Why do I need to know about

Patents? ESE 111

October 22, 2014

Cynthia Dahl Practice Associate Professor and Director

Detkin IP and Technology Legal Clinic www.pennipc.com

@PennIPClinic © 2014 All Rights Reserved

Dilbert

Roadmap

• Protection through IP, including Patents • Patent infringement

–How to understand if you are infringing –How to plan to avoid it

• Application to the Simulation

Protecting IP

Protecting IP - Patents

• New (102) • Nonobvious (103) • Patentable subject matter (101) • Not whole watch • One invention at a time • If prior art is A+B; you can patent A+B+C

Protecting IP – Patents

• How to Focus? –Patent the cool new things? –Not necessarily

Protecting IP – Patents

What is a patent….?

A BUSINESS TOOL

Protecting IP – Patents

A patent allows me to…..?

EXCLUDE OTHERS

Protecting IP - Patents

To prioritize: –Figure out “Straight of Hormuz” –Patent the “secret sauce”

Protect Strait of Hormuz, not what is “cool”

Patent the “Secret Sauce” = What is special about your product/business that provides special marketplace advantage?

Identifying Inventions • Focus on the product and business and the

creation of barriers to protect product/business

• Remove barriers for your product and create barriers for competitors

• Associate Intellectual Property with products by properly drafting claims

• Remember IP exists independently of the product

Other Reasons to Patent

• Asset for company; indicates success or wealth (good for investment)

• Bargaining tool for cross licensing • Insurance policy – if one patent is invalid,

have others • BUT – expensive proposition

– Filing and attorneys – Annuities go UP – International

Is Patent the Answer?

• Field (coverage?) • Speed of turnover • Competitors • Money • Deeply embedded? Consumer product? • “Reverse engineerable?”

RECAP

• Can protect “secret sauce” in Watch if meet patentability requirements

• Choose what to patent based on biz concerns and resources

• Patenting not always right, but can be powerful tool if used broadly

Application to Simulation

• Which subsystems do you want to include in your phone?

• Did you find patent for each? • How did you search? • Crowded space? • Did you try to evaluate? Show you how….

What does a Patent Cover?

• Parts of a patent • Description? • Most important part?

11. A method for ordering an item using a client system, the method comprising: displaying information identifying the item and displaying an indication of a single action that is to be performed to order the identified item; and * * *

The “CLAIMS” are key…

Claims provide the metes and bounds of the right that the patent confers to exclude others from “trespassing” on the invention:

The Claimed Invention

Do We Infringe?

• Start with Claims • How many = infringement? • “Reading on” claims • Independent versus dependent claims • What if we have a patent ourselves?

–Patentability versus “freedom to operate”

How to “Design Around”

• Read claims carefully • Goal: Skip/Change at least one element of

every claim • Independent invention is NOT a defense • BUT knowing of a patent can lead to

willfulness

Sometimes Claims of Infringement are Inevitable

• Crowded space • Competitive atmosphere • Searches are never perfect • Broad patents • Litigious parties take advantage of high price

tag to defend

If Risk, What to Do?

• Change design • Pursue and wait for judgment

– Expensive damages, especially willfulness – Injunctions – Can end business – BUT – head start and can go on the offensive to

invalidate

Final Thoughts?

• End where we start – infringement is scary proposition

• But you can and should be strategic about patents, both offensive and defensive

• Not discounting risk of infringement, but you can minimize your risk if you understand patents and how they are enforced