senior design lecture

8/13/2019 Senior Design Lecture

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Patent Considerations

forEngineers

Angela M. Davison

Ross Operating Valve Company

[email protected]

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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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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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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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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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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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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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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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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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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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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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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What does the invention mean?

The invention as actually reduced topractice [the product]

ready for patentingthe invention issubstantially complete


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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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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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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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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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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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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]

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