TECHNOLOGY, PATENTS, and YOU

An American Perspective
Tbilisi State University
January 2015

David S. Park, B.S., J.D.

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Overview

What is patentable?
Why have patents?
What is a patent?
What are the legal requirements for patentability?
How is an invention patented?
Who is an inventor?
When should I file an application?
Where can I file?

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What is Patentable?
Animal Ear Protector
(US 4,233,942 )

Abstract
This invention provides a
device for protecting the
ears of animals, especially
long-haired dogs, from
becoming soiled by the
animal's food while the
animal is eating. The device
provides a member to
position the tubular member
and animal ears away from
the mouth and food of the
animal while it is eating.

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Method of Swinging on a Swing

(US 6,368,227)
Abstract
A method of swing on a
swing is disclosed, in which
a user positioned on a
standard swing suspended
by two chains from a
substantially horizontal tree
branch induces side to side
motion by pulling alternately
on one chain and then the
other

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Sealed Crustless Sandwich

(US 6,004,596)

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Ablation Procedure and System

(US 7,678,106)

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Placing a Purchase Order Via a

Communications Network
(US 5,960,411)

Amazon.coms
1-click patent

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Apple Inc. v. Samsung Electronics Co.

US 7,864,163
(Apples tap to
zoom patent)

US D593,087
US D604,305
(Apples home button (Apples onand tapered edges
screen icons
design patent)
design patent)

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A Notable University Patent

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What is Patentable?
. . . Anything under
the sun that is made
by man.

Diamond v. Chakrabarty, USPQ 193, 196 (US 1980)

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What is Patentable? (counter-theory)

. . . There is nothing
new under the sun.

Ecclesiastes 1:9, King Solomon

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A Variety of Patentable Inventions

Whoever invents or discovers any new and
useful process, machine, manufacture, or
composition of matter, or any new and useful
improvement thereof, may obtain a patent
therefor, subject to certain conditions.
- 35 USC 101

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A Variety of Patentable Inventions

Machines &
Devices

Processes

Articles of
manufacture

Compositions of
matter
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A Variety of Patentable Inventions

Machine screwdriver
Improved machine better screwdriver
Compositions new drugs
Methods of making
Methods of using
Methods of treatment, e.g., a method for treating a disease
Business methods
Software

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 Note especially
Improvements to known technologies
New combinations of known
technologies
New uses of known technologies

are all patentable!

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What is not patentable?

Laws of nature

Natural phenomena

Abstract ideas

Humans

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Why Have Patents?

In the U.S. Constitution

The Congress shall have

the power 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.
- U.S. Constitution, Art. I, sect. 8
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Why Have Patents?

For the public benefit
The exclusive right to invention is given not of
natural right but for the benefit of society.
- Thomas Jefferson, 1813

To advance the state of technology available

to the public.

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Why Have Patents?

Supreme Court:
1) To foster and reward invention; and
2) To promote disclosure of inventions, to
stimulate further innovation and to permit the
public to practice the invention once the
patent expires

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IP is important!
Powerful business incentive
Legally-protected competitive advantage over
your competition
Important at all times; even during recessions
Recessions can be good time to start a business

IP-driven companies started during recessions:

Procter & Gamble

Disney
Johnson & Johnson
Microsoft

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What is a Patent?
A PATENT is a form of:
Intellectual property which is a creation of the
human mind that is protected by U.S. law in a
way similar to real property (e.g., a piece of land).
Intellectual property rights include:

Trademarks
Copyrights
Trade Secrets
Patents
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The Four Flavors of

IP

Trademarks

Identify source of goods

Copyrights
Protect works of authorship

Trade Secrets
Protect processes,
information

Patents*

Protect processes,
compositions, devices

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What is a Trademark?
What Is A Trademark?
A mark that identifies the origin of goods or
services in trade
Protect consumer from counterfeit products
Can last forever as long as you use it
Standard for infringement is consumer
confusion
Same mark may be used in different fields
without confusion

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How Do I Get a Trademark?

What Is A Trademark?

Start selling goods with a mark on them.

Common Law Trademark Rights arise when
you sell your first products
limited geographic scope
must prove damages
may not be able to expand

Use of PizzaTM provides notice that you are

claiming Pizza as a trademark, but you may not
be legally entitled to it..

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How Do I Get a Trademark?

Register your trademark with the Patent and
Trademark Office (PTO)
Mark is examined
Mark is published for opposition

Federally Registered Trademark

Geographic scope of the entire US
Statutory Damages
May become incontestable

Mark your product to provide notice

Only registered products can use

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What is a Copyright?
Exclusive right to a work of expression (e.g.,
a written story, a painting, or a song).
The subject of the copyright must NOT be
functional if functional, look to utility patents
Lasts for a LONG time life +70 or 95 years
is common
Copyrights provide exclusive rights with
regard to appearance or expression
May be curtailed by fair use or parody

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How Do I Get a Copyright?

Copyright subsumes in the work at the moment
of the works creation
Must register your copyright with the U.S.
Copyright Office to sue
If unregistered at time of infringement, you must
prove damages
If registered, then higher statutory damages
RIAA - $0.23/song vs. $5000 per song

Mark your work to provide notice

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What is a Trade Secret?

Confidential business information (e.g.,
customer lists, recipe, drink formula - Coke).

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How Do I Get a Trade Secret?

Business information must be kept confidential
(secret)
If made public, trade secret is lost
If trade secret is misappropriated (stolen), may
sue in court

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What is a Patent?
A PATENT IS A TOOL.
In business: a legal right to exclude others
In academia: patents spur interest in turning
research results into products that
benefit the public

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A Patent is A Contract with Society

Inventor gives to society:

A written description of his/her invention

that sufficiently teaches one of ordinary
skill in the art how to make and use the
claimed invention, and that sets forth
the best mode at the time of filing the
patent application.

Inventor gets from society:

About a 20 year monopoly from the filing

date to exclude others from practicing
the claimed invention.

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Patents Provide an Exclusive Property Right

- A patent DOES NOT
confer to the owner the
right to practice the
claimed invention!
- A patent IS NOT a
Seal of Approval of
Excellence in
Technology from the
U.S. Patent and
Trademark Office!

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The CLAIMS are key

Claims provide the metes and bounds of the
right that the patent confers to exclude others
from trespassing on the invention:

The Claimed
Invention

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Claim Terminology
comprising

is synonymous with including or

characterized by

is inclusive or open-ended and does

not exclude additional, unrecited
elements or method steps

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Claim Analysis
Example claim:
1. A cutting device, comprising:
a metal blade having a cutting edge; and
a handle attached to the metal blade.
DO THESE INFRINGE?

Yes
?

?
Yes

?
Yes

No
?

ANALYSIS: Any cutting device that has a metal blade

having a cutting edge, and a handle attached to the
metal blade will infringe the claim.

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Claim Analysis
Example claim:
1. A cutting device, comprising:
a plurality of metal blades, each having a
cutting edge; and
a handle attached to the plurality of
metal blades.
DO THESE INFRINGE?

No
?

?
No

?
Yes

No
?
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Patent Owner Rights

A patent is a grant by the U.S. government that entitles
the owner to exclude others from making, using,
selling, offering to sell or importing into the United
States a patented invention
A patent does NOT necessarily give the owner the
right to practice the patent, because of others
potential prior patent rights.

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Patent Rights
Patent 6,123,456
A method for making a chair comprising:
1) Step A

Your Patent
A method for making a chair
comprising:
1) Step A
2) Step B and
3) Step C

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What is a Patent?
A PATENT IS A TOOL.
In business: a legal right to exclude others
In academia: patents spur interest in turning
research results into products that
benefit the public

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Requirements for Patentability

Search patents,
publications, public
Utility it must be useful
uses (news, internet,
Novelty it must be new * USPTO website, etc.)
Non-obviousness it cant be a mere
variation of what was done before
Enabling Description -- application must:
fully disclose invention (including best mode
contemplated at time of filing); and
allow a person having ordinary skill in the art to
make and use the invention
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How Do I Obtain a Patent?

time

TSU Technology
Transfer Office
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Who is an inventor?
An inventor is simply a person who
contributed to the intellectual conception
of the claimed invention.

Who is not an inventor?

- workers who merely do what is asked and report
requested information to others
- managers who merely suggest a goal to achieve,
but not how to achieve it

Inventorship Authorship

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Your Publication Can Void Your Patent

Publish or present your
invention after filing a
patent application.
Publishing = any public
disclosure
For a U.S. patent a one year
grace period to file a patent
application
For international patents
typically, no patent for that
which was disclosed!
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Your Actions Can Void Your Patent

Avoid selling, offering for
sale, or using the
invention in public.
For a U.S. patent a one
year grace period to file a
patent application
For international patents
typically, no patent for
that which was disclosed
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Document how and when you

made your invention
Inventors should keep
notebooks numbered
pages, signed, dated and
witnessed - to document
their work.
Why?

All inventors must be

listed on a patent

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Keep Abreast of Relevant Literature in

Your Field
Do literature and
patent searches
Identify the closest
prior art to your
invention
Give key prior art
references to your
patent attorney to
analyze and submit to
Patent Office

http://www.cisl.ucar.edu/news/02/foto
week/1025.move1.jpg

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Obtaining Patents
Draft a patent application (use a
patent attorney)
describe how to make and use the
claimed invention
disclose your best mode

File it with the U.S. Patent and

Trademark Office

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U.S. PATENT AND

TRADEMARK OFFICE

http://www.uspto.gov/

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Typical Patent Application Timeline

Your Article Publishes
priority date

filing date

publication date

20 Oct 2010

20 Oct 2011

20 April 2012

file U.S. patent

application

one year from priority date

file optional international
patent application(s)

Examination of the Patent

Application and Claims Begins
by a U.S. Patent Examiner

time

1.5 years from

priority date
publication of
patent
application

Examination Continues

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Patentability v. Infringement of a Patent Claim

Prior Art (publications and

products) discloses the claim

Patent
Application
Priority Date
20 Oct 2010

Patent application

Future products
infringe the claim

for Cutting Device

time

Claim: A cutting device, comprising:

a metal blade having a cutting edge,
and
a handle attached to the metal blade.
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American Inventors Act (2012)

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Comparison to Georgia Patent Laws

First to file
Software patents
Business methods

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Comparison to Georgia Patent Laws

Copyright (automatic; covers the
authorship in the source code) may be
sufficient if:
Commercial life of software is less than
time to get patent
Value is in the source code rather than in
the method it performs
Method may not be patentable
Open source used

Patentability standard for software

patents is strict and uncertain (Bilski
case pending)
Must be tied to a machine (possibly more
than a general use computer) or result in a
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physical transformation

Patent Law and TSU

Protect patent rights using provisional
patent protection
Patenting is Prestigous

I did it!
And I was first!

Easy Publication no editors.

Licensing possibilities.
Recoup dollars spent on R&D
Expanded collaborations.
Commercial advantage over
competitors

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Patent Law and TSU

Keep and maintain good

laboratory notebooks
Routinely sign and date your
notebook even prior to actually
accomplishing your objective
Have records witnessed with
signature and date by an
objective witness a non-inventor

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Patent Law and TSU

Possible Patent Application Filing Strategy
Provisional Application
Non-Provisional
Application (Not later than
1 year after than
Provisional filing date)

Patent Cooperation
Treaty (Not later than1
year after filing the first
application)

Published Patent
Application (18 months
after filing the nonprovisional application)

National Stage Filing in

Individual Countries
(approximately 30
months after the first
application is filed)
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THANK YOU!

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