Fundamentals of Patent Law and
Implications on Optoelectronic Devices
Andy Pettit
Greg Rosenthal
Introduction to Patent Law
Tips and Tricks
Example: Gould Laser Patents
Questions?
Among Apple’s 1,298 mobile patents, some
individual technologies stand out as key
indicators of what the future of smartphone
designs may hold.
Core Technology Areas of Apple Patents
Technology Area
Number of Inventions (Patents)
iPhone, Smartphone General
416
Camera
279
User Interface
232
Image Display/Screen
149
Battery/Power Control
88
Antenna
75
Calendar
31
Contact Management
15
Voice Control
5
Fundamentals of Patent Law
• The American patent system is authorized by Article 1,
Section 8(8) of the Constitution.
“ … Congress shall have 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;”
• But how does Congress do that? See 35 U.S.C. § 154.
“Every patent shall … grant to the patentee … the right to exclude others
from making, using, offering for sale, or selling the invention throughout the
United States or importing the invention into the United States …”
• A patent grants the inventor rights to exclude others from
practicing his/her invention in exchange for public disclosure.
Patentable Subject Matter
• So what is a patent? See 35 U.S.C. § 101.
“ Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent …”
• Patentable subject matter falls into four main categories: (1)
process; (2) machine; (3) manufacture; or (4) composition of
matter.
• Patentable subject matter must satisfy three main
requirements: (1) New/Novel; (2) Useful/Utility; and (3) Nonobvious.
Patentable Subject Matter
• The United States has two complementary methods to create
new law: Statutory Law and Common Law.
▫ Common Law is created by courts in published opinions.
Chakrabarty: Patentable subject matter includes “… anything under the sun that is
made by man.”
Mayo v. Prometheus: “… laws of nature, natural phenomena, and abstract ideas are
not patentable.”
• When filing an application, the inventor must clearly indicate
what technology is being “claimed.” An inventor cannot claim
discoveries of natural phenomena but may be able to claim
specific implementations of those phenomena.
Patentability Requirements
1. Novelty
▫ Is your invention different from what is already known to the
public?
2. Utility
▫ Is your invention capable of use and does it provide some
identifiable benefit?
3. Non-obviousness
▫ Is the invention an adequate distance beyond or above the state
of the art?
▫ Would a “person having ordinary skill in the art” know how to
solve the problem at which the invention is directed?
Tips and Tricks
1. Use a lab notebook.
A.
B.
Have detailed descriptions and dates.
Have a colleague or supervisor review and sign (occasionally).
2. Be aware of the AIA.
A.
The U.S. has transitioned to a first-to-file system; if another inventor files before
you all of your rights will be lost.
3. Think about patentability and disclosure.
A.
B.
C.
If you plan on presenting or publishing, use caution.
Non-disclosure agreements (NDAs) are a good option.
Public disclosure of your invention can prevent you from getting a patent.
4. Do a basic web search on your invention.
A.
Don’t invest the money required if someone else has already developed the same
idea.
Tips and Tricks
5. Consider a provisional patent.
A.
B.
C.
Provisional patents retain an earlier filing date, but do not provide protection.
Provisionals preserve rights without a huge financial commitment.
A provisional costs ~$130, a full utility application written by a firm will cost
~$10,000.
6. But have a patent agent or attorney draft the application.
A.
Knowing the technology does not (necessarily) qualify an inventor to write a
patent application; drafting claims is an art.
7. Don’t sell or offer to sell your invention.
8. Don’t lie about your invention.
A.
Lies about disclosure or conception dates will destroy all patent rights.
9. Consider the possibility of joint inventorship.
A.
Any individual who contributed at least one patentable idea is a co-inventor.
Tips and Tricks
10. Remember that patents are territorial.
A.
B.
A U.S. patent will only protect inventor rights within the United States (with some
exceptions).
Any inventor who is interested in filing in other countries must do so within 12
months.
Deconstructing a Patent
-
Title
Inventor
Issuance Number
Issuance Date
Filing Date
References
Abstract
Figures
Description
Claims
Example: Gould Laser Patent
Townes/Schawlow: Bell Labs
Begin study of
infrared laser
1957
Abandoned infrared
Filed patent
to concentrate on
application on
visible light
“optical maser”
Late 1957
Patent granted
July, 1958
March, 1960
Gordon Gould
Began working on
“laser”
November, 1957
Published the term
LASER at a
Patent filed Patent rejected
conference
1959
April, 1959
1960
So who is the inventor?
• Gould filed suit claiming that he was the first inventor based
on 1957 notebook.
• A few major problems:
▫ The notebook did not sufficiently
describe the lasing process.
▫ The notebook lacked any dates.
• Gould ultimately lost the battle
over the original laser patent.
So who is the inventor?
• BUT Gould continued to file continuation applications linked
back to his original (undisclosed application).
• Gould won a number of patent suits beginning in 1977 and
continuing through 1987.
• By this time, the laser had become widely adopted.
• Gould’s patents, despite covering limited applications of laser
technology, were worth tens of millions of dollars.
Questions?
Andy Pettit
Andrew.T.Pettit@att.net
Greg Rosenthal
gregorybrosenthal@gmail.com