presented
· (3) how close is the prior art?
§ Black letter law:
· Can a PHOSITA make and use the claimed invention w/o undue experimentation
· (b) Claims
o 3 parts of claims
§ (1) preamble (specifies the invention)
§ (2) transition
§ (3) elements of the claim
§ The claims are what the inventor is claiming a monopoly right over
· The broader it is, the more rights you can get but the harder it is to prove
· Even if one claim fails, the rest of the patent may still be valid
§ How do courts interpret claims?
· Words take their ordinary & customary meanings to a PHOSITA
· Intrinsic evidence (look here first)
o The entire patent application
§ Special meaning of words may be in the specification
§ Integrated document – everything is consistent
· Extrinsic evidence
o Must less important
o Technical dictionaries & treatises
o Expert testimony
· Subject Matter
o Must be proper
o Inventions that are patentable:
§ Process
§ Machine
§ Manufacture; OR
· Use of raw material and giving these materials new forms, qualities, or properties
§ Composition of Matter
o What is NOT patentable
§ (1) Laws of Nature
· Ex: gravity
§ (2) Abstract Ideas
· Ex: mathe
ed publication; OR
o (3) described in a patent or patent application
· Note: if someone prior abandoned, then doesn’t count against novelty
§ Anticipation
· Someone files before you or prior art excludes invention if already known to the public or in public use
· No anticipation if you invent something but then hide it – this would not knock out any subsequent inventors
§ Critical Date
· Pre-AIA Rules:
o If filed before March 16, 2013 – critical date is invention date
· AIA Rules:
o On/after March 16, 2013 – critical date is filing date
§ Thus, who files first get patent
§ Pre-AIA : what do you have to do to legally invent something?
· Elements: (kind of)
o (1) conceived the invention
o (2) reduced it to practice
· Conception
o If someone conceived the idea before you, and has w/ reasonable diligence reduced it to practice & applied for patent (no abandonment, no suppression, etc…), then the first to conceive gets patent
· Reduction to Practice
o Actual
§ Invention works for its intended purpose; physically made & tested
o Constructive
§ Patent application filed (doesn’t have to physically be made)
· To determine who invented first, ask who RTP’d first
· Inventor must show reasonable diligence if competing people for first to invent
o Examples:
§ Pursuing goal in reasonable manner
§ Reasonably everyday problems and limitation excusable
§ If cause of delay isn’t usual, then not reasonable
