Patents
Michael I. Shamos, Ph.D., J.D.
Institute for Software Research
School of Computer Science
Carnegie Mellon University
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
The Moshovos (WARF) Invention
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Nature of Patents
• Unlike copyrights, patents protect ideas, underlying
processes and methods of operation – things
copyrights expressly do NOT protect
• The term of a patent is shorter (20 years), but patents
are much more difficult (and expensive) to obtain and
retain than copyrights
• Independent creation is a defense to copyright
infringement (copying is required), but not to patent
infringement (copying is not required)
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Purpose of Patents
• Encourage technological innovation by rewarding
inventors
• Allow society to benefit (build structural capital, a
repository of technical knowledge)
• Natural justice theory:
“Justice gives every man a title to the product
of his honest industry.”
John Locke, Two Treatises on Civil Government (1690)
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Rewarding Inventors
• Pay them
– Buy out invention
– Pay royalties (Soviet Union)
• Allow them freedom to exploit the invention
• In the U.S., confer a monopoly for 20 years
• The contract or “compact” theory:
– You tell us all about your invention
– We protect your ability to make money
• Patents existed in the U.S. before the Constitution
• First federal Patent Act: 1790
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Patent History
• Patents date back to the Industrial Revolution
• Pennsylvania issued patents before the U.S. was
formed
• U.S. Patent Office founded: 1790
• Patents issued through November 3, 2015: 9,179,586
• Total patents issued per week, 2015: ~6700
• Internet-related patents issued per week, 2015: ~1400
• Software patents issued so far: >400,000
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Parts of a Patent
• Specification
– Must tell how to make and use the invention
– Usually background (prior art) + need for the
invention
• Claims
– One or more statements defining what the inventor
regards as his invention(s)
– Written in highly stylized language (“patentese”)
that looks similar to English
• Each claim is its own “mini-patent.”
• Infringing any one claim infringes the patent
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
• Infringement is determined by reading the claim “on” the accused device
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Automatic Mattress Selection System
U.S. Patent 6,741,950
ISSUED MAY 25, 2004
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Automatic Mattress Selection System
U.S. Patent 6,741,950
ISSUED MAY 25, 2004
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
(AMAZON 1-CLICK PATENT)
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
ADMINISTRATIVE DATA
DESCRIPTION (SPECIFICATION)
…
CLAIMS
…
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
What is Patentable?
“Whoever invents or discovers any new and useful
1. process,
2. machine,
3. manufacture, or
4. composition of matter,or
5. any new and useful improvement thereof,
may obtain a patent therefor …”
35 U.S.C. §101
If none of these 5, it’s not patentable.
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
What is Not Patentable?
•
•
•
•
•
•
•
Unimplemented ideas, e.g., “an anti-gravity machine”
Laws of nature: E = mc2
Natural phenomena, substances
Printed matter
k

x
x
Mathematical formulas: e  
k 0 k!
Purely mental steps
FORMERLY, “methods of doing business”
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Extra Requirement of Non-Obviousness
“A patent may not be obtained … if the ... subject matter
as a whole
would have been obvious
at the time the invention was made
to a person having ordinary skill in the art
to which said subject matter pertains.
Patentability shall not be negatived by the
manner in which the invention was made.”
35 U.S.C. §103
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
What’s Obvious?
• Conventional transformations and operations on
objects:
• “Negative rules of invention”
– changing size
– substituting a new material
– making an apparatus portable
– omitting parts, moving parts around
• Combining references
– Need either “suggestion to combine” or
combination of well-known techniques to produce
an expected result
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Obviousness
• Obviousness is not a subjective standard
• The examiner cannot reject a claim because he
thinks it is obvious or that it seems elementary
• A reference to the prior art MUST be furnished
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Inventions and Prior Art
VALID PATENT
PRIOR
ART
OBVIOUS
BASED ON
PRIOR ART
INVALID
(ANTICIPATION)
LAW OF COMPUTER TECHNOLOGY
INVALID
(OBVIOUSNESS)
FALL 2015
© 2015 MICHAEL I. SHAMOS
The Patent Process
• Search, e.g. U.S. Patent and Trademark Office
• Application
– Specification
– Claims
• Examination
– Comparison with “prior art”
• Amendments are allowed
– But no “new matter”
• Issuance (term = 20 years from filing date)
• Maintenance fees during life of patent
• Enforcement (patents can be found invalid in litigation)
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Patent Applications
•
•
•
•
Pursuing a patent application is called “prosecution”
Assigned to an examiner
Examiner performs a “prior art” search
Prosecution is a negotiation between PTO and
applicant
– clarity of specification, arguments over
obviousness, wording of claims
• Usually takes 9 months to 2 years, often much longer
• Application can be amended, but no “new matter” can
be added
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
What is a Patent?
“Every patent shall contain … a grant to the patentee …
of 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.”
35 U.S.C. §154
(Term: 20 years from application date)
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
U.S. Patent System
U.S. SUPREME
COURT
APPEAL BY
PETITION
PATENT SYSTEM
IS FEDERAL ONLY
U.S. DISTRICT
COURTS (91)
U.S. PATENT AND
TRADEMARK OFFICE
BOARD OF PATENT APPEALS
AND INTERFERENCES
PATENT
APPLICATIONS
Can declare
patents invalid
COURT OF APPEALS
FOR THE FEDERAL
CIRCUIT
APPEAL AS
OF RIGHT
(A Federal Executive
Branch Agency)
(Judicial Branch)
PATENT EXAMINERS (2000)
LAW OF COMPUTER TECHNOLOGY
FALL 2015
PATENT
INFRINGEMENT
CASES
© 2015 MICHAEL I. SHAMOS
Who Owns a Patent?
• Only humans can be inventors
– For a corporation to own a patent, it must get it
from a human being, often by written agreement
• Employer
– Non-inventive employee
• Employer may have a “shop right”
– Specifically inventive
• Employer owns specific invention
– Generally inventive
• Employer owns all inventions pertinent to his
business
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
2014 Top 10 U.S. Patentees
2013 Stats
(1, 6788)
(2, 4652)
(3, 3918)
(4, 3315)
(6, 2814)
(7, 2679)
(--, ----)
(10, 2190)
(5, 3117)
(8, 2649)
1. IBM (7534)
2. Samsung (4952)
3. Canon (4055)
4. Sony (3224)
5. Microsoft (2829)
6. Toshiba (2608)
7. Qualcomm (2590)
8. Google (2566)
9. LG Electronics (2122)
10. Panasonic (2095)
SOURCE: PATENTLYAPPLE
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
Major Ideas
• To be patentable, an invention must be new, useful
and non-obvious
• A patent application must teach those skilled in the art
how to make and use the invention (the specification)
• Every patent must contains one or more claims
defining the invention
• Each claim is its own mini-patent and can be infringed
separately from every other claim of the patent
• Infringement is determined by reading a claim “on” an
accused device or process
• If any claim is infringed, the patent is infringed
• Infringement is making, using or selling the invention
or method
• Patent term: 20 years from the date of application
Q&A
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS
After issuance, IBM was embarrassed
into withdrawing this patent
LAW OF COMPUTER TECHNOLOGY
FALL 2015
© 2015 MICHAEL I. SHAMOS