Patent LawPatent Lawfor Engineersfor Engineers

Sean D. Burdick, P.E.Patent Attorney

1. About me

What I’m Gonna Tell ‘Em:What I’m Gonna Tell ‘Em:

3. Law School

5. Patent-Related Issues Facing Engineers

2. Career Paths in Law

4. Overview of U.S. Patent Law

▪ Idaho Falls High School Class of 1983

1.1 About me

"He who represents himself has

a fool for a client." - Abraham Lincoln

▪ B.S.E.E., University of Idaho, 1989

▪ Ten years in commercial nuclear power

▪ P.E. License, California, 1999

▪ U.S. Patent Bar, 2002

▪ J.D., University of San Diego, 2003

▪ California State Bar, 2003

▪ Patent Attorney, Snell & Wilmer L.L.P.

Careers in Law

2.1 Careers in Law

United States Patent & Trademark OfficeJames Madison Bldg., Alexandria, Virginia

You Can Be A Patent Examiner!

2.2 Careers in Law

See: www.uspto.gov/go/ac/ahrpa/ohr/jobs/qualifications.htm

▪ Electrical/Computer Engr: $63k to $83k

▪ Review applications for compliance with rules and legal standards for patentability

▪ B.S. from ABET accredited school

▪ Higher pay for GPA > 2.95, upper 1/3 class rank, honor society membership, graduate level coursework

▪ Specialized training provided

▪ Recruitment bonus, flexible schedules, tele-commuting, reimbursement for law school

You Can Be A Patent Agent!

2.3 Careers in Law

See: www.uspto.gov/web/offices/dcom/gcounsel/oed.htm; See: www.prometric.com

▪ Electrical/Computer Engr: $90k to $100k

▪ You just need to pass the Patent Bar

▪ Only engineers & scientists are qualified to take the Patent Bar

▪ B.S. from an accredited school, or passing the E.I.T. qualifies you to take the Patent Bar

▪ Computer-based exam offered every month; cost is $200 plus $40 application fee

▪ Patent Bar review course highly recommended

▪ No law degree needed to prosecute patents

You Can Be A Patent Atty!

2.4 Careers in Law

▪ Only lawyers who pass the patent bar can call themselves patent attorneys

▪ B.S. & LSAT score (+ $) gets you into law school

▪ night school programs in law school

▪ engrs well-equipped for rigors of law school

▪ get into the highest ranked law school possible; check out U.S. News Rankings

▪ take electives in IP law

▪ $160k starting salary at top IP firms

▪ pass the Patent Bar while in law school

TIP: file a patent application – publication at 18 months is guaranteed

TIP: don’t take the LSAT until serious; study for 2 months prior

▪ male-to-female ratio at law school about 50/50

2.5 Careers in Law

You Can Practice Law!

▪ Must pass a state Bar Exam

▪ Must pass Character & Fitness

▪ Continuing legal education

▪ Products liability

▪ Construction defects

▪ Energy

▪ Licensing / contracts

▪ Patent litigation

3.1 Law School

Basic Requirements for Law School

▪ B.A. or B.S. from an accredited school

▪ LSAT score 150 or better for top tier schools▪ Tuition avg.: $12k to $15k per year

Law School Admissions Test (LSAT)

▪ Scored on a 120 to 180 scale

▪ 4 times per year: June, September/October, December, February

▪ Five 35-minute multiple choice sections + One essay question

▪ Logical reasoning / Reading Comprehension / Analytical Reasoning

▪ Halfway decent GPA

3.2 Law School

Core Studies in Law School

▪ Contracts

▪ Torts

▪ Constitutional Law

▪ Criminal Law

▪ Evidence

▪ Property

▪ Civil Procedure

▪ Criminal Procedure

3.3 Law School

The Socratic Method

▪ Professor asks questions to the student

▪ You learn by having to orally defend your position

▪ Every student will eventually be called on

Costs / Rewards

▪ 3 years full time / 4 years part time

▪ Juris Doctor (J.D.) degree

▪ $50k to $100k in total costs

▪ research, writing, oral skills

4.1 Overview of U.S. Patent Law

What is Intellectual Property (IP)?

Patents,Trade Secrets

Trademarks, Goodwill

Copyrights

ARTISTIC EXPRESSION

SOURCEOF GOODS

IDEAS

Design Patents

IP

IP

IP

Constitutional Origin

to promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

▪ Title 35 USC §§ 1 to 376 (three volumes)

4.2 Overview of U.S. Patent Law

The Congreff shall have the Power …

Article I, Section 8

▪ 37 CFR §§ 1.1 to 1.995 (about 200 pages)

▪ MPEP (two volumes, 27 chapters, seven appendices

▪ thousands of decisions in the federal courts

A Patent is a Legal Monopoly

3. the patent claims define the scope of the patentee’s rights

2. enforceable only within the country that grants the patent right

4. does not protect a patentee against infringement

4.3 Overview of U.S. Patent Law

1. right to exclude others from making, using or selling a product covered by the patent claims

Some Basic Patent Law:

4.4 Overview of U.S. Patent Law

▪ anyone can apply for a U.S. patent

▪ property rights vest initially in the inventor

▪ the date of invention is the actual date of conception followed by diligent reduction to practice, not the filing date

▪ one year grace period to file your patent application after initial public disclosure

▪ the enforceable life of a patent is about 17 years

▪ there can be multiple inventors in a single patent

▪ there can be multiple claims to a single invention

What is patentable subject matter?

Ans: Anything under the sun made by man that is a

1. new,

2. useful, and

3. non-obvious

4. process, machine, manufacture, or composition of matter

4.5 Overview of U.S. Patent Law

The firstThe first

U.S. Patent:U.S. Patent:

4.6 Overview of U.S. Patent Law

Form of a U.S. Patent

1. Cover page

(no., title, term, Abstract)

3. Field & Background

4. Summary

5. Drawing Descriptions

6. Specification

7. Claims

2. Drawings

4.7 Overview of U.S. Patent Law

Example of a U.S. Patent4.8 Overview of U.S. Patent Law

Fig. 4

2-CHANNEL NARROWBAND

RECEIVER

A/D CONVERTER

DYNAMIC SPECTRAL ANALYSIS

SPECTRAL DENSITY MOVING

WINDOW AVERAGE

DETECTION LOGIC

428(a)

428(b)

404

408

416

420

464

470

462

460472

474

476

478

480

482484

486

488

490

492

494

466

468

M

M

USERINTERFACE

496

402

440

442

400

Example of a U.S. Patent4.9 Overview of U.S. Patent Law

Fig. 1a

Fig. 1b

114

112 108

104

118

124

122

102

110

120

106(b)

106(a)

108

104

128(a)

128(b)

116

116

112

126

130

100

Example of a U.S. Patent

4.10 Overview of U.S. Patent Law

Example of a U.S. Patent4.11 Overview of U.S. Patent Law

Example of a U.S. Patent4.12 Overview of U.S. Patent Law

Patent Facts:▪ over 7 million patents have been granted

in the United States since 1790

▪ it takes about 3 to 4 years to get a patent

▪ there are now over 760,000 patent applications pending at the U.S. Patent & Trademark Office

▪ 5,500 patent examiners at the USPTO

▪ 426,000 utility patent applications were filed in the USPTO in 2006 (48% foreign)

▪ 196,000 utility patents were granted in the USPTO in 2006

4.13 Overview of U.S. Patent Law

Patent–Related Issues Facing Engineers

5.1 Patent-Related Issues Facing Engineers

Is My Idea Patentable?

5.2 Patent-Related Issues Facing Engineers

▪ novelty and obviousness are the toughest hurdles

▪ any prior publication anywhere in the world can defeat novelty

▪ obviousness is based on a combination of references and the knowledge of “one skilled in the relevant art”

▪ before filing a patent appl., you may want to conduct a prior art search* yourself or hire a searching firm

* See: http://www.uspto.gov/patft/index.html

5.3 Patent-Related Issues Facing Engineers

Am I Infringing Somebody Else’s Patent?

2. Actual Knowledge

- cease and desist letter

- lawsuit

- failed licensing negotiation or other correspondence

4. Treble damages for willful infringement: 35 USC §284

1. Constructive Knowledge - the Marking statute: 35 USC §287

3. No damages prior to knowledge

5. Costs and attorneys fees: 35 USC §285

If the product If the product isis patent-protected … patent-protected …

2. obtain a license

How Do I Avoid The Monopoly?

3. purchase the patent

- reasonable royalties – 2½ to 3½ % of sales?

- you only need to license from a single owner

1. get permission from owner or assignee (in writing!)

4. work outside the jurisdiction

5. design around the claims

- locate the current owner via:

http://assignments.uspto.gov/assignments/q?db=pat

5.4 Patent-Related Issues Facing Engineers

Designing around the claimsDesigning around the claims

▪ the claims define the limits of the patent monopoly

▪ If the patent claims elements A + B + C

▪ you infringe if your product contains element A + B + C regardless of the presence of additional elements

▪ you don’t infringe if your product is missing any one of elements A or B or C

▪ e.g., a product comprising A + B + C + D infringes

▪ e.g., a product comprising A + C + D + E does not

5.5 Patent-Related Issues Facing Engineers

What is a trade secret?

▪ not generally know to the public

▪ confers economic benefit to the holder

▪ holder makes reasonable efforts to maintain the secret

The antithesis of a patent:

▪ legal protection is possible without disclosure of the secret

▪ secret maintained through NDAs and “Proprietary” designations

▪ theoretically indefinite life – perpetual monopoly

▪ BUT, no legal protection if someone else legally discovers the secret

5.6 Patent-Related Issues Facing Engineers

Misappropriation of Trade SecretMisappropriation of Trade Secret

▪ industrial espionage

▪ unauthorized disclosure of PROPRIETARY document

▪ breach of NDA

Is there a Is there a legallegal way to discover a trade secret? way to discover a trade secret?

▪ holder fails to take reasonable efforts to maintain the secret

▪ REVERSE ENGINEERING !!!

5.7 Patent-Related Issues Facing Engineers

What I Told ‘Em:What I Told ‘Em:

1. About me

3. Law School

5. Patent-Related Issues Facing Engineers

2. Career Paths in Law

4. Overview of U.S. Patent Law

Patent LawPatent LawFor EngineersFor Engineers

Sean D. Burdick, P.E.Sean D. Burdick, P.E.Patent Attorney

Snell & Wilmer, LLP600 Anton Blvd. Suite 1400Costa Mesa, CA 92626-7689

(714) 427-7000sburdick@swlaw.com