Protecting / Enforcing Your Mechanical and Metallurgical Inventions in a Changing Patent LandscapeCharles Reeves - Woodard, Emhardt, Moriarty, & Henry LLP
What I plan to present tonight is a brief primer on patent law. The first thing to consider is why obtain a patent. There are some who desire a patent just for the "honor" of holding one, but for the most part a patent is obtained to "protect a market share".
In the US there are two types of patents. A "Utility" patent provides protection for the functional aspects of an invention. It can involve a particular apparatus, method, article of manufacture or equipment required to accomplish the novel and unobvious result. A "Design" patent provides protection for the ornamental aspects of a novel and unobvious design of some article of manufacture.
Here is a sequence of events that summarizes the patent process:
1) Conceive the invention with or without making or demonstrating a prototype
2) Conduct patentability search, the inventor and/or his attorney
3) File application (utility or design (or provisional which preserves filing either for one year))
4) File foreign application within 1 year of US filing
5) Launch the product and/or license or sell it
6) Start marking products with "Patent Pending" or "Patent No" depending on the status of the application
Notebooks and disclosures are very important for obtaining US patents because they can later establish and prove a date of invention for purposes of priority. When a patent invention is contested, the first to invent has prior rights in the US over the first to apply, unlike much of the rest of the world. It is also important that the notebook be verified or corroborated by someone who is not a co-inventor, who understands the technology and is under an obligation of confidentiality.
Prior Art can include earlier patents and applications, publications, brochures, product catalogs, and even your own activity or that of others more than one year prior to the filing date of the patent application. Prior art may have uses beyond its primary stated purpose which are regarded as obvious and can block a patent from issuing. In today's patent climate innovation which is regarded as "ordinary" or “predictable” is deemed obvious and not patentable. Recently the Supreme Court spoke to this stating "the combination of familiar elements to known methods is likely to be obvious when it does no more than yield predictable results." In materials science and metallurgy, many improvements can potentially be considered to be obvious or "predictable" based on a hindsight view. Examples of "non-obvious" and patentable invention is when unexpected, synergistic, or surprising effects are achieved, or the innovation runs counter to prior art or otherwise produces results that refute any “predictable” label. It is initially up to the examiners in the U.S. Patent and Trademark Office to decide if a claimed invention in an application is "obvious" or patentable based in part on their assessment of the prior art. If the applicant disagrees, it is important to provide substantive evidence in the file from which appeal can be taken to a board and then to federal court if the examiner can not be convinced.
Aside from obviousness considerations, recent patent history has also marked significant changes in connection with utility patents and their scope of protection as defined by their written claims. Venn diagrams can be used often to understand where protection starts and stops in the claims. Now the US patent office is applying stricter standards in interpreting those claims and in looking for support in the patent specifications. Also, with rules changes which are being proposed or have been passed but are now stayed, applicants are being placed under greater burdens in several areas, including to disclose all prior art with no omissions (whether he knew its existence at the time of invention or not). Essentially, in the future the applicant could have responsibility to do things the examiner used to do and to provide evidence to counter even the examiner’s unsupported opinion of obviousness.
Infringement actions, on the other hand, can be very long and costly. Beyond the prospects of getting an injunction against the infringement, damages in the sense of a reasonable royalty or more can be obtainable as can up to treble damages and litigation costs which can quickly grow to multi-millions. As a result, one should be aware of and respect any competitors’ patents just as much as you should be vigilant in enforcing your own.
A practical pointer for business practice is to get assignment of inventions from employees, non-employees, consultants, and computer programmers. Enforceability of such agreements as well as non-disclosure and non-compete clauses varies from state to state and should be researched whenever significant rights or technology is being discussed. Also, it is advisable to file applications on important inventions and products to protect your market share whenever the opportunity presents itself.
There have been three recent cases cases which greatly affected or could affect the patent climate in the US:
KSR Int'l vs. Teleflex -- expanded and changed the definition of "obvious" greatly, putting significant new burdens on applicants.
In re Bilinski (CAFC en banc)—is considering narrowing what is patent-eligible subject matter as to whether that should include business methods with no identifiable apparatus associated therewith and genetic-engineered life forms.
In re Nuijten (CAFC)
The US Patent Office is also now operating under or proposing significant new rules in areas such as:
Patent appeals are now more expensive and complex and more difficult to win.
If stayed rules are put in force, then considerations of prior art will change such as each claim must explain the applicability of each piece of prior art for that claim if excess references are cited so as not to overburden examiners.
If unstayed, claims will also be limited to 5 independent and 25 total claims per patent application for the first time in U.S. history which will dramatically change how applications are written and prosecuted.
Europe (EPO) Standards recognize "innovative step" in contrast to U.S. “obviousness” standards. European Patents could be considered possibly somewhat easier to obtain than US Patents at this time. However, their fees are generally rising and other rules dealing with searching and the like are changing as well, and could have dramatic affect on EPO prosecutions as well.
China is striving for International Patent recognition. It is trying to show that it enforces patents, and as evidence reportedly 60% of recent patent actions filed in China have been won by foreign companies. By a recent opinion, potential Patent applicants need to search diligently for Chinese prior art. There is also a class of patent called "utility model" that is unsearched and unexamined. While this patent may be fairly easy to get and seem of questionable value, it should be considered in any Chinese patent strategy as evidenced by a recent reported decision.
In summary, it could be argued that if you get a US Patent to issue under the current more restrictive conditions, it will more likely be valid and enforceable than in past years. However, getting that patent to issue will be far more difficult than in the past.