Patent LawPatent Law

Presented by:Presented by:

Walker & Mann, LLPWalker & Mann, LLP

9421 Haven Ave., Suite 2009421 Haven Ave., Suite 200

Rancho Cucamonga, Ca. 91730Rancho Cucamonga, Ca. 91730

www.walkermann.comwww.walkermann.com

909.581.8300 Office909.581.8300 Office

909.945.5970 Fax909.945.5970 Fax

PatentsPatents

A patent is a A patent is a Constitutional Constitutional right. right.

It is granted by the It is granted by the U.S. Patent and U.S. Patent and Trademark Office. Trademark Office.

It is designed to It is designed to encourage encourage inventions that are inventions that are useful to society.useful to society.

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What is a PatentWhat is a Patent

A granted property right that A granted property right that allows the owner “ to exclude allows the owner “ to exclude others from making, using, offering others from making, using, offering for sale, or selling the invention in for sale, or selling the invention in the United States or importing the the United States or importing the invention into the United States”invention into the United States”

Term is 20 years from filing Term is 20 years from filing applicationapplication

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Types of PatentsTypes of Patents

UtilityUtility DesignDesign PlantPlant

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Utility PatentsUtility Patents

Processing MethodsProcessing Methods MachinesMachines ManufactureManufacture Compositions of MatterCompositions of Matter Improvements to One of TheseImprovements to One of These

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Design PatentsDesign Patents

Limited to the ornamental design Limited to the ornamental design of an inventionof an invention

Unrelated to the function of the Unrelated to the function of the inventioninvention

Term is 14 years from date of Term is 14 years from date of issueissue

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Patent Law BasicsPatent Law Basics

An invention must be usefulAn invention must be useful An invention must be novelAn invention must be novel An invention must be non-obviousAn invention must be non-obvious An invention must be fully An invention must be fully

discloseddisclosed

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UsefulUseful

““Whoever invents or discovers Whoever invents or discovers any new and useful …”any new and useful …”

Must have some usefulness Must have some usefulness (utility)(utility)

The invention must workThe invention must work Very few patents are rejected as Very few patents are rejected as

being non-usefulbeing non-useful

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NovelNovel

The invention must be newThe invention must be new Must be different from anything Must be different from anything

previously knownpreviously known Cannot get a patent:Cannot get a patent:

Known or used by others in US before Known or used by others in US before date of inventiondate of invention

Patented or published anywhere in Patented or published anywhere in world before date of inventionworld before date of invention

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NovelNovel

In public use or on sale in US more than In public use or on sale in US more than 1 year before patent filing date1 year before patent filing date

Patented or published by inventor or Patented or published by inventor or others anywhere more than one year others anywhere more than one year before patent filing datebefore patent filing date

Invented by someone elseInvented by someone else

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Non-obviousNon-obvious

The invention must not be The invention must not be obvious to a person “skilled in the obvious to a person “skilled in the art”art”

Must not be easily created or Must not be easily created or suggested by combining two or suggested by combining two or more previously known inventionsmore previously known inventions

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Fully DisclosedFully Disclosed

Patent protection is granted in Patent protection is granted in exchange for disclosure of exchange for disclosure of everything known about the everything known about the inventioninvention

Patent application must have a Patent application must have a full, enabling disclosurefull, enabling disclosure

Must disclose best mode of the Must disclose best mode of the inventioninvention

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Three Steps to a patent: Three Steps to a patent:

1.1. Determine PatentabilityDetermine Patentability

2.2. Conduct a Patent Search Conduct a Patent Search

3.3. File for a Patent ApplicationFile for a Patent Application

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PatentabilityPatentability

AA. Is the utility invention:. Is the utility invention:– A process or method? A process or method? – A machine? A machine? – An article of manufacture? An article of manufacture? – A composition of matter? A composition of matter? OrOr– An improvement of one in the first four An improvement of one in the first four

categories? categories? B. Is the utility invention:B. Is the utility invention:

– Useful? Useful? – Novel? Novel? – Non-obvious? Non-obvious? w w w. w a l k e r m a n n . c o m

Patent Search Patent Search

Patent search Online: Patent search Online: www.uspto.gov; www.uspto.gov; www.google.com/patentswww.google.com/patents

Patent search Offline: Patent search Offline: Patent and Patent and Trademark Depository LibrariesTrademark Depository Libraries

Other sources for publications and Other sources for publications and scientific articlesscientific articles

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Filing a patentFiling a patent

Preparing and Filing a Patent Preparing and Filing a Patent Application can be an Arduous Application can be an Arduous TaskTask

You must consider all the Uses You must consider all the Uses and Variations on your Inventionand Variations on your Invention

Professional Assistance Provides Professional Assistance Provides the Fullest Protectionthe Fullest Protection

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Anatomy of a PatentAnatomy of a Patent

Specification – thorough Specification – thorough description of invention and usesdescription of invention and uses

Claims – the legal language which Claims – the legal language which defines the boundaries of the defines the boundaries of the inventioninvention

DrawingDrawing

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Inventor vs. OwnerInventor vs. Owner

An inventor is any person who An inventor is any person who has contributed to any claim of has contributed to any claim of patentpatent

Inventorship never changesInventorship never changes Ownership can changeOwnership can change

Patents are propertyPatents are property Patents can be sold or assigned to Patents can be sold or assigned to

othersothers

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Benefits of LicensingBenefits of Licensing

Patent owner (licensor) promotes Patent owner (licensor) promotes commercial development and commercial development and generates incomegenerates income

Licensee is free from suitLicensee is free from suit Both parties avoid infringement Both parties avoid infringement

litigationlitigation

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Licensing TermsLicensing Terms

License GrantLicense Grant Authorized activities: make, use, sell …Authorized activities: make, use, sell … Nature of grant: exclusive vs. non-Nature of grant: exclusive vs. non-

exclusiveexclusive Geographic scopeGeographic scope Terms and ConditionsTerms and Conditions

LimitationsLimitations Excluded fields of useExcluded fields of use OthersOthers

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Licensing TermsLicensing Terms

Licensing FeesLicensing Fees Term and TerminationTerm and Termination

Expiration of patentExpiration of patent Termination for convenienceTermination for convenience Termination for cause Termination for cause

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Patent LawsuitsPatent Lawsuits

Federal Court JurisdictionFederal Court Jurisdiction ProcessProcess

Pleadings – Complaint & AnswerPleadings – Complaint & Answer Discovery – Written & DepositionsDiscovery – Written & Depositions Markman hearingMarkman hearing Summary JudgmentSummary Judgment TrialTrial AppealsAppeals

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Patent InfringementPatent Infringement

LiteralLiteral– Requires infringement of all Requires infringement of all

elements of the claimelements of the claim Doctrine of EquivalentsDoctrine of Equivalents

– Insubstantial differences in the Insubstantial differences in the function, method or resultfunction, method or result

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Challenge to Patent Challenge to Patent ValidityValidity Prior Art – Anticipation or Prior Art – Anticipation or

ObviousnessObviousness IndefinitenessIndefiniteness EnablementEnablement Best ModeBest Mode InoperableInoperable Inequitable ConductInequitable Conduct

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Defenses to Defenses to InfringementInfringement Non-InfringementNon-Infringement

LiteralLiteral Doctrine of EquivalentsDoctrine of Equivalents

EstoppelEstoppel LatchesLatches

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Lawsuit RemediesLawsuit Remedies

Injunctive ReliefInjunctive Relief– Temporary Restraining OrderTemporary Restraining Order– Preliminary InjunctionPreliminary Injunction– Permanent InjunctionPermanent Injunction

DamagesDamages– Lost ProfitsLost Profits– Reasonable RoyaltiesReasonable Royalties– Costs and Attorney FeesCosts and Attorney Fees– Punitive DamagesPunitive Damages

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Cease and DesistCease and Desist

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Cloth PurseCloth Purse

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Thank youThank you

We, at Walker & Mann, would like We, at Walker & Mann, would like to thank you for your time today. to thank you for your time today.

Please keep us in mind in the event Please keep us in mind in the event that we may be of service. that we may be of service.

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Obtain your FREE Consultation when Obtain your FREE Consultation when mentioning this Presentation and Contacting:mentioning this Presentation and Contacting:

Walker & Mann, LLP Walker & Mann, LLP

9421 Haven Ave, 29421 Haven Ave, 2ndnd Floor Floor

Rancho Cucamonga, CA 91730Rancho Cucamonga, CA 91730

909.581.8300 Office909.581.8300 Office

909.945.5970 Fax909.945.5970 Fax

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