RANDI L. KARPINIA SENIOR PATENT OPERATIONS COUNSEL LAW DEPARTMENT, MOTOROLA SOLUTIONS INC.
Patent Basics Should all new ideas be patented? Why do patents matter? When should a patent application be filed? What are the legal barriers to obtaining a patent? Who can be the owner of a patent?
an agreement with a government in which property rights are granted giving the patent holder the right to exclude everyone else from making, using and selling his invention for a period of time (typically 20 years) In a defined territory (country) if certain criteria are met and the patent holder provides full disclosure of the invention.
DESIGN PATENTS UTILITY PATENTS Products Process Appearance PLANT PATENTS Materials - or - Improvements Asexually produced
What country issued the patent Patent number Assigned by the patent agency Date patent granted When it became a patent Name of Invention Name of Inventor(s) Who invented this Assignee Who owns the patent rights (e.g., Motorola, Inc.) Initial filing date When was it first submitted as a patent application Abstract of the invention Primary drawing for the patent Standard Format enables knowledge management and data mining
Background Defines state of the art at the time of the invention and problems and limitations which the invention will solve or improve Specification and Drawings Describes the invention in sufficient detail to teach a person having ordinary skill in the art to make and use the invention in layman s terms. Claims Defines the scope of the invention in legalese.
USEFUL Must perform some function of positive benefit to society The invention must have a practical utility (real world use) or application in any field of industry Abstract ideas, laws of nature and unapplied concepts are not patentable NEW TARGET Not prior art / already publicly known e.g., patented, published NON- OBVIOUS Invention must not have been obvious to one with ordinary skill in the art. Obviousness measures the difference between what is in the prior art and what is claimed as the invention The prior art must not suggest what is claimed as the invention
Distinguish between concept and invention and innovation. Invention = Conception + Enablement Innovation = Invention + Market Need Disclosure must have this Valuable disclosures have this
Use Likelihood of company use Likelihood of competitor use Commercialization Ease of commercial implementation Years of commercial relevance Merit Evaluation Criteria Enforcement Ease of detection Claim breadth with respect to business and technology Royalty Base Impact Impact to existing patent portfolio Relevance to industry standard Relevance to business and strategic efforts
Apple paid $100 million to Creative Technology. Five years before, Creative applied for a broad software patent for a portable music playback device that bore minor similarities to the Apple ipod, which had gone on sale the same year. Once the patent was granted to Creative, it became a license to sue. Apple settled three months after Creative went to court. Creative is very fortunate to have been granted this early patent.
Blocking denial of access by competitors to a field of technology " Chester Carlson " First patent granted 1942 " 41 U.S. patents " Turned down by > 20 companies (IBM, Kodak, General Electric, RCA) " IBM spent millions to invent around Xerox s patents! " Xerox annual revenue 2011: $22.6 billion " The whole world is making copies
Freedom to conduct research and development in a particular field " The Wright brothers " Patent granted 1906 " Lateral control: " (basic aircraft design) " Aerial Experiment Association (AEA)-Alexander Graham Bell " 1911: Patent granted to AEA " Curtiss: designed and piloted award winning aircraft for AEA " Patent infringement lawsuit by Wright brothers " Court ordered Curtiss to cease making airplanes
To succeed, a business must fulfill a market need. If I had thought about it, I wouldn t have done the experiment. The literature was full of examples that said you can t do this. Spencer Silver, on the work that led to the unique adhesives on 3 M Post It notepads Dr. Spencer Silver: " invented a glue that didn t stick very well Art Fry: " Silver s adhesive + paper = a reliable bookmark. " 3M: " In 1990, Post- its - a top consumer products of the decade.
[The value of] Intellectual property and patents are in the eye of the beholder Steve Andriole, a venture capitalist, most recently CTO of Safeguard Scientifics Microsoft generated est. $444 million in revenue from Android patent deals for fiscal year 2012 Microsoft is getting est. $3-$6 per Android device sold Licensing deals account for more than half of all Android phones sold in the U.S
Too early : immediately after invention is developed Enablement of invention required Secondary country filing required one year from patent filing date Too late: after a public disclosure loss of most foreign patent rights Loss of United States patent rights if more than one year after first public disclosure of the invention by the inventor Just right After the invention has been approved for commercial production and prior to any public disclosure of the invention.
Research & Development IMPOSSIBLE (NO TECH- NOLOGY) RESEARCH (BUSINESS CASE NOT DEFINED) TECHNOLOGY MATURATION PATENTS FILED Product Commercialization ALREADY DEPLOYED
Non- patentable subject matter Laws of nature Natural phenomena Mathematical algorithms Abstract ideas
Invention has already been disclosed by another anywhere in the world
The inventor failed to file for a patent within grace period after inventor s public disclosure
Not the true inventor Failure to name an inventor or naming an incorrect inventor can invalidate a patent Non- fraudulent mistakes in inventorship can be corrected Deceptive intent = invalid patent
Inventor initially Anyone contractually granted the rights Must be in writing Rights can be retain by others who were involved in development Employers Corporate sponsors Governmental rights No work- for- hire doctrine in patent law Employers generally must have written assignments from employees Beware of compensation laws in some countries Cases and funding can be lost due to failure to prove title to an asserted patent E.g., Lucent s $1.5B verdict set aside because of failure to prove ownership of asserted patent. Investors will look for clean title.
CONTACT: randi.karpinia@motorolasolutions.com