Introduction to IP
Nicole Morris, Esq.
October 19, 2015
Part I:
Overview of Intellectual Property
• What is Intellectual Property?
• Types of Intellectual Property Protection
• Why Protect Innovation?
• Importance of a Nexus Between Business Strategy & IP
Strategy
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Part II: Overview of Patents
• Forms of Patent Protection
• The Innovation Process
• Requirements for Patentability
• Infringement
• Patent Strategy Goals
• America Invents Act
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What is Intellectual Property?
• Intangible Assets
Copyright
Trademarks
Trade Secrets
Patents
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What is IP ?
Trademark
Formula:
Trade secret
Copyright
Industrial
Design,
Patent and
Trademark
Why Protect Innovation?
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There Must be a Nexus Between Business Strategy & IP Strategy
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Innovation Process
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•
•
•
Inventorship
Conception
Reduction to Practice
Invention Disclosure
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Who is an Inventor?
• An inventor is a person who contributes
to the “conception” of the invention; and
• Contribution is shown in at least one claim of the patent.
• Inventorship cannot be determined until the claims are known
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The definition for inventorship can be simply stated: “The threshold question in determining
inventorship is who conceived the invention. Unless a person contributes to the conception of the
invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice,
per se, is irrelevant [except for simultaneous conception and reduction to practice, Fiers v. Revel, 984
F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993)]. One must contribute to the conception to
be an inventor.” In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). See also Board of Education ex
rel. Board of Trustees of Florida State Univ. v. American Bioscience Inc., 333 F.3d 1330, 1340, 67 USPQ2d
1252, 1259 (Fed. Cir. 2003) (“Invention requires conception.” With regard to the inventorship of chemical
compounds, an inventor must have a conception of the specific compounds being claimed. “[G]eneral
knowledge regarding the anticipated biological properties of groups of complex chemical compounds is
insufficient to confer inventorship status with respect to specifically claimed compounds.”);
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What is Conception & Reduction to Practice?
• Conception – the mental part; consists of formulating the
idea, even if only in the inventor’s mind, of the means of
achieving a desired result
• Reduction to Practice – the physical part; it can be “actual” or
“constructive”
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• “Actual” Reduction to Practice:
– the successful physical use or carrying out the invention to achieve
the intended result
• “Constructive” Reduction to Practice:
– can involve the filing of the patent application that discloses the
invention completely enough for a person “skilled in the art” to put it
into practice
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Each individual who contributes to
the conception of an invention is an
inventor. Merely contributing to the
reduction to practice of an invention
does not count.
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Invention Disclosure
• Why is it important?
• Review relevant parts of an invention disclosure
• Sample questions during an inventor interview
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Invention Disclosure Form
An invention disclosure, or invention disclosure form, is a
confidential document written by a scientist or engineer for use
by a patent attorney to determine whether patent protection
should be sought for the described invention. It may follow a
standardized form established within a company or university.
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Examples of different forms of patent protection
Utility
Design
Plants
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Forms of Patent Protection
Utility Patents: for useful, novel, and non-obvious machines,
processes, articles of manufacture or compositions (~ 8.5
million patents today)
Design Patents: for a new, original, ornamental, and nonobvious design for an article of manufacture
Plant Patents: for a new and distinct varieties of asexually
reproducing plants (< 25,000)
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What is a Patent?
• Define patent rights
• Review parts of a patent
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What is a patent?
-No such thing as common law patent
rights. Rather, a patent is a government
issued grant conferring the right to
exclude others from making, using,
selling, offering for sale the claimed
invention throughout the U.S. or
importing the claimed invention into the
U.S.
- Term of exclusivity limited to 20 years
from date of filing; not affirmative right
to practice
-A patent does not give its owner a right
to use the claimed invention.
© C. Nard - Fall 2015 - Law of Patents
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Patent is Not
 A free license to use other’s
technology
No such thing as free
patents
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A Patent is a Property Right
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- There are similarities between, on the one
hand, real and personal property; and, on
the other hand, intellectual property
-The right to exclude is a key similarity
-But there are important differences between,
on the one hand, land, olive oil or a pen and,
on the other hand, information
© C. Nard - Fall 2015 - Law of Patents
Patent Law and the Marketplace
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



The patent system works hand-in-hand with the
marketplace
It is the private market that signals to innovators
where to channel their inventive energies
The patent system provides a property right as an
inducement to innovate, but does not channel the
direction of the innovation
Thus, the patent system and the marketplace work
hand-in-hand to foster innovation in a decentralized
setting
© C. Nard - Fall 2015 - Law of Patents
Economic Theories of Patent Law
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

A patent system, however, is not a costless enterprise.
With exclusivity comes the risk of reduced output,
excessively high prices, and therefore less access to the
patented product, because some consumers who value the
good at a competitive price will not buy it at a
supracompetitive price. This is referred to by economists
as deadweight loss
But to the extent these costs are cause for concern, they
are thought to be offset by the benefits engendered by a
patent system, which leads us to the economic theories for
the existence of a patent system.
© C. Nard - Fall 2015 - Law of Patents
Strategic Use of Patents
• Benefits:
– Establish a proprietary market advantage (category- leading
products, enhanced market share, higher monopoly-based margins)
– Protect core technologies and business methods (collateral for
cross-licensing deal with IBM)
– Boost R&D and branding effectiveness (Companies should focus on
development of patentable products)
– Improve Financial Performance Companies with technology assets
they fail to exploit, but increased emphasis on licensing
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What is a Patent?
• Define patent rights
• Review parts of a patent
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Specification
Description: description of the technical
problem faced by the inventor and how the
inventor solves the problem.
Drawings: attached
Preferred Embodiment (Best Mode)
Claim(s):
• preamble
• transition
• body
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© C. Nard - Fall 2015 - Law of Patents
Patent Components
Specification
1. A board for use in constructing a flooring
surface for exterior use
Transition
Description: description of the technical
problem faced by the inventor and how the
inventor solves the problem.
Drawings: if necessary
Claim(s):
single sentence rule
• preamble
introduction
• comprising (open)
• transition
• consisting of (closed)
• consisting essentially of (hybrid)
• body
elements/restrictions
Dependent claims
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a top surface, a bottom surface and opposite side
edges, said top surface being manufactured to have a
slightly rounded or curved configuration from a
longitudinal center line thereof downwardly toward
each side edge, thereby defining a convex top surface
which sheds water and at the same time is
comfortable to walk on, and said bottom surface
having a concave configuration for nesting
engagement with the top surface of another board so
that a plurality of the boards may be stacked one on
top of the other with the stability of conventional
boards having flat top and bottom surfaces.
2. A board as claimed in claim 1, wherein:
both the top and bottom surfaces of the board are curved
or rounded, with the concave curved surface on the
bottom of a board being shaped complementally to the
convex curved surface on the top of the board
3. A board as claimed in claim 2, wherein:
the radius of curvature of the top surface of the board is
approximately five times as great as the width of the board
© C. Nard - Fall 2015 - Law of Patents
1. An apparatus for receiving confections during Halloween guising, comprising:
a frame element including a base portion and a side portion including a first side
portion and a second side portion;
a container element including an interior surface defining a receptacle and an exterior
surface, wherein said container element is in the form of one from the group of a
pumpkin, witch, ghost, goblin, monster, vampire and werewolf;
a securing element, wherein said securing element removeably secures said container
element on said base portion between said first side portion and said second side
portion of said frame element;
a support element with a first end and a second end, wherein said first end of said
support element is attached to said frame element and said second end of said
support element is attached to a plurality of wheels; and
a projection element to control said plurality of wheels, said projection element
including a proximal end and a distal end attached to said frame element.
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US Patent
Claims
Term: 20
years from
filing
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Requirements for Patentability
• Novelty
• Non-Obviousness
• Adequate Written Description
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Patent Eligibility
(35 U.S.C. §§ 101)
“whoever invents . . . any new and useful process,
machine, manufacture, or composition of matter . . .
may obtain a patent therefor.”
•
Not patentable: laws of nature, abstract ideas,
natural phenomena
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Novelty
(a) NOVELTY; PRIOR ART.—A person shall be
entitled to a patent unless—
(1) the claimed invention was patented,
described in a printed publication, or in public
use, on sale, or otherwise available to the
public before the effective filing date of the
claimed invention
No geographic
limits for public
use or on-sale
activity
Nonobviousness
Primary Question - Is the invention “different enough” to
warrant the “grant of an exclusive patent”?
• May not be entitled to a patent even if invention not
identically disclosed in a single prior art reference.
Description and Enablement
• 35 USC § 112(a):
• Three separate requirements. Inventor must:
– Enable a person of ordinary skill in the art to make and use invention without
undue experimentation
– Provide a written description showing the inventor had possession of invention
at time of filing
– Provide best mode of practicing invention known to inventor at time of filing*
* AIA guts the enforcement advantage for Best Mode
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Infringement
• “Has Patent, Will Sue: An Alert to Corporate America” - Erich Spangenberg’s firm,
IPNav, wants to “turn idle patents into cash cows.” By: David Segal; The New York Times, July 13, 2013
• “Jury Orders Apple to Pay University $234M in Patent Suit – WARF wins patent
infringement suit against Apple – USA Today, October 18, 2015
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Patent Infringement
1. What is a patent infringement?
The act of making, using, selling, or
offering to sell a product covered by the
claimed invention or importing into the
U.S. a product of the claimed invention
without the permission of the patent
owner
2. How do you determine if the
product is covered by the claimed
invention?
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Defenses
Invalidity
Unenforceability (inequitable conduct, patent misuse)
Improper inventorship
Non-infringement (accused device/process didn’t include all
elements of the claim either literally or under DOE)
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Patents are Important But…Consider this
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Patent Strategy
• Why is it important
• Review different types of patent strategy
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Protect Current Product
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Gain Leverage
 Small portfolio of pioneering patents
Market leadership & advantage
Licensing
Deal & Merger leverage
 Reasonable Costs
 Market monitoring
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America Invents Act (AIA)
First Significant Change in U.S. Patent Law in 60 years
• U.S. becomes a “First-to-File” System
• New Ways to Challenge Patents
• Patent Litigation Reforms
• Fee Increases
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America Invents Act (AIA)
Timeline:
September 16, 2011
September 26, 2011
September 16, 2012
March 16, 2013
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America Invents Act (AIA)
First Inventor to File Gets the Patent
• Who is the First Inventor?
Act abandons the prior “first to invent” system and adopts the “first
inventor to file” system
Must be diligent and quickly file for patent protection for innovations
that will provide significant commercial benefit
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America Invents Act (AIA)
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Third Party Submissions
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Post Grant Reviews
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Inter Partes Review (IPR)
A trial proceeding conducted at the Patent Office to review the
patentability of one or more claims in a patent only on a ground
that could be raised under §§ 102 or 103, and only on the basis
of prior art consisting of patents or printed publications.
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America Invents Act (AIA)
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America Invents Act (AIA)
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America Invents Act (AIA)
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Questions?
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Resources
• Tim Holbrook, Introduction to IP TI:GER Lecture, August 2014
• Craig Nard, The Law of Patents Lecture, Fall 2015
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