Book Summary: Patent Law Essentials A Concise Guide by Alan L. Durham

ISBN: 1-56720-252-x

My rating: 84/100

See Book Notes for other books I have read. If you like my notes, go buy it!

Key principles and facts I’ve taken from this book:

There are two kinds of patents: utility and design patents. Utility patents are more powerful, while design patents cover only specific designs.
The claims in a patent are the only thing that really matters. The drawings and descriptions don’t really mean anything in court.
The inventor must conceive the idea and reduce it to practice, that is, make their invention. You can’t patent something that hasn’t been made yet.
Patents are commonly owned by someone other than the inventor, this is called assignment.
Conditions of patent-ability: The invention must have utility. The claims must be definite. The specification must enable the practice of the invention and must disclose the inventor’s best mode of practicing the invention. The claimed invention must be novel – that is, it must be new and non-obvious in comparison to prior art.
The United States switched from “first to invent” system to “first to file” in 2013.
Conditions that would prevent patentability: described in a printed publication, available for public use, or on sale one year prior to the date of application.
Until a patent issues it cannot be infringed, even by someone who knows that an application is pending.
The patent owner has the burden of proving infringement. No damages may be recovered for infringement that occurred more than six years prior to the filing of a claim.

Patent Law is serious stuff: Kodak was forced to terminate its multi-million dollar line of instant cameras as the result of patent litigation with Polaroid.

In the litigation between Polaroid and Kodak, Polaroid received an award of more than $90 million. In a recent suit between Litton and Honeywell, Litton’s allegations of patent infringement reaped it a jury award, successfully challenged, of more than $1.2 billion.

Congress’s last wholesale revision of the Patent Act occurred in 1952.

Patent and Trademark Office (PTO)

Reference documents:

United States Code (U.S.C.) – result of the patent act.

Code of Federal Regulations (C.F.R.) and

Manual of Patent Examining Procedure (MPEP) which set forth detailed rules and regulations for obtaining a patent.

Patent rights can be assigned after the patent issues. When this is the case, the transfer of ownership will not be evident from the patent itself, but it may be recorded in the Patent Office’s prosecution history file.

The preferred embodiment means the inventor’s favored implementation of the invention.

The claims, not the drawings or the specification, define what the patent “covers” and what will infringe.

Claims generally come in two forms – independent and dependent. An independent claim stands by itself, whereas a dependent claim explicitly refers to another claim and incorporates its terms by reference.

The preamble is sometimes treated as a limitation on the scope of the claim and sometimes as a mere introduction to the claim which has no legal effect.

The preamble usually ends with the term “consisting of” or “comprising.” The indented paragraphs following are the claim elements or claim limitations.

A patent can have as many claims as the inventor desires, although more claims can mean paying the Patent Office a higher fee. Each claim can be treated in some respects as if it were a separate patent.

Using more than one claim is also a hedge against the possibility that a claim will be held invalid by the courts. One claim may be held invalid, while another, with slightly different language, survives.

The process of applying for a patent is known as patent prosecution.

Since the Patent Office requires a filing fee, an issue fee and various other fees, obtaining a patent can easily cost several thousand dollars, exclusive of any fees paid to a patent attorney or agent.

After reviewing the application and searching for prior art, the examiner prepares a written “Office Action” to tell the applicant which claims are “allowed” or rejected and to explain any problems with the application.

Patent prosecution is ex parte, meaning that there is no one to represent an opposing viewpoint.

Prosecution history (also known as the “file wrapper”) is made available to the pubic if the patent issues.

In some instances, an applicant may choose to start over, in a sense, by filing a continuation. A continuation is an application that has the same disclosure as the prior application (i.e., the same specification) but new claims.

The original application may be abandoned after the continuation is filed, or prosecution of the two applications may continue in parallel.

A continuation-in-part (C-I-P) is like a continuation, but it includes additional disclosure in the specification. A continuation-in-part might be filed if the applicant discovers an improvement on the basic invention disclosed in the original application and desires a patent claim to match.

Reissue is a means for applicants to correct errors in a patent.

Patents that are the result of reissue proceedings can be identified by the serial numbers, which begin with the initials “Re.”

Reexamination allows the Patent Office to reconsider the validity of already issued claims in light of newly discovered prior art patents or printed publications.

Reexamination can be requested by anyone, including a licensee, an accused infringer, a government agency or someone who simply likes to meddle.

The right to obtain a patent initially belongs to the inventor.

An inventor is anyone who participated in the mental act of conceiving the invention.

Not all contributions rise to the level of invention. Someone who had supervisory responsibility for a project but added nothing to the conception of the invention would not properly be considered an inventor. Similarly, someone who built or tested the completed invention, but did not contribute to its conception could not be considered an inventor, no matter how important that person’s contribution to the project as a whole. Even someone who identifies a problem is not considered a co-inventor of the solution, in spite of the fact that identifying the problem is often a significant step. As one court observed, “it is one things to suggest that a better mousetrap ought to be built; it is another thing to build it.”

Joint inventors need not have physically worked together at the same time, nor is it necessary that the contribution of each be equivalent in type or amount.

Although the right to apply for a patent belongs to the inventor, and an application must at least be filed on the inventor’s behalf, a patent is commonly owned by someone other than the inventor. The transfer of ownership rights from the inventor to someone else is known as assignment.

A licensor retains ownership of the patent but grants the licensee the right to practice the claimed invention, usually in exchange for some sort of royalty. A license can be exclusive or non-exclusive. If it is exclusive, there is only one licensee.

The claims are the most important part of any patent. They define what the patented invention is. Hence, the first step in determining whether a patent is valid or infringed is to analyze the claims and determine precisely what they mean. This analysis is known as claim construction or claim interpretation.

Although patentees sometimes testify as to what they intended to claim to mean, such subjective, post-hoc testimony carries little weight.

A patent applicant can be “his own lexicographer” – which is to say, an applicant can devise his own vocabulary to describe the invention.

If he chooses to be “his own lexicographer” by using words in a specialized or unusual sense, that sense must be explained in the patent specification.

In some cases, the preamble is not considered a claim limitation, and this can have important consequences.

On the subject of preambles, it is important to note the difference between “comprising” and “consisting of,” the two phrases that typically conclude a claim preamble. “Comprising” is a term of art, understood to mean that the invention consists of the following combination of claim elements, by themselves or in combination with additional elements. “Consisting of,” on the other hand, is understood to mean “the following elements and no others.”

Several specialized claim formats are available to inventors who wish to use them.

One specialized claim format is known as a Jepson claim. A Jepson claim is a claim to an improvement on a product that already exists.

The words “In a [pre-existing device], the improvement comprising” are typical of a Jepson claim.

Another specialized claim format is the Markush claim, generally used to describe chemical and biological inventions. A Markush claim includes a claim element selected from a group of possibilities – for example, “A sugar selected from the group consisting of sucrose, fructose, and lactose.” Markush groups are used when there is no generic term that conveniently describes the desired claim elements.

A product-by-process claim, as the name suggests, describes a product made by a specific process.

The Patent Office will not issue a product-by-process claim unless it finds that the product, not just the process, is something new.

A different panel of Federal Circuit judges rejected the earlier interpretation and held that the process set forth in a product-by-process claim does limit the claim so an identical product made by a different process does not infringe.

… Accordingly, it is impossible for anyone to say at this juncture precisely what the law is.

One form of specialized claim format that has become extremely common is the means-plus-function format.

An inventor can choose to describe an element of the invention as a physical structure (i.e., steel spring) or as a means for performing a specified function (i.e., means for snapping the trap shut), leaving it to the specification to describe the physical structure that performs the function. If the inventor chooses the latter option, the claim will cover that structure (i.e., a mousetrap with a steel spring or the equivalent of a steel spring.)

One could not claim just “a means for catching a mouse” and leave it at that. The means-plus-function format can be used only when the claim breaks down the invention into specific components.

Step-plus-function claim. A process claim in which a step of the process is described solely in terms of the function performed by that step, without the recital of a specific “act”.

“Means for snapping the trap shut” would clearly be a means-plus-function claim.

Conditions of patent-ability:

The invention must have utility.
The claims must be definite.
The specification must enable the practice of the invention and must disclose the inventor’s best mode of practicing the invention.
The claimed invention must be novel – that is, it must be new and non-obvious in comparison to prior art.

When judging whether a claim is novel, the Patent Office will give the claim its “broadest reasonable construction.” A court will not.

estoppel – a bar or impediment preventing a party from asserting a fact or a claim inconsistent with a position that party previously took, either by conduct or words, especially where a representation has been relied or acted upon by others.

Anyone who assigns patent rights to another in exchange for valuable consideration implicitly acknowledges the validity of the patent and gives up the right to challenge that validity at a later time. This principle, known as assignor estoppel is a matter of fairness.

The only kinds of invention categorically excluded from patent-ability on grounds of non-utility are those whose purpose is deemed illegal or immoral. Until 1977, gambling machines were held to lack utility.

A patent specification must disclose the utility of the claimed invention, so difficulties can arise if it is unclear from the specification what the invention is supposed to do.

In spite of the requirements that claims use definite language, such “words of degree” as “generally,” “approximately” and “substantially equal to” are commonly used.

Doctrine of equivalents Even a product that is not literally described by the claim language may infringe, if the differences are insubstantial.

Enablement The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is nearly connected, to make and use the same.

Best Mode A specification “shall set forth the best mode contemplated by the inventor for carrying out his invention.” The best mode means the best manner of practicing the invention, or the best operative example, known to the inventor.

Under some circumstances, intentional concealment of the best mode can be considered “inequitable conduct” that will render all claims of the patent, and possibly those of related patents, unenforceable.

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.

If a claimed invention is identical to one or more prior art references, the claim is said to be anticipated. If the claimed invention differs from the prior art, but the differences are of the sort that would occur to a person of ordinary skill, the claim is said to be obvious. Either is sufficient grounds for holding a claim unpatentable or invalid.

Patents, printed publications, prior “use” and prior “knowledge” are four common categories of prior art.

In most countries, priority is awarded to the first inventor to file a patent application, but in the United States the patent goes to the first to invent. Note this is no longer true: The America Invents Act, signed by Barack Obama on 16 September 2011, switched U.S. right to the patent from the previous “first-to-invent” system to a “first-inventor-to-file” system for patent applications filed on or after 16 March 2013.

“Invention,” as defined by patent law, involves two steps: conception and reduction to practice.

A patent claim is not reduced to practice until there is a physical embodiment that includes all of the elements of the claim.

The date on which a patent application is filed is presumed to be the applicant’s date of invention in the absence of other evidence.

Anticipation If the claimed invention is identical to subject matter disclosed or embodied in the prior art reference, the claim is “anticipated” and invalid for lack of novelty.

Obviousness focuses on the differences between the claim and the prior art, and asks whether those differences are really inventive, or whether they are differences that might have occurred to anyone of ordinary skill.

Derivation – A patent cannot be obtained if the applicant “did not himself invent the subject matter sought to be patented.”

My note: File for patents 1 year from publishing findings, publicly using, or selling inventions.

A person shall be entitled to a patent unless –

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

An inventor who applies for a patent in a foreign country, waits for more than twelve months before filing in the United States and receives the foreign patent before filing in the United States will be denied a United States patent.

Obviousness-type double patenting can be “cured,” in a sense, by the filing of a “terminal disclaimer” with the Patent Office. A terminal disclaimer is a binding statement that (1) a later patent will expire at the same time as a prior patent, and (2) the later patent will be enforceable only as long as it and the prior patent are commonly owned.

Certain defenses to a claim of patent infringement produce, if successful, a holding that the patent is “unenforceable” rather than invalid. the most important of these are the inequitable conduct and misuse defenses. If a patent is unenforceable, it cannot be the basis of an infringement claim.

Applicants are required to disclose to the patent examiner any information that is “material” to the issuance of the patent under consideration. Applicants are not affirmatively required to search for such information.

A failure to meet the required duty of candor is known as “inequitable conduct”.

Charges of inequitable conduct have become so routine in patent litigation that the Federal Circuit has referred to them as “an absolute plague.”

Although there is no exhaustive list of the kinds of behavior that might constitute misuse, the following often raise questions:

A patent license, such as that discussed in Morton Salt, which compels the licensee to purchase separate, unpatented good from the patent owner. This is called a “tying” arrangement.
A patent license that forbids the licensee from dealing with the patent owners competitors. This is sometimes called “tying-out” in contrast the “tying-in” found in Morton Salt.
A patent license granted only on the condition that other patents are also licensed, even though the other patents may be undesired or even invalid.
A patent license that attempts to fix downstream prices.

Submarine patent – prosecution takes so long the patent arrives in the market out of nowhere (sometimes as much as 20 years).

Until a patent issues it cannot be infringed, even by someone who knows that an application is pending.

Generally speaking, the intentions of the infringer are irrelevant to infringement. A patent can be infringed even by someone who is unaware that the patent exists. However, infringement which is intentional, referred to as “willful infringement,” can result in an award of increased damages, up to three times the amount of damages that could be recovered from an “innocent infringer,” together with attorney’s fees.

One who obtains a patented device from a legitimate source is permitted to repair that device, or replace a broken or exhausted part, without further obligation to the patent owner.

Determining if a patent is infringed is a two step process. First, one must examine the language of the claims at issue and determine what the claims mean. this step, referred to as claim construction or claim interpretation, proceeds according to the rules discussed in Chapter 7.

Once the claims have been properly construed, they must be compared to the accused product or method to see if the claims are infringed. A patent is said to be literally infringed if the claims literally or exactly describe the thing accused of infringement.

The exclusive right to the thing patented is not secured, if the public are at liberty to make substantial copies of it, varying form or proportions. And, therefore, the patentee, having described his invention, and shown its principles, and claimed it in that form which most perfectly embodies it, is, in contemplation of law, deemed to claim every form in which his invention may be copied, unless he manifests an intention to disclaim some of those forms.

[A judge] also warned that nothing could be “more mischievous, more productive of oppressive and costly litigation, or exorbitant and unjust pretensions and vexatious demands” than any relaxation of the requirement that patentees be bound by definite claims.

The court also referred to an earlier case inquiring whether the accused product performs “substantially the same function in substantially the same way to obtain the same result,” reasoning that “if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form or shape.”

Application of the doctrine of equivalents is the exception … not the rule. … Yet in practice, allegations of infringement under the doctrine of equivalents have become the rule, not the exception.

Equivalency is measured from the perspective of one of ordinary sill in the art at the time of the alleged infringement.

Note, however, that there need not be a “one to one correspondence” between the claim and the accused product. A single component of an accused product can perform the functions of several components described in the claim, and the single component can be considered the equivalent of each claimed component.

A pioneer patent is one that breaks with the past so distinctly that it creates an entirely new field. Patents such as Bell’s on the telephone, or the Texas Instruments calculator patent.

An applicant who represents the invention as one thing in prosecution must be prepared to live with that interpretation in litigation.

Patent Litigation

A typical lawsuit concerns three issues:

Is the patent valid and enforceable?
Are the claims infringed?
If the claims are infringed, what damages should be awarded?

Just the discovery phase of the litigation, in which both parties gather the evidence needed to try the case, often takes more than a year.

The patent owner has the burden of proving infringement by a “preponderance of the evidence.” In other words, based on the evidence presented, it must be more likely than not that the patent is infringed. If the evidence on both sides is equally persuasive, the claim must fail.

A preliminary injunction is a court order that prevents the accused infringer from making, using, selling, offering to sell or importing the accused product until the case has been decided.

Sometimes the merits of a case are so clear that it is unnecessary to conduct a full-blown jury trial. The mechanism for cutting short such a case is known as summary judgment.

A reasonable royalty is the amount that the infringer would have paid the patentee if, instead of infringing the patent, it had negotiated for a license.

35 U.S.C. Section 286 provides that no damages may be recovered for infringement that occurred more than six years prior to the filing of a claim.

If a patent owner or licensee makes, sells, offers to sell or imports into the United States articles covered by the patent but not marked in this fashion, no damages for infringement can be recovered until (1) such marking begins, or (2) the infringer receives from the patent owner actual notice of the infringement.

In a sense, a patent owner has only one chance to defend the validity of the patent.

Design Patents

A design patent must claim an article of manufacture.

The term of a design patent is fourteen years from the date of issue.

The patentee can recover the “entire profit” of an infringer who has sold an article covered by a design patent.

Patenting Computer Programs

The source of the difficulty lies in two long-standing doctrines. The first is the unpatentability of “mathematical algorithms”.

The other source of doubt as the patentability of computer programs is the so-called mental steps doctrine, which holds that a process is unpatentable if an essential step of the process requires human thought.