for
October 3, 2011
Robert Teel

U.S. Patent No. 6,366,389

• INVENT IT—patents, trade secrets
• CREATE IT—copyright, trade secrets
• USE IT—trademark
• REGISTER IT—patent, copyright, trademarks
• BUY IT

• Not a Trademark:
• Not Trade Dress:
• Not a Trade Secret:
• Not a Copyright or Mask Work:
Mask Work for
Intel 4004 chip

Full public disclosure
Right to exclude
(if patentable)

• No protection at all
• Trade secrecy
– Viable if others cannot discern what the invention is or how to recreate it
– Requirements
• Value attributable to secrecy
• Reasonable precautions to safeguard the secret(s)
• Considerations
– Is secrecy possible?
– Low level of innovation?
– Ephemeral market?
– Money spent better in other ways?
– Can desired exclusivity be obtained another way?

Utility (or “Patent”) Design Plant

• A One-year placeholder
– Allows you to file a non-provisional application within 1 year
– Expires in one year (does not mature into a patent itself)
• Requirements
– No special format required
– No claim required
– But, it must adequately describe the invention as claimed later in the follow-on non-provisional
• Danger: Disclosure turns out to be inadequate
– Lack of thought about how to claim the invention
– Ignorance of the prior art
• Disadvantage: Delay grant of patent

I.
Invent
II. Prepare a patent application
III. File a patent application at USPTO
IV. Wait (2–5 years)
– Application will publish in about 18 mos. (usually)
V. Negotiate patentability of claims with patent examiner
– Examiner makes rejections
– Overcome rejections by amendment and/or argument
VI. Patent will issue if successful

• Your invention ≠ your product (usually)
• Focus on product features
– “Sales points”
• Focus on problems solved
– Each solution might be a patentable invention
• Not purely in terms of advantages

1. Client and/or inventor identify candidate inventions
2. Inventors write descriptions of inventions
3. Client screens inventions
4. Attorney interviews inventor
5. Search prior art
6. Attorney drafts sample claim(s)
7. Attorney & client discuss sample claim(s)
8. Client decides if worth pursuing
9. Attorney drafts specification and full claim set
10. All inventors review draft
11. Revise draft as necessary
12. File application when complete

• Examples: google.com/patents
• Front page
• Drawings
• Specification
– Background
– Summary
– List of Drawings
– Detailed Description of Embodiments
• Claims
– Meaning of claims depends on specification
– Meaning of claims also depends on prosecution history

• Backlog

• Eligible Subject Matter
• Timeliness
• Novelty
• Nonobviousness
• Clarity
• Adequate disclosure in specification
– Describe what the invention is
– Describe how to make it
– Describe how to use it
– Describe inventor’s favorite form of it
– Written for PHOSITA

• Exclude competitors from making, using, or selling
– Protect or gain market share
– Force competitors to offer inferior products
• Defensive posturing
– Deters others from suing you for infringement
– Cross-license to protect your freedom to operate
• Revenue generation
– License your patent to others
– Sell them for cash (Assignments!)
– Use as collateral for loan
• Gain credibility with VCs

• Only claims are infringed or not infringed
• Infringement of any one claim is enough
• Infringement requires that the infringing device/process has/performs every claim limitation
– Absence of one limitation  No infringement
– Difference from claim language in any way  No infringement
(usually)
• A good patent is imperative!

• Good Claims
– Variety of different types
– Rich sets of dependent claims
– No unnecessary limitations or words
– Covers the inventive concept as broadly and generically as the prior art allows
– Infringement can be detected and proven
– Infringed by desired target infringer by itself
• Good Specification
– Supports full breadth of claims
– Does not imply limiting meanings to claim terms
– No gaps in explanation
• Good Prosecution
– Does not distort or unduly limit meaning of the claims

• Bad Claims
– Few in number and type
– Few meaningful dependent claims
– Unnecessary limitations or words
– Infringement difficult to detect or prove
– Infringement requires combination of multiple things/actors together
• Bad Specification
– Describes few embodiments (maybe only one)
– Uses patent profanity ( e.g., describes embodiments as “the invention”;
“must”; “essential”; “critical”; “key”; “necessarily”)
– Implies limiting meanings to claim terms
– Makes admissions about the prior art
• Bad Prosecution
– Distorts or unduly limits meaning of the claims

 Prior Art
 Invention
 Claim for a Round Inflatable Ball
 A ball comprising:
 a covering configured to expand to a round shape;
 a bladder positioned within the covering and configured to retain air when inflated; and
 a valve extending from the bladder through the covering.
 Claim Scope
X X

 Prior Art
 Invention
 Soccer Ball Claim
 A ball comprising:
 a covering configured to expand and comprising a plurality of hexagon and pentagon shaped components;
 a bladder positioned within the covering and configured to retain air when inflated; and
 a valve extending from the bladder through the covering.
 Claim Scope
X X X X X

 Prior Art
 Invention
 Claim for a Football
 A ball comprising:
 a covering, wherein the covering is expandable to an ellipsoidal shape;
 a bladder positioned within the covering and configured to retain air when inflated; and
 a valve extending from the bladder through the covering.
 Claim Scope
 Dependent Claim
X X X X
“wherein the covering has a linear
X ridge adapted for finger placement”

• Tangible Things
– Machine
– Article of manufacture
– Composition of matter
• Process
• Computer Readable Medium
• Independent vs. Dependent
– Dependent claims
• Can help broaden independent claim
• Provide fall-back position

• Timeliness and Novelty requirements are different!
– No one-year grace period for your own public disclosure
– Novelty measured from date of filing, not date of invention
• Can do within one year of U.S. filing
– If you filed a provisional in U.S., that starts the 1-year clock
• Two options
– Direct filing in countries of interest ($$$ × N)
– Patent Cooperation Treaty (PCT)
• File one international application within the 1-yr. date ($)
• Receive preliminary search and patentability report
• File “national stage” applications in countries of interest within 18 mos. of PCT filing
• Excellent way to defer costs and reserve options
• Not Taiwan, Argentina, Chile (and others)

Robert Teel
Associate
Portland, OR
(503) 294-9463 Direct rrteel@stoel.com
900 SW Fifth Ave., Suite 2600
Portland, OR 97204
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