Patent Law
for Engineers
Sean D. Burdick, P.E.
Patent Attorney
What I’m Gonna Tell ‘Em:
1.
About me
2.
Career Paths in Law
3.
Law School
4.
Overview of U.S. Patent Law
5.
Patent-Related Issues
Facing Engineers
1.1 About me
"He who represents himself has
a fool for a client." - Abraham Lincoln
▪ Idaho Falls High School Class of 1983
▪ B.S.E.E., University of Idaho, 1989
▪ Ten years in commercial nuclear power
▪ P.E. License, California, 1999
▪ U.S. Patent Bar, 2002
▪ J.D., University of San Diego, 2003
▪ California State Bar, 2003
▪ Patent Attorney, Snell & Wilmer L.L.P.
2.1 Careers in Law
Careers in Law
United States Patent & Trademark Office
James Madison Bldg., Alexandria, Virginia
2.2 Careers in Law
You Can Be A Patent Examiner!
▪ B.S. from ABET accredited school
▪ Higher pay for GPA > 2.95, upper 1/3
class rank, honor society membership,
graduate level coursework
▪ Recruitment bonus, flexible schedules, telecommuting, reimbursement for law school
▪ Specialized training provided
▪ Review applications for compliance with
rules and legal standards for patentability
▪ Electrical/Computer Engr: $63k to $83k
See: www.uspto.gov/go/ac/ahrpa/ohr/jobs/qualifications.htm
2.3 Careers in Law
You Can Be A Patent Agent!
▪ No law degree needed to prosecute patents
▪ You just need to pass the Patent Bar
▪ Only engineers & scientists are qualified to
take the Patent Bar
▪ B.S. from an accredited school, or passing
the E.I.T. qualifies you to take the Patent Bar
▪ Computer-based exam offered every month;
cost is $200 plus $40 application fee
▪ Patent Bar review course highly recommended
▪ Electrical/Computer Engr: $90k to $100k
See: www.uspto.gov/web/offices/dcom/gcounsel/oed.htm;
See: www.prometric.com
2.4 Careers in Law
You Can Be A Patent Atty!
▪ Only lawyers who pass the patent bar can
call themselves patent attorneys
▪ B.S. & LSAT score (+ $) gets you into law school
▪ engrs well-equipped for rigors of law school
▪ night school programs in law school
▪ $160k starting salary at top IP firms
▪ get into the highest ranked law school
possible; check out U.S. News Rankings
▪ take electives in IP law
▪ pass the Patent Bar while in law school
▪ male-to-female ratio at law school about 50/50
TIP: don’t take the LSAT until serious; study for 2 months prior
TIP: file a patent application – publication at 18 months is guaranteed
2.5 Careers in Law
You Can Practice Law!
▪ Must pass a state Bar Exam
▪ Must pass Character & Fitness
▪ Continuing legal education
▪ Products liability
▪ Construction defects
▪ Energy
▪ Licensing / contracts
▪ Patent litigation
3.1 Law School
Basic Requirements for Law School
▪ B.A. or B.S. from an accredited school
▪ Halfway decent GPA
▪ LSAT score 150 or better for top tier schools
▪ Tuition avg.: $12k to $15k per year
Law School Admissions Test (LSAT)
▪ 4 times per year: June, September/October, December, February
▪ Five 35-minute multiple choice sections + One essay question
▪ Logical reasoning / Reading Comprehension / Analytical Reasoning
▪ Scored on a 120 to 180 scale
3.2 Law School
Core Studies in Law School
▪ Contracts
▪ Property
▪ Torts
▪ Constitutional Law
▪ Civil Procedure
▪ Criminal Procedure
▪ Criminal Law
▪ Evidence
3.3 Law School
The Socratic Method
▪ Professor asks questions to the student
▪ Every student will eventually be called on
▪ You learn by having to orally defend your
position
Costs / Rewards
▪ 3 years full time / 4 years part time
▪ $50k to $100k in total costs
▪ Juris Doctor (J.D.) degree
▪ research, writing, oral skills
4.1 Overview of U.S. Patent Law
What is Intellectual Property (IP)?
Patents,
Trade Secrets
IDEAS
IP
Design
Patents
IP
SOURCE
OF GOODS
Trademarks,
Goodwill
IP
ARTISTIC
EXPRESSION
Copyrights
4.2 Overview of U.S. Patent Law
Constitutional Origin
The Congreff 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.
▪ Title 35 USC §§ 1 to 376 (three volumes)
▪ 37 CFR §§ 1.1 to 1.995 (about 200 pages)
▪ MPEP (two volumes, 27 chapters, seven appendices
▪ thousands of decisions in the federal courts
Article I, Section 8
4.3 Overview of U.S. Patent Law
A Patent is a Legal Monopoly
1.
right to exclude others from making, using or
selling a product covered by the patent claims
2.
enforceable only within the country that grants
the patent right
3.
the patent claims define the scope of the
patentee’s rights
4.
does not protect a patentee against infringement
4.4 Overview of U.S. Patent Law
Some Basic Patent Law:
▪ anyone can apply for a U.S. patent
▪ property rights vest initially in the inventor
▪ the date of invention is the actual date of
conception followed by diligent
reduction to practice, not the filing date
▪ one year grace period to file your patent
application after initial public disclosure
▪ there can be multiple claims to a single invention
▪ there can be multiple inventors in a single patent
▪ the enforceable life of a patent is about 17 years
4.5 Overview of U.S. Patent Law
What is patentable subject matter?
Ans: Anything under the sun made by man that is a
1. new,
2. useful, and
3. non-obvious
4. process, machine, manufacture,
or composition of matter
4.6 Overview of U.S. Patent Law
The first
U.S. Patent:
4.7 Overview of U.S. Patent Law
Form of a U.S. Patent
1. Cover page
(no., title, term, Abstract)
2. Drawings
3. Field & Background
4. Summary
5. Drawing Descriptions
6. Specification
7. Claims
4.8 Overview of U.S. Patent Law
Example of a U.S. Patent
4.9 Overview of U.S. Patent Law
Example of a U.S. Patent
400
402
416
428(a)
428(b)
420
2-CHANNEL
NARROWBAND
RECEIVER
464
476
480
SPECTRAL
DENSITY MOVING
WINDOW
AVERAGE
DYNAMIC
SPECTRAL
ANALYSIS
A/D
CONVERTER
462
472
470
466
460
468
474
404
478
490
482
484
M
440
496
M
486
492
DETECTION
LOGIC
USER
INTERFACE
442
488
494
408
Fig. 4
4.10 Overview of U.S. Patent Law
Example of a U.S. Patent
100
128(a)
102
108
128(b)
104
116
Fig. 1b
110
116
106(a)
120
104
112
108
124
118
106(b)
122
130
126
114
Fig. 1a
112
4.11 Overview of U.S. Patent Law
Example of a U.S. Patent
4.12 Overview of U.S. Patent Law
Example of a U.S. Patent
4.13 Overview of U.S. Patent Law
Patent Facts:
▪ over 7 million patents have been granted
in the United States since 1790
▪ 426,000 utility patent applications were filed
in the USPTO in 2006 (48% foreign)
▪ 196,000 utility patents were granted in
the USPTO in 2006
▪ it takes about 3 to 4 years to get a patent
▪ 5,500 patent examiners at the USPTO
▪ there are now over 760,000 patent applications
pending at the U.S. Patent & Trademark Office
5.1 Patent-Related Issues Facing Engineers
Patent–Related Issues Facing Engineers
5.2 Patent-Related Issues Facing Engineers
Is My Idea Patentable?
▪ novelty and obviousness are the toughest hurdles
▪ any prior publication anywhere in the world can
defeat novelty
▪ obviousness is based on a
combination of references
and the knowledge of “one
skilled in the relevant art”
▪ before filing a patent appl.,
you may want to conduct a
prior art search* yourself or
hire a searching firm
* See: http://www.uspto.gov/patft/index.html
5.3 Patent-Related Issues Facing Engineers
Am I Infringing Somebody Else’s Patent?
1. Constructive Knowledge
- the Marking statute: 35 USC §287
2. Actual Knowledge
- cease and desist letter
- lawsuit
- failed licensing negotiation
or other correspondence
3. No damages prior to knowledge
4. Treble damages for willful infringement: 35 USC §284
5. Costs and attorneys fees: 35 USC §285
5.4 Patent-Related Issues Facing Engineers
If the product is patent-protected …
How Do I Avoid The Monopoly?
1. get permission from owner or assignee (in writing!)
- locate the current owner via:
http://assignments.uspto.gov/assignments/q?db=pat
2. obtain a license
- reasonable royalties – 2½ to 3½ % of sales?
- you only need to license from a single owner
3. purchase the patent
4. work outside the jurisdiction
5. design around the claims
5.5 Patent-Related Issues Facing Engineers
Designing around the claims
▪ the claims define the limits of the patent
monopoly
▪ If the patent claims elements A + B + C
▪ you infringe if your product contains element A + B + C
regardless of the presence of additional elements
▪ you don’t infringe if your product is missing any one of
elements A or B or C
▪ e.g., a product comprising A + B + C + D infringes
▪ e.g., a product comprising A + C + D + E does not
5.6 Patent-Related Issues Facing Engineers
What is a trade secret?
▪ not generally know to the public
▪ confers economic benefit to the holder
▪ holder makes reasonable efforts to
maintain the secret
The antithesis of a patent:
▪ legal protection is possible without disclosure of the secret
▪ secret maintained through NDAs and “Proprietary” designations
▪ theoretically indefinite life – perpetual monopoly
▪ BUT, no legal protection if someone else legally discovers the secret
5.7 Patent-Related Issues Facing Engineers
Misappropriation of Trade Secret
▪ industrial espionage
▪ breach of NDA
▪ unauthorized disclosure of PROPRIETARY document
Is there a legal way to discover a trade secret?
▪ holder fails to take reasonable efforts to maintain the secret
▪
REVERSE ENGINEERING !!!
What I Told ‘Em:
1.
About me
2.
Career Paths in Law
3.
Law School
4.
Overview of U.S. Patent Law
5.
Patent-Related Issues
Facing Engineers
Patent Law
For Engineers
Sean D. Burdick, P.E.
Patent Attorney
Snell & Wilmer, LLP
600 Anton Blvd. Suite 1400
Costa Mesa, CA 92626-7689
(714) 427-7000
sburdick@swlaw.com