Fundamentals of Patenting and Licensing
Part I – Pg. 3 – 57 SummaryAbhinav Prathivadi
April 25, 2010
IntroductionSometimes incremental improvements on
existing technologies can be a patent by itselfCompanies regularly file patents to create a
suite of IP tools as part of business strategyPatent should be claimed only after getting
approved by the USPTOUSPTO looks into patenting matters
Is part of the Department of Commerce
Patent ProcessIdeaReduce to Practice
Building it and experimenting with itPatent applicationPatent Prosecution (USPTO)Issued PatentPatent enforcement
Common Misconceptions About PatentsExclusive Right
USPTO’s goal is 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”
Gives right to exclude others from using your patent
NOt what you can do, but what other people can’t do
Common Misconceptions About PatentsMost companies have a portfolio of patents to
monitor infringement as opposed to using a single patent
Trade secret gives you no legal right of protection whereas patents doOpportunity cost of revealing all information
about a product Trade secret + patents – companies should
strive to strike a fine balance between the two
IBM’s open policyIn 2006 IBM decided to adopt a open policy
towards patentsOpening more than 100 business method
patents to publicA combination of business and PR strategy to
become synonymous with innovationIBM has thousands of patents and files
patents regularly
Other facts about PatentsPatent is typically 5 years old when litigatedEconomic value of patent = market
acceptance of the innovationMaturity date of patent depends on sector it
is relevant toStatistically a high percentage of patents
expire before the owners monetize or license it
System of Patent LawsBased on the Constitution
Patent Law (35 USC)Patent Rules (37 CFR)Manual of Patent Examining Procedure (MPEP)
Types of PatentsUtility (majority)DesignPlant
Dates regarding PatentsFiling date
Date of filing the applicationPublication date
Date when USPTO publishes it in public domain
Issue datePatent holder’s rights become effective
Expiration dateUsually 17 or 20 years
Priority date
More about patents…Most countries law supports first-to-file, but
the US supports first-to-conceiveMPEP Chapter 2100 determines how a
invention/idea can be deemed patentableFundamental requirement for patent is
“usefulness”Software and business method patents have
changed the course of how people think about patents
Types of InventionsStatutory categories of invention
Process Software algorithms, etc.
Machine Consisting of parts, combination of devices
Manufacture Raw materials to new form/sape
Composition of matters
Conditions for PatentabilityNovelty
Has to be newNo single prior art referencePriority date
Non-obviousnessShould be easy to understand and incremental
improvement (if any prior art found)Rejection based on obviousness usually
subjective
Case StudyRCT vs Microsoft 2006
RCT claim that Microsoft infringed on its patent was proven false
RCT was asked to pay Microsoft $8 million in attorney fees
Judge indicated discrepancies in RCT’s statements and the vagueness of the patent
Everyone who invented the product sould be cited on the patent
