recent changes in the us patent system affecting engineers peter d. mlynek, mba, phd, esq. 2012 may...
TRANSCRIPT
Recent Changes in the US Patent System Affecting Engineers
Peter D. Mlynek, MBA, PhD, Esq.2012 May 1
Overview of this presentation
• Overview of patent system• Overview of the new patent law• How it effects you
New Patent Law:America Invents Act
• Biggest change to the Patent Law since 1952• Signed into law on September 16, 2011– Rolling out over 18 months
• Many different changes– This presentation concentrates on the most
relevant to this audience, and not necessarily the most legally important changes
Given Reasons for America Invents Act
• Improve quality of patents• Harmonization with other patent systems• Increase certainty in litigation• Update in view of court holdings, technology
What is a Patent?Full Disclosure of an Invention
Exclusive Right
Exclusive Right to…
Competitors
What is a Patent?
A tool to make money
Marketing Tool
Monopolistic ToolCapital Raising Tool
Cross Licensing Tool
How Much to Get a U.S. Patent?
Process of Getting a Patent
Conception
Reduction to Practice
Draft
Prosecution
Licensing
Application
PTO
Drafting
Filing
ProsecutionIssue
Main-ten-ance
Why so much to get a patent?
Drafting
Filing
ProsecutionIssue
Main-ten-ance
How Can We Get a Patent Cheaper?Pay less for
patent lawyerPay less tothe USPTO
How Can We Get a Patent Cheaper?Pay less for the Patent Lawyer
• Reality: There are no economies of scale!- A patent for a small company costs just as much as for a large company
• Have all necessary information for lawyer ready- Business plan, marketing, etc.- Experimental data, procedures, etc.
• Smaller law firm – big firms charge big bucks• Flat fee
How Can We Get a Patent Cheaper?Discounts at the US Patent Office
Big Businesses
Regular Price for USPTO fees
Individual InventorsAND
Universities“Micro Entity”
Small Businesses“Small Entity”
–50% –75%
+
Introduced by AIA
Speaking of Patent Office Fees…
PTO
$Historically
…, but the Congress sets the fees
PTO can set their fees as
it sees fit!
Result:DRASTIC fee
price increases
Introduced by AIA
Recently
Requirements to Obtain a Patent
Useful Described
New Not Obvious
Requirements to Obtain a Patent
Questions about patentability with respect to usefulness come up in- Biological technology- Computer programs - Finance
AIA: Tax strategies are no longer patentable; Human organism is not patentable
UsefulGenerally, a low hurdle to overcome in cases of electrical engineering and computer hardware inventions.
Requirements to Obtain a Patent
DescribedThe patent applicant must describe the invention in order to get rights to it-Description-Enablement-Best Mode
AIA: Best mode needs to be in the patent, but if it is not there, the patent is still OK
Unique to the US Still need to put Best Mode into the application.
Requirements to Obtain a Patent
New
If it is not new, then it is not patentable.
If some else has a patent on it, then it is not patentable.
The AIA rewrote the entire law on this requirement.
Requirements to Obtain a Patent
• Is the invention obvious over what is known?• The MOST difficult of the 4 requirements– 60-80% of attorney’s time during prosecution
• Mostly unchanged by AIA
Not Obvious
Comparison of Patent Systems
First to File
First inventor
Patent Office
Whoever invents first, generally wins the patentCancelle
d by AIA
Treatment of Disclosures
First to File
First inventor
NEW First Inventor to File
Publications prior to filing are held against the filer
Publications > 1yr before filing are held against the filer
Publications by others prior to filing, and own publications > 1yr before filing, are held against the filer
Publications
OLD
Treatment of Disclosures
5/20145/2013
Application Filed
Disclosure of Invention
NEW
Disclosure is prior art, no patent
Disclosure is prior art, no patent
Disclosure is prior art, no patent
Scenario
1
OLD
Treatment of Disclosures
5/20145/2013
Application Filed
Disclosure by Filer
NEW
Disclosure is prior art, no patent
Disclosure is not prior art
Disclosure is not prior art
Scenario
2
OLD
Treatment of Disclosures
5/20145/2013
Application Filed
Disclosure by Another
NEW
Disclosure is prior art, no patent
Disclosure is not prior art
Disclosure is prior art, no patent
Scenario
3
OLD
Treatment of Disclosures
5/20145/2013
Application Filed
Disclosure by Another
NEW
Disclosure is prior art, no patent
Disclosure is not prior art
Disclosure by Filer
Disclosure is not prior art
Scenario
4
OLD
Treatment of Competing Filings
A files anapplication
B files anapplication
NEW
A wins
A wins
First inventor wins
But not everything is lost for B!
3 strategies for B
Scenario
5
OLD
Treatment of Competing Filings
A files anapplication
B files anapplication
NEW
A wins
A wins
BA
First inventor wins
Scenario
5
OLD
Treatment of Competing Filings
A files anapplication
B files anapplication
NEW
First inventor wins
B wins if A derived the invention from B
Scenario
5
OLD
Treatment of Competing Filings
A files anapplication
B files anapplication
NEW
First inventor wins
5/20145/2013
Disclosure by B
B wins
Disclosure is prior art, no patent for anyone
Scenario
5
OLD
Recommendations
• File a patent application before any public disclosure to prevent loss of rights outside US
• Publish frequently and often if non-US rights are not important
• Keep track of competitors• File patent applications early and often
Additional Changes
• Changes in Third Party submissions during pendency of the application
• New: Supplemental Examination by the patent owner• New: Post Grant Review
Patent pending Patent in force
Within the PTO
Federal Courts
More $$$
Additional Changes
• Changes in Third Party submissions during pendency of the application
• New: Supplemental Examination by the patent owner• New: Post Grant Review
Patent pending Patent in force
Recommendation: Keep track of competitor’s applications and patents in view of disclosures.
Within the PTO
Federal Courts
More $$$
Additional Changes: Patent Markings
Competitors
US Pat. US Pat.
Additional Changes: Patent Markings
Competitors
US Pat. US Pat.
Unlawful restriction of trade if products are marked as patented, but there is no valid patent
Deceptive, anti-competitive
Additional Changes: Patent Markings
• Old law: Anyone can sue ($500/mismarked item) and split it 1:1 with the government
US Pat. US Pat.Deceptive, anti-competitive
$$$
Additional Changes: Patent Markings
• Old law: Anyone can sue ($500/mismarked item) and split it 1:1 with the government
• AIA: only those who are hurt can sue for compensatory damages, plus U.S. gov’t
US Pat.$ 10,800,000,000,000.00
Restricted
by AIA
Additional Changes:Virtual Patent Markings
• Old: “Pat.” and numbers– Dozens or hundreds may be listed
• New: “Pat.” and URL
Filings by Assignee• An employer
now can easier file a patent application on behalf of an employee inventor, or an ex-employee inventor
