Restriction Requirement

Federal formal communication requiring divisional application. You might be asked to divide the application into two parts and they want you to restrict the application to one patent and that you would then file a divisional appln to save the application.

What is the relationship between notice and damages?

When do you have constructive notice?

When do you have actual notice

When you get a patent, to get damages, you have to put the patent on a product and it must be in a conspicuous notice, and this = constructive notice and allows the recovery of damages. If you don’t put then notice, you can still get damages from the date that you give the infringer actual notice that he is infringing upon your patent

Post Examination Procedures-

what are they?

1) Certificate of Correction

2) Reissue patent

3) Ex Parte Reexamination

4) Inter Partes Review (after 9/16/12)

5) Post-grant Review (after 9/16/12)

6) Supplemental Examination 9/16/12)

It is a way that a patent can be fixed with respect to typographical errors. So when the patent is printed, it’s printed exactly verbatim as the appln was filed. So if you mis-typed something, after patent is granted, you have to get a certificate of correction. They basically don’t reprint the patent and then just add an attachment to the end. The paten will remain the exactly as it was printed and then they will attach an addendum to the patent to fix the errors. The actual patent will still contain all the errors.

It is possible that if you have serious error, you could fix the serious error after the paten issues and filed a reissue patent. To do this you have to have an error that renders the patent wholly or partially invalid.

 You can’t go back and say- I made a mistake so then you have to file a new application and have the application examined and fix the thing that renders the patent partially or wholly invalid. And you will get a reissue patent and so then you get a new number and it would start with Re. so it would be Re.##,###. So then you wouldn’t sue on the first patent, you would sue on the reissued patent. But the expiration date will remain the same

Submit art to the patent office to reevaluate the patentability of your invention. You might actually receive a patent and then realize that some article might effect the patentability of the patent so then you give them a copy of the article and have them re-evaluate the patent. If everything is ok, then they will say it’s fine, but if not, they’ll give you a certificate of re-exam that updates the patent claims to make them valid.

The patent owner can ask the patent office to do this or another party can do institute this against the patent.

Interpartes Review

When did it become available?

A review that is conducted between parties. So basically you say you think someone else’s patent is invalid and then I and you can present evidence to the examiner to establish our cases. So these must be instituted by a third party. This is supposed to be an inexpensive process. They typically run $500k to 1 million$ range and this is much cheaper than patent litigation.

9/16/2012 is when it became available

Post-grant Review

Became available when?

Became available after 9/16/12

It’s something which is initiated by a third party, the third party simply initiates it but only has minimal participation.

Supplemental Examination

When available?

Something that is filed by the patent owner and is a way for the patent owner to examine why the patent owner to have the patent reexamined.

Available after 9/16/12 

All three of these last ones are available but don’t worry too much about the differentiations. Just know that they’re used to have the patents changed or invalidated. All have different reasons for going into them but don’t worry about why for test. Just recognized that they are available.

Joint Inventorship

What do they share?

What do they not share?

It is possible that you can have more than one inventor to invent a particular invention and just like in copyrights, it doesn’t matter how much the parties add to the invention, unless a contract provides otherwise, they will have equal rights. They can prevent others from selling, manufacturing, importing the patented item.

But there is NO obligation to share royalties (this is different in Patent law than in Copyright law. It all depends what you yourself do with your share of the patent.

where you just have one inventor for a patent

When a work is made by an employee as part of their employment, who owns it?

How can this be changed?

Typically when dealing with patents, assignments come up quite often for the transfer of ownership when I’m an inventor working for an employer, I automatically get the rights to the patent but I have to assign them to the employer (usually governed by an employment contract that requires this) but the transfer is not automatic so you have to sign the assignment.

like other ones have non-exclusive and exclusive licenses to give other the right to do something with your patent (i.e. make, sale, etc.)

1) Literally- I must do all the elements required by the claim

2) Under the doctrine of equivalence- the invention is insubstantially different from the claimed invention and therefore infringes. It is not literal but it is kind of close.

How is insubstantial difference determined?

What test is used?

use functional/way/ result test- if the accused infringing device performs substantially the same function, in substantially the same way to achieve substantially the same result then it is insubstantially different and is equivalence

Basically I’m doing something that is really close that even though it’s not the exact same, it’s so similar that it’s insubstantially different

So the protection of the patent is defined by the claim and the claims are written in very specific language and so to determine infringement we must look at what is written in the claims. Claims are numbered at the end of the patent

So i.e. have a baby bottle with a hole in the middle to it makes it easier for a baby to grab the bottle.

So for example of baby bottle claims 1) A baby bottle, comprising: a body; and a whole in the center of the body.

So for literally infringing, I have to make a bottle with a hole in the center.

So for doctrine of equivalence- you put the hole on the side instead of the in center so based on the function/way/result test, then the baby bottle would be infringing because it is doing it by having a hole in the body of the bottle, aiding the baby in feeding itself. And gives you the same result. Or maybe still two holes would be the same.

Reverse Doctrine of Equivalence?

Example?

Because the test is not perfect so I could have something that is exactly the same thing as what the claims says but it does not infringe.

So even though it’s has a hole in the center it’s so different that it doesn’t infringe so this is the Reverse Doctrine of Equivalence

Basically you do the same thing the claims say but it’s so different than what the claims intended that the reverse doctrine of equivalence saves you from infringement

So if you have a baby bottle but it’s different because the hole does not go through the bottle in the same way. So if you have a bottle that started out in the middle and then and doesn’t go through the side takes a turn and goes out a 90 degree turn

What are the two flavors of infringement?

What does this mean for analyzing infringmenet?

How does this relate to the types of infringment you have?

Inducement of Infringement- I ask you to make a baby bottle to infringe and because I asked you to infringe then I have induced you to infringe so you have directly infringed but I have infringed also but its indirect.

Contributory Infringement- If we work together to infringe. I make the bottles and you make the holes, then together we have infringed although neither one of us necessarily infringed on our own.

So you could have literal infringement and then it could be inducement of infringement and then contributory infringement.

Or you could have doctrine of equivalence of infringement and then it could be inducement of infringement and then contributory infringement

For both of these, we have joint and several liability for both inducement of infringement or contributory infringement so if the judgment is $5 mill the court doesn’t care who pays it just that it is come up with between the two of use

So when analyzing infringement, first try to determine if it’s literal of doctrine of equivalence and then see if there’s inducement of infringement and contributory infringement.

What is not a defense to infringement?

How does this relate to how infringement is determined?

Ignorance - When determining infringement the question is did you do it; I don’t care if you knew about the patent or not. You just have to engage in the technology

1) Non-infringement- because I didn’t do one of the elements in your claims or it’s so different that it’s not the doctrine of equivalence.

2) Your patent is invalid- I fined a Russian article from 25 years ago and it’s totally the same invention so the patent doesn’t have novelty and so it’s invalid.

3) Statute of Limitations- you have six years to catch you then you won’t be paying as many damages as you think, they could still go back the six years, but it limits it.

4) Inequitable conduct- didn’t do what you were supposed to do during prosecution and didn’t give prior art to examiner and so it’s not enforceable.

5) Didn’t pay a maintenance fee and this means that the patent is unenforceable

6) Laches

7) Estoppel

1) Injunction- stop infringing

2) Collect money (damages)

3) Willful infringement means that you could be liable for up to 3x the damages that you would have had if it was unwillful, so basically if you know that the patent exists then you can ask the court to give you 3x what the damages would have been otherwise.

So if your damages are $1mill w/o willfulness, you could get up to $3mill for willfulness (this would include both compensatory and non-compensatory)

So when Kodak infringed on Polaroid’s patent, and they infringed $300mill, then over $1 billion.

To show willful- have a memo, or know about patent and did stuff that was so without care that you can infer willful infringement.

What's special about damages with regards to patent infringment?

How is this determined?

Willful infringement means that you could be liable for up to 3x the damages that you would have had if it was unwillful, so basically if you know that the patent exists then you can ask the court to give you 3x what the damages would have been otherwise.

So if your damages are $1mill w/o willfulness, you could get up to $3mill for willfulness (this would include both compensatory and non-compensatory)

So when Kodak infringed on Polaroid’s patent, and they infringed $300mill, then over $1 billion.

To show willful- have a memo, or know about patent and did stuff that was so without care that you can infer willful infringement.

Pairs Convention- this basically says that you can rely on an application in a country that is a signatory to the convention, you get one year to file that application overseas and then you get priority which means that your application will be treated the same as if it was filed under the old date.

Is there a place I can go to obtain an international Patent?

What about to simplify the process?

How does this work?

There is no place that I can go to get a patent for each country so I have to each country.

There is a way though to simplify the process. By filing an application under the Patent Cooperation Treaty (PCT). No patent will be granted to you through this process but you can get an indication of allow ability.

So the way this works is if I have a filing date of my PCT application, I get examination just like I have 30 mos. From the date of filing of the pct, then if the PCT claims says my claims are patentable, then I can go to all the individual countries and they have to allow my application b/c it’s already been determined to be allowable.

So the 30mos. = pct phase

And then I can enter the national phase, and then I can get the patents relatively easily. But there would still be formal requirements that and a few things would have to be determined but they would have to accept it’s patentability

The people doing the determination of the patentability are the same people that examine applications.

(i.e. examiner's at other patent offices) 

EP Regions- so I can get my PCT and then apply in EP and then when I get to the national phase, I can enter into all the European countries that are party to the EPC- and then if you meet all the requirements then you can then you have to enter into all the countries but you have to pick and choose which one you want. And pay fees in all the countries I elect to pay a fee in and I get the patent. So if you don’t pay any fees, you don’t get a patent, and then you will only get a patent in the countries that you paid the fees for.

Do the PCT and Paris Convention work together?

Give an example?

The Paris convention and the PCT work together so for example,

I could file an application and then one year later decide to file a PCT and then the end of the PCT time period will be at the end of the 30 months of the original application.

So I file a provisional on 1/1/15

And then on 1/1/16, then I can file a PCT and a non-provisional.

Then 30 months from 1/1/15, I can enter the national phase of the pct. So basically I need to enter 30 months from the priority date of the application.