Understanding Patents from the 2018 IP Survey - Insights and Guidelines
Explore key insights from the 2018 IP Survey regarding patents, including the importance of creating roadblocks against commercial use of inventions, considerations for patent eligibility, and specific rules affecting software, business methods, and naturally occurring substances. Learn about the evolving landscape of patent claims, eligibility criteria, and the impact of Supreme Court decisions on patenting software methods. Discover common pitfalls leading to issued patents becoming obsolete and the nuances of patenting products derived from nature.
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PATENTS IP SURVEY 2018 PROF. JANICKE
WHAT WE ARE TRYING TO DO USUALLY, IT IS NOT ABOUT STOPPING SOMEONE ELSE FROM GETTING THE PATENT IT IS ABOUT GETTING A ROADBLOCK AGAINST OTHERS MAKING OR USING THE INVENTION COMMERCIALLY 2018 IP Survey -- Patents 2
THE OTHERS MIGHT BE: COMPETITORS POTENTIAL LICENSEES THE PATENT IS A BIG NET, FOR CATCHING THEM 2018 IP Survey -- Patents 3
PATENT ELIGIBILITY MOST KINDS OF MACHINES, COMPOUNDS, MIXTURES, AND METHODS, ARE ELIGIBLE FOR CONSIDERATION IF APPLICANT BELIEVES THEY ARE NEW 2018 IP Survey -- Patents 4
IMPORTANT! NEWNESS IN FACT IS ALSO REQUIRED, BUT HAS NOTHING TO DO WITH ELIGIBILITY ELIGIBILITY ASKS: IF THIS TURNS OUT TO BE NEW AFTER A CAREFUL EXAMINATION, IS IT O.K. FOR PATENTING? 2018 IP Survey -- Patents 5
CURRENT ELIGIBILITY RULES FROMS. CT. COMPUTER SOFTWARE: NOW IN DOUBT BUSINESS METHODS: NOW VERY MUCH IN DOUBT PRETTY MUCH DEAD NATURALLY OCCURRING SUBSTANCES ARE NOT ELIGIBLE EVEN IF PREVIOUSLY HIDDEN! 2018 IP Survey -- Patents 6
CASES DDR (software) VANDA ( product of nature ) 2018 IP Survey -- Patents 7
WHAT WE KNOW FROM THE SUPREME COURT AT THE MINUTE: SOFTWARE METHOD CLAIMS: ARE ELIGIBLE FOR PATENTING IF THEY RECITE SIGNIFICANT PHYSICAL APPLICATION OF THE PRINCIPLES INVOLVED OTHERWISE, THEY ARE ABSTRACT AND INELIGIBLE 2018 IP Survey -- Patents 8
HUNDREDS OF THOUSANDS OF ISSUED PATENTS ARE DEAD LETTERS NOW 2018 IP Survey -- Patents 9
WHAT WE KNOW AT THE MINUTE ABOUT PRODUCTS OF NATURE : CLAIMS TO MATERIALS FOUND IN, OR DERIVED FROM, NATURE ELIGIBLE IF THE PATENT CLAIMS CHANGED MATERIALS THAT DO NOT OCCUR NATURALLY (e.g., MODIFIED BACTERIA; cDNA FROM HUMANS) OTHERWISE, INELIGIBLE 2018 IP Survey -- Patents 10
WHAT WE KNOW AT THE MINUTE CLAIMS TO DIAGNOSTIC METHODS: APPEAR TO BE INELIGIBLE IF HUMAN THOUGHT OR OBSERVATION, OR EQUIVALENT ACTION BY COMPUTER, IS INVOLVED SEE, e.g., MYRIAD, (S.Ct. 2013), INVALIDATING CLAIMS TO METHOD OF PREDICTING BREAST CANCER BY DNA ANALYSIS 2018 IP Survey -- Patents 11
BEYOND ELIGIBILITY: CLAIMED CLASS MUST BE NEW MOST PATENTS BROADLY CLAIM CLASSES OF THINGS, NOT A SINGLE STRUCTURE, COMPOUND, PROCEDURE, ETC. THINK OF IT AS MULTIPLE CONFIGURATIONS 2018 IP Survey -- Patents 12
THE NOVELTY RULE: ALL CONFIGURATIONS WITHIN THE CLAIM LANGUAGE MUST BE NEW FOR THE CLAIM TO BE VALID EVEN IF THIS INVENTOR NEVER INTENDED OR THOUGHT OF THE ONE OLD CONFIGURATION 2018 IP Survey -- Patents 13
NEARLY ALL PATENT CLAIMS ARE FOR COMBINATIONS THE KEY LEGAL QUESTION: IS THE COMBINATION NEW? 2018 IP Survey -- Patents 14
*WE DONT MEAN THE INDIVIDUAL ELEMENTS RECITED IN THE CLAIM* THE ELEMENTS ARE ALWAYS OLD, BECAUSE THAT S THE ONLY THING GENIUSES HAVE TO WORK WITH: ALL THE WORDS IN HAMLET WERE OLD ALL THE NOTES IN BEETHOVEN S FIFTH SYMPHONY WERE OLD 2018 IP Survey -- Patents 15
CAN YOU THINK OF AN INVENTION THAT IS NOT A COMBINATION OF OLD ELEMENTS? 2018 IP Survey -- Patents 16
THE NOVELTY QUESTION IN PATENT LAW IS THE CLAIMED COMBINATION NEW? JUST LIKE A LOCKER COMBINATION; THE ELEMENTS ARE OF COURSE OLD 2018 IP Survey -- Patents 17
I NEVER SAW THE CLAIMED COMBINATION ON THE MARKET THE KNOWN MARKET IS NOT A RELIABLE PATENT INDICATOR TOO NARROW 2018 IP Survey -- Patents 18
MEANING OF NEW IS SEVERE IN PATENT LAW >>> 2018 IP Survey -- Patents 19
MEANING OF NEW IN PATENT LAW IT MEANS: NO CONFIGURATION WITHIN THE CLAIM LANGUAGE WAS EVER: DISCLOSED IN PRIOR LITERATURE ANYWHERE INCLUDING PRIOR PATENTS IN A PRODUCT OFFERED FOR PUBLIC SALE ANYWHERE PUBLICLY USED ANYWHERE 2018 IP Survey -- Patents 20
HOW DO WE KNOW IF THE COMBINATION IS NEW? WE DON T KNOW FOR SURE THE PTO DOESN T KNOW EITHER WE OPERATE BY PRESUMPTIONS, UNTIL THEY ARE OVERCOME BY EVIDENCE 2018 IP Survey -- Patents 21
CLAIMING CLASSES OF THINGS EXAMPLE 1 CLAIM AN ENGINE BLOCK, HAVING AT LEAST 6 CYLINDERS ASSUME CLIENT HAS DESIGNED ONE WITH 12 CYLINDERS THIS CLAIM IS OK, UNLESS THE PRIOR LITERATURE REVEALS ANY CAR ENGINE WITH 6, 7, 10, 12, 16, 32, etc. CYLINDERS. IF SO, CLAIM IS DEAD 2018 IP Survey -- Patents 22
THIS WAS A GOOD TRY BY THE PATENT LAWYER YOU WANT TO CLAIM BROADLY THE CLAIM LANGUAGE, NOT WHAT THE CLIENT DESIGNED, SETS THE BOUNDARIES OF THE INTELLECTUAL PROPERTY *CLAIM LANGUAGE DETERMINES WHAT IS AN INFRINGEMENT AND WHAT IS NOT* 2018 IP Survey -- Patents 23
ON THE OTHER HAND, BROADER CLAIM INCREASES RISK OF INVALIDITY WHY? 2018 IP Survey -- Patents 24
NOVELTY OF A CLAIM EXAMPLE 2: COMPOUNDS HAVING THE STRUCTURE R1 [AROMATIC AMINO ACID] R2, WHERE R1 IS ALKYL AND R2 IS A SULFATE OR A HALIDE THIS IS A TYPICAL BIG PHARMA CLAIM1 COVERS HUNDREDS OF COMPOUNDS >>> 2018 IP Survey -- Patents 25
IF ANY ONE COMPOUND WITHIN THE CLAIMED CLASS SHOWS UP IN THE PRIOR LITERATURE, THIS WHOLE CLAIM IS INVALID IN INFRINGEMENT LITIGATION, COURTS HAVE NO POWER TO AMEND A CLAIM TO NARROW AND SAVE IT 2018 IP Survey -- Patents 26
SO: SO: IF A PRIOR ARTICLE DESCRIBES AN AROMATIC AMINO ACID, WITH PROPYL ATTACHED ON ONE SIDE AND FLUORIDE ON THE OTHER SIDE, THIS WHOLE CLAIM IS INVALID EVEN THOUGH IT COVERS MANY NEW COMPOUNDS AS WELL 2018 IP Survey -- Patents 27
MOST PATENTS HAVE MANY CLAIMS WHY? BECAUSE YOU NEVER KNOW WHICH ONES WILL BE TOO BROAD = INVALID PATENTS CONTAIN MANY CLAIMS; *EACH CLAIM ACTS AS A MINI- PATENT UNTO ITSELF* INFRINGING ANY ONE VALID CLAIM IS PATENT INFRINGEMENT 2018 IP Survey -- Patents 28
ONLY A CLAIM CAN BE INFRINGED WE TALK (COLLOQUIALLY) ABOUT INFRINGING A PATENT PATENT LAWYERS KNOW THE TRUTH: ONLY A PATENT CLAIM CAN BE INFRINGED CLAIM 1 MIGHT BE INFRINGED, BUT NARROWER CLAIM 7 MIGHT NOT BE 2018 IP Survey -- Patents 29
TEST FOR INFRINGEMENT PICK ANY CLAIM OF AN ISSUED PATENT ASK: DOES THE ACCUSED PRODUCT HAVE EVERY FEATURE RECITED IN THIS CLAIM, CONNECTED AS RECITED IN THE CLAIM? 2018 IP Survey -- Patents 30
CLAIM 1 IS USUALLY WRITTEN MOST BROADLY (MOST LIKELY TO BE INFRINGED, BUT COULD BE INVALID) CLAIM 2 IS NARROWER LESS POWERFUL AGAINST INFRINGERS; HARDER TO FIND ALL THE RECITED FEATURES IN ACCUSED PRODUCT BUT MORE LIKELY TO TURN OUT TO BE VALID 2018 IP Survey -- Patents 31
CLAIMS 3-25: NARROWER STILL, USUALLY PATENT POWER (AND VALUE): HAVING A CLAIM THAT IS (i) NARROW ENOUGH TO BE VALID, and (ii) BROAD ENOUGH TO CAPTURE COMPETITOR S PRODUCTS 2018 IP Survey -- Patents 32
SO, THE BIG PHARMA PATENT OF EXAMPLE 2: WOULD HAVE NOT ONLY CLAIM 1 (ABOVE) BUT MANY NARROWER CLAIMS, JUST IN CASE CLAIM 1 TURNS OUT TO BE INVALID THE BLOCKBUSTER DRUG FOR THIS PATENT IS PROBABLY AROUND CLAIM 9: 2018 IP Survey -- Patents 33
CLAIM 9: THE AROMATIC AMINO ACID OF CLAIM 1, WHEREIN R1 IS BUTYL AND R2 IS BROMINE THIS CLAIM LIES INSIDE CLAIM 1 IS NARROWER MAY BE VALID, EVEN THOUGH CLAIM 1 TURNS OUT TO BE INVALID >>> 2018 IP Survey -- Patents 34
RECALL: CLOSEST PRIOR LITERATURE DESCRIBED AROMATIC AMINO ACID, WITH PROPYL ON ONE SIDE AND FLUORINE ON THE OTHER SIDE OUR NARROW CLAIM 9 LOOKS OK: AAA WITH BUTYL ON ONE SIDE AND BROMINE ON THE OTHER SIDE NOT SEEN IN THE PRIOR LITERATURE 2018 IP Survey -- Patents 35
CLASSROOM PROBLEM: CLAIM THE INSTRUCTOR S TABLE [CLIENT THINKS IT S A GREAT INVENTION ] WHAT TO WRITE? 2018 IP Survey -- Patents 36
PROCEDURE FOR GETTING A PATENT 2018 IP Survey -- Patents 37
ACTUAL INVENTORS MUST USUALLY APPLY OR MAKE STATEMENT THIS IS MERELY PAPERWORK OWNERSHIP IS OFTEN IN AN ASSIGNEE WHO ARE THE INVENTORS ? 2018 IP Survey -- Patents 38
INVENTORS THOSE WHO THOUGHT OF SOMETHING COVERED BY THE CLAIM NOT SOMEONE WHO LEARNED IT FROM SOMEONE ELSE 2018 IP Survey -- Patents 39
INVENTORS YOU DON T REALLY KNOW WHO THEY ARE UNTIL THE CLAIMS ARE DRAFTED AND ALLOWED BY PTO THOSE INVOLVED IN A MERELY MINISTERIAL OR MANAGERIAL WAY ARE NOT INVENTORS 2018 IP Survey -- Patents 40
THE NAMED INVENTORS ARE ALWAYS THE INITIAL OWNERS OF THE PATENT RIGHT USUALLY THEY ASSIGN TO A COMMON ENTITY, WHICH BANKROLLS THE APPLICATION 2018 IP Survey -- Patents 41
HOW THE CLAIMS SYSTEM WORKS CLAIMS ARE AT THE END OF A PATENT YET, THEY ARE THE ONLY IMPORTANT PART FOR PRACTICAL PURPOSES THEY DEFINE THE SCOPE OF COVERAGE FAMILIES OF THINGS 2018 IP Survey -- Patents 42
PURPOSE OF A CLAIM: TO DEFINE COVERAGE AS BROADLY AS POSSIBLE ANYONE WHO LATER OPERATES WITHIN THE FAMILY OF A CLAIM IS AN INFRINGER OTHERS AREN T 2018 IP Survey -- Patents 43
EXAMPLE OF CLAIMING: THE FIRST CAR CLIENT SHOWS YOU A MACHINE SHE HAS DEVISED: IT HAS: A CHASSIS 4 WHEELS A 10-CYLINDER ENGINE A BRAKE ON EACH WHEEL A 3-SPEED TRANSMISSION 2018 IP Survey -- Patents 44
HOW TO CLAIM? RULE #1: CLAIM MUST EMBRACE SOME STRUCTURE THE INVENTOR ACTUALLY THOUGHT OF RULE #2: CLAIM SHOULD BE WORDED AS BROADLY AS POSSIBLE, BUT MUST NOT COVER ANY PREVIOUSLY KNOWN CONFIGURATION 2018 IP Survey -- Patents 45
NEARLY ALL PATENT CLAIMS BEGIN WITH: A ____, COMPRISING COMPRISING MEANS INCLUDING AT LEAST CLAIM DEFINES THE INVENTION IN TERMS OF ITS MINIMUM ESSENTIAL CHARACTERISTICS 2018 IP Survey -- Patents 46
ALL FUTURE THINGS THAT HAVE AT LEAST THESE RECITED CHARACTERISTICS ARE WITHIN THE CLAIM, AND ARE INFRINGEMENTS EVEN THOUGH THE LATER THINGS HAVE ADDED STRUCTURES, CHARACTERISTICS, AND FEATURES, AND ARE GREATLY IMPROVED 2018 IP Survey -- Patents 47
INVALID PATENT CLAIM: A VEHICLE COMPRISING A CHASSIS AND WHEELS PATENT DISCLOSES AN EARLY TYPE OF CAR WAGON W/ ENGINE AND STEERING LEVER YOUR 2017 BMW INFRINGES THIS CLAIM BUT FORTUNATELY FOR YOU, THE CLAIM IS INVALID IT COVERS LOCOMOTIVES, WHICH CAME BEFORE 2018 IP Survey -- Patents 48
A CLAIM WORDED TO COVER ONLY WHAT THE CLIENT THOUGHT OF: WOULD BE MALPRACTICE COMPETITORS WILL DESIGN AROUND THAT CLAIM LANGUAGE 2018 IP Survey -- Patents 49
EXAMPLE A PATENT CLAIM LISTS 6 FEATURES OR ELEMENTS, A THROUGH F TO AVOID INFRINGEMENT OF THIS CLAIM, YOU NEED ONLY TO OMIT ANY ONE OF THOSE FEATURES A-B-C-E-F DOES NOT INFRINGE THE CLAIM 2018 IP Survey -- Patents 50
