Download - Senior Design Lecture
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Patent Considerations
forEngineers
Angela M. Davison
Ross Operating Valve Company
February 16, 2005
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Differences Between a Patent and the other FourTypes of IP
Trademark
Definition: A word, slogan, design, picture, or anyother symbol used to identify and distinguish goods
or services Purpose: communicate to the public the origin of
the goods
Word: McNuggetthink McDonalds
Slogan: Just do itthink Nike
Design: --think Hewlett Packard
Think Sales & Marketing
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Differences Between a Patent and the other FourTypes of IP
Copyright Definition: A right owned by every author of a
work to exclude others from doing any of thefollowing activities in connection with the work:
(1) reproduction, (2) Adaptation, (3)Distribution to the public, (4) Performance inpublic or (5) Display in public
Think Creative arts, exception: software
programs Note: Copyrighting your lab notebooks
protects only your unique wording, layout andpresentation; it does not protect the factual or
technical content
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Differences Between a Patent and the other FourTypes of IP
Trade Dress
Definition: A specialized type oftrademark for packaging where the
totality of all elements of the packagingthat is capable of identifying anddistinguishing goods or services
Examples: shape of Coca-Cola bottle,
Barbie pink, Tiffanys little blue box,Taco Bell restaurant
Think Sales & Marketing
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Differences Between a Patent and the other FourTypes of IP
Patent
Definition: A grant by the federal
government to an inventor of the rightto exclude others from making, selling,or using the invention
Types: Provisional, Utility, Design andPlant
Think Innovation
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Differences Between a Patent and the other FourTypes of IP
Types of U.S. PatentsProvisional
Valid for only 1 year after filing date
Used when (1) 102(b) event or (2) save thedate prevents filing of utility application
Contains a minimum of a specification, canhave drawings and claims
Must file utility patent within one year, or lose
earlier filing date
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Differences Between a Patent and the other FourTypes of IP
Types of U.S. PatentsUtility
What people usually think of as being a patent 20 year term
Covers devices, methods & processes Protection is geared to the functionality of the
invention described, not necessarily itsappearance
Contains specification & claims Claims are the specific phrases that lay out the
metes & bounds of an invention, like a fencelays out the boundaries of land.
Specification is everything else, including thedrawings
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Differences Between a Patent and the other FourTypes of IP
Types of Patents
Design
Protects only the appearance of an object,
not its functionality
Contains only drawings [which serve as theclaims]
14 year term
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Differences Between a Patent and the other FourTypes of IP
Types of Patents
Plant
Granted to anyone who discovers orasexually reproduces a new variety ofplant; cannot be tuber-propagated
Very rare 20 year term
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Differences Between a Patent and the otherFour Types of IP
Multiple types of protection A single invention often requires multiple types
of protection
Ex: Ross Controls L-O-X valve [a lock-outtag-out device] has a utility patent, a designpatent and a trademark on the L-O-X name,and a copyright on the underlying
schematics Trade secrets & patent protection are mutually
exclusive; treat all info as if it were secret untilpatent issues
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Differences Between a Patent and the otherFour Types of IP
Need to think about what types of protectionyour invention will need during & after theinventing process & the steps you will need to
take to obtain the protection Federal Trademark registrations must be filed
with USPTO, Federal Copyright Registrationmust be filed with US Copyright Office,
preserving confidentiality via confidentialityagreements, proper marking of documents,need-to-know secrecy
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Keeping the Invention Notebook
Legal importance of the notebookEvidence
In the event of an infringement suit or aninterference, a properly annotated notebook is
good evidence of the dates of invention & thesubstance of an invention. The notebook willadd credibility to oral assertions of dates &substance
Proof of no misconduct on part of inventor orinventors employer
Pre-date prior artswear behind a reference
Determination of inventorship
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Keeping the Invention Notebook
Keep contents of notebook a secret (tradesecrets must be subject to reasonableefforts to keep info secret)
Record access to notebook Limit access to those with need-to-know
Non-disclosure agreement
Lock notebook up at night
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Keeping the Invention Notebook
Contents of notebook Equipment used, illustrations of set-up
Theory underlying experiments
Ideas for additional experiments
Potential new product uses Whyall of the above are evidence of
conception
Word choiceavoid editorial comment [i.e.
good, bad, failure], caution on charged wordchoice [i.e. use thermal event not fire]
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Keeping the Invention Notebook
Contents of notebookAlterationsuse strikethrough, not White-Out;
never tear out a pageall destroy credibility ofnotebook
Keep in chronological order
No blank sections or pagescross-out unused spaceAttesting the notebook (witness) Do it periodicallyweekly, bi-weeklyRead and Understood by X, datewitness must
be capable of understanding the technology Two witnesses are better than one, rotate the
witnesses Electronic notebooksare often convenient, but as
of today, there are no court cases ruling on theevidentiary value of such methods, so there is risk
in using them.
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Things Inventors do that Jeopardize Abilityto Obtain Patent
Actions before Critical Date
Definitionthe date exactly one year before thefiling date of the patent application
The Law35 U.S.C. 102(b)the statutorybar or the on-sale bar
If the invention was:
patented or the subject of printed
publication anywhere in the world OR on sale or in use in the US
before the critical date, you cannot get a
patent
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Things Inventors do that Jeopardize Abilityto Obtain Patent
What does the invention mean?
The invention as actually reduced topractice [the product]
ready for patentingthe invention issubstantially complete
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Things Inventors do that Jeopardize Abilityto Obtain Patent
What does printed publication mean?
Anything that is catalogueddoesnt have to bepaper, can be computer disk, program, website
Doctoral thesis in a German librarys cardcatalog
Advertisements for the invention [even ones you
dont authorize] Instruction manual for invention
A picture
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Things Inventors do that Jeopardize Abilityto Obtain Patent
What does in use mean?
Its already in the public domain [i.e. cantpatent the Internet now]
You showed your invention at a tradeshow
You showed your invention at a senior
design invention review day that was opento the public where the public was notasked to sign a non-disclosure agreement
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Things Inventors do that Jeopardize Abilityto Obtain Patent
Protections against 102(b) issues
The provisional patent application
Confidentiality / Non-disclosureagreements
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Inventorship
Definition: An inventor is one whoconceives of subject matter that is the
subject of a claim in a patent application.One is not an inventor if she merelysuggests the desired results but does notprovide any substantive information on
how to achieve the result [ideas alone arenot enough]
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Inventorship
Because inventorship depends upon what isclaimed in a patent, one cannot technicallydetermine inventorship until the patent iscompletely drafted.
Example: Moe, Larry and Curly develop a newstapler. Moe developed a feature that makesthe stapler walk. Larry developed a featurethat makes the stapler talk, and Curlydeveloped a feature that makes the staplertype. They file a patent for their new stapler.However, the only features that appear in theclaims of the patent are the talking and thetyping. Hence, only Larry and Curly are
inventors.
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InventorshipConception
the mental development and disclosureof an idea for an invention
an invention is conceived when theinventor thinks of the solution [i.e. theinvention] to a problem and disclosesthe solution
an idea is properly disclosed when aperson of ordinary skill in the art canpractice [i.e. build, use, etc] the
invention
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Inventorship
Conception
one is a person of ordinary skill in the art is
someone who has ordinary level of proficiencyin the technical area of the invention [i.e. foran invention consisting of a new hair trap forplumbing pipe, a person of ordinary skill in the
art is a plumber, not a Ph.D. civil engineeringprofessor]
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Inventorship
Joint inventorship Inventors must collaborate with each other
collaboration occurs when inventors work together fora common goal that is achieved by the united efforts of
all of the inventors JIs dont have to be physically co-located
JIs dont have to work on the invention at the sametime
JIs dont have to make the same amount of
contribution to the invention JIs dont have to jointly invent every claim in the
patent
Usually arises in the context of determining whether asupervisor or a lab technician is an inventor
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Inventorship
Inventorship & Ownership Inventor is presumed to be the owner of a patent
Joint inventors by default are co-equal owners of thepatent, even if they made unequal contributions to theinventive subject matter.
Employers usually require engineers to assign allinventions made for the company to the company as acondition of employment
If you want to invent something that you also own inthe same field of your employment, keep the inventiveprocess entirely separate from employment [i.e. do not
use work computer, work copier, work equipment,etc.]. If not, by default, employer has shop right [non-exclusive, royalty-free license] in the invention. Someemployers will require you to contract an ownershipinterest.
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Inventorship
Correcting inventorship errors
Usually allowed by the PTO & courts,
even after the patent issues Worse-case scenariopatent will be
invalidated if inventorship is inaccurate
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Intellectual Property Contracts
Employment Agreement Assign all inventions made on the job to the
employer in exchange for having a job Grant a shop right to all inventions made using
company equipment If you want to keep your inventions free & clear of
ownership or use rights by employer, do so on yourown time & your own equipment
Promise to not take trade secrets [i.e. customer lists,
manufacturing methods, secret formula] Covenant not to competecan only be valid in
limited geographic areas and for a limited time
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Intellectual Property Contracts
Non-disclosure/Confidentiality Agreement Agreement where confidant promises not to share
any of the disclosers [i.e. inventors] proprietary &technical information
Used when an inventor approaches a company withan investment opportunity in the invention
Used when a manufacturer approaches a supplierwith an invention for the supplier to construct &
produce In the event the confidant does not keep the
information secret, suit for breach of contract, tradesecret theft, etc.
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Intellectual Property Contracts
Licensing Agreement
Holy Grail for the solo inventor
Agreement where owner retains ownership ofthe patent but allows the licensee to practicethe invention in exchange for percent ofprofits, royalties, etc.
Can be exclusive; if exclusive, licensee cansue for infringement
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Intellectual Property Contracts
Joint Venture Agreement
Two entities agree to mutually develop atechnology for the benefit of each entity
Terms of investment: who is responsible for startup costs, R&D costs, patent procurement costs,staff costs, equipment costs, manufacturing costs,etc.
Terms of ownership: Allocation of ownership ofthe technology, equipment, licensing rights
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Questions???
Engineering Entrepreneurship, Judi Dohn
4 pm today, CBC C126
Delineating the scope of patent claims &Assessing potential technological claims
[patent searching & design around]