Patent Law

Presented by: Walker & Mann, LLP 9421 Haven Ave., Suite 200 Rancho Cucamonga, Ca. 91730 www.walkermann.com

909.581.8300 Office 909.945.5970 Fax

Patents

   A patent is a Constitutional right. It is granted by the U.S. Patent and Trademark Office. It is designed to encourage inventions that are useful to society.

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What is a Patent

  A granted property right that allows the owner “ to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States” Term is 20 years from filing application w w w. w a l k e r m a n n . c o m

Types of Patents

Utility

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Design Plant

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Utility Patents

     Processing Methods Machines Manufacture Compositions of Matter Improvements to One of These w w w. w a l k e r m a n n . c o m

Design Patents

   Limited to the ornamental design of an invention Unrelated to the function of the invention Term is 14 years from date of issue w w w. w a l k e r m a n n . c o m

Patent Law Basics

    An invention must be useful An invention must be novel An invention must be non-obvious An invention must be fully disclosed w w w. w a l k e r m a n n . c o m

Useful

    “Whoever invents or discovers any new and useful …” Must have some usefulness (utility) The invention must work Very few patents are rejected as being non-useful w w w. w a l k e r m a n n . c o m

Novel

   The invention must be new Must be different from anything previously known Cannot get a patent:  Known or used by others in US before date of invention  Patented or published anywhere in world before date of invention w w w. w a l k e r m a n n . c o m

Novel

 In public use or on sale in US more than 1 year before patent filing date  Patented or published by inventor or others anywhere more than one year before patent filing date  Invented by someone else w w w. w a l k e r m a n n . c o m

Non-obvious

  The invention must not be obvious to a person “skilled in the art” Must not be easily created or suggested by combining two or more previously known inventions w w w. w a l k e r m a n n . c o m

Fully Disclosed

   Patent protection is granted in exchange for disclosure of everything known about the invention Patent application must have a full, enabling disclosure Must disclose best mode of the invention w w w. w a l k e r m a n n . c o m

Three Steps to a patent:

1.

2.

3.

Determine Patentability Conduct a Patent Search File for a Patent Application w w w. w a l k e r m a n n . c o m

Patentability

  A . Is the utility invention: – A process or method? – A machine? – An article of manufacture? – A composition of matter?

Or

– An improvement of one in the first four categories? B. Is the utility invention: – Useful? – Novel? – Non-obvious? w w w. w a l k e r m a n n . c o m

Patent Search

 Patent search Online: www.uspto.gov; www.google.com/patents   Patent search Offline: Patent and Trademark Depository Libraries Other sources for publications and scientific articles w w w. w a l k e r m a n n . c o m

Filing a patent

 Preparing and Filing a Patent Application can be an Arduous Task  You must consider all the Uses and Variations on your Invention  Professional Assistance Provides the Fullest Protection w w w. w a l k e r m a n n . c o m

Anatomy of a Patent

   Specification – thorough description of invention and uses Claims – the legal language which defines the boundaries of the invention Drawing w w w. w a l k e r m a n n . c o m

Inventor vs. Owner

   An inventor is any person who has contributed to any claim of patent Inventorship never changes Ownership can change  Patents are property  Patents can be sold or assigned to others w w w. w a l k e r m a n n . c o m

Benefits of Licensing

   Patent owner (licensor) promotes commercial development and generates income Licensee is free from suit Both parties avoid infringement litigation w w w. w a l k e r m a n n . c o m

Licensing Terms

  License Grant  Authorized activities: make, use, sell …  Nature of grant: exclusive vs. non-exclusive  Geographic scope  Terms and Conditions Limitations  Excluded fields of use  Others w w w. w a l k e r m a n n . c o m

Licensing Terms

  Licensing Fees Term and Termination  Expiration of patent  Termination for convenience  Termination for cause w w w. w a l k e r m a n n . c o m

Patent Lawsuits

  Federal Court Jurisdiction Process  Pleadings – Complaint & Answer  Discovery – Written & Depositions  Markman hearing  Summary Judgment  Trial  Appeals w w w. w a l k e r m a n n . c o m

Patent Infringement

  Literal – Requires infringement of all elements of the claim Doctrine of Equivalents – Insubstantial differences in the function, method or result w w w. w a l k e r m a n n . c o m

Challenge to Patent Validity

      Prior Art – Anticipation or Obviousness Indefiniteness Enablement Best Mode Inoperable Inequitable Conduct w w w. w a l k e r m a n n . c o m

Defenses to Infringement

   Non-Infringement  Literal  Doctrine of Equivalents Estoppel Latches w w w. w a l k e r m a n n . c o m

Lawsuit Remedies

  Injunctive Relief – Temporary Restraining Order – Preliminary Injunction – Permanent Injunction Damages – Lost Profits – Reasonable Royalties – Costs and Attorney Fees – Punitive Damages w w w. w a l k e r m a n n . c o m

Cease and Desist

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Cloth Purse

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Thank you

We, at Walker & Mann, would like to thank you for your time today. Please keep us in mind in the event that we may be of service. w w w. w a l k e r m a n n . c o m

Obtain your FREE Consultation when mentioning this Presentation and Contacting: Walker & Mann, LLP 9421 Haven Ave, 2 nd Floor Rancho Cucamonga, CA 91730 909.581.8300 Office 909.945.5970 Fax w w w. w a l k e r m a n n . c o m