PATENTS AND INFRINGEMENT OF PATENTS
Presentation of Lance Venable of Ellis, Venable & Busam, LLP
Written by Chuck Umeda 0101
What is a patent supposed to do for you? What happens from the time a patent is issued?
What is a patent? A patent is a government-granted monopoly that entitles the owner to preclude others from making, using or selling or offering for sale a device that is embodied in the claims as written in the patent. A patent is the intellectual property equivalent of a real property title. It is a “monopoly” granted by the government for 20 years from the date of application. It gives unlimited and unrestricted ability to control the sale of the device on the market. It gives the owner the right to exclude others. A patent is a title to an invention. The inventor owns that title.
Parts of a Patent. Abstract. This is a one paragraph summary of the invention. It summarizes the patent for people doing a search.
Drawing(s). This is very important, because a drawing can support claims.
Background – prior art. What is the state of the art when you filed the patent? When you file for your own patent, you are required by law to list all related patents you were able to find.
Summary of Invention (Goals).
Description of Drawings. The second most important item. This sets limitations of your patent.
Claims. This is the power of the patent because it sets the metes and bounds; it describes what it is. The following comparison between patents and statues may clarify claims.
PATENTS STATUES
Look to claims Read the laws
If terminology in the claim is ambiguous If terminology in the law is ambiguous,
look to the description look to the definitions
If still ambiguous, look to the file If still ambiguous, look to congressional
history of the patent history
When you file for a patent, there is correspondence between the inventor and the patent examiner. The inventor desires the patent to cover maximum legal “territory.” The patent examiner works to reduce the legal territory lest everything is given away on one patent, thus restricting future patents. On a patent, once you give up some territory, you won’t get it back. In the file history, if you didn’t contest a patent examiner’s action, you give it up. When an issued patent expires, it becomes public domain.
This is a typical claim for a ball-point pen compared to speed limits.
CLAIM LAW
A writing utensil comprising… It is a violation…
an ink well… to travel in a motor vehicle…
a ball point connected to the ink well at a speed exceeding 55 mph
a tubular cover surrounding the ink well on a paved road
a plastic cap having a metal clip in a metropolitan area
capable of covering the ball point.
with a population over
500,000.
History of a statute.
Just because you see a product displayed that looks like your patent, it
does not mean your patent is being infringed.
What is an infringement? An
infringement is a trespass on a piece of intellectual property.
It is the equivalent of “breaking a law” that a private citizen has
created.
Once a patent has been filed,
you cannot add new matter or expand the scope of the patent.
But if a drawing in your patent supports an unstated claim, you may be
able to get your patent reissued and broaden the scope of your claims to the
extent that they were originally supported in the drawings and the
specification.
When the patent is issued, the
inventor can consider licensing. A
license is a limited means to acquire income based on the patent based on what
the owner of the patent allows the licensee to do with the invention.
Doctrine of Equivalence.
If the product does approximately the same thing, in the same way, with
the same result, an infringement may occur.
Defenses to Patent Infringement. There are defenses which can be used against a patent infringement lawsuit.
Non-infringement. Claims do not read upon the defendant’s product.
Invalidity
Anticipation, Section 102. If a patent or published article is made public before you conceived your invention and describes every feature, you’re not the true inventor.
Obviousness, Section 103. Just because there is no exact duplicate of your invention doesn’t mean it’s infringing or slightly obvious/anticipated. Not obvious.
If a patent is found to be invalid, you can turn
the tables. In essence, you are
saying, “not only am I not infringing, but you can’t keep your claim.
Ambiguity. Patent is
ambiguous. This is a trap. Be careful.
Enablement. Invention
cannot be made from the description in the patent.
Best mode not described of how to make the patented version.
File history estoppel. “Estoppel” is a
bar to alleging or denying a fact because of one’s own previous actions or
words to the contrary.
Prior sale of product more than one year before
filing. This will put you in the
“not diligent” category and forever bar you from receiving a patent on the
invention.
Not true inventor
Patent infringement is an
expensive court battle. Best used
for defensive purposes
Legal fees are about $100 per
hour more than a regular attorney’s fees.
Continuation and application
used for adding new feature. Add-on
“Patent pending” – no
protection, because a patent has not been issued.
* * * * *
Lance Venable is a patent attorney who has extensive experience in patent law and patent infringement litigation. He is a partner of the law firm of:
Ellis, Venable & Busam, LLP
3030 N. Central Avenue, Suite 702
Phoenix, AZ 85012
Telephone: 602-631-9100