Lindsey Wilson College Module 3 Requirements for Patentability Discussion

Describe the requirements for patentability and what is considered non-obvious.

Chapter 4:
Patents and Trade Secrets in the
12
Information Age
Cyberlaw: The Law of the Internet and Information
Technology
1st Edition
Brian Craig
Class Name
Instructor Name
Date, Semester
LEARNING OBJECTIVES
After this lecture, you should:
4.1
Explain the scope of patent protection for
Internet patents and what is meant by
obviousness
4.2
Describe the requirements for patentability.
4.3
Explain the patent application and appeals
process.
12
Class Name
Instructor Name
Date, Semester
Cont’d
LEARNING OBJECTIVES
After this lecture, you should:
4.4
Describe the process for protecting assets as
trade secrets.
Class Name
Instructor Name
Date, Semester
12
Learning Objective
After this lecture, you should be able to:
4.1
Explain the scope of patent
protection for Internet patents
and what is meant by
obviousness
5
4.1
Patents
•
Patent defined: right to exclude others from
making, using, marketing, selling, offering for
sale, or importing an invention granted by the
federal government to an inventor
•
Device must be novel, useful, and non-obvious
4.1
Types of Infringement
•Direct Infringement
•Contributory Infringement
•Literal Infringement
•Doctrine of Equivalents: prevents parties from
evading liability by making trivial changes to avoid
literal language of the patent claims
7
4.1
Patent Infringement Cases
•Markman Hearing: Court receives evidence and
arguments concerning the construction to be
given to terms in a patent claim (based on case
Markman v. Westview Instruments, Inc.)
•Applicant can appeal decision of BPAI and seek
judicial review with U.S. Court of Appeals for the
Federal Circuit
8
4.1
Case Study: Bid for Position,
LLC v. AOL, LLC
•Google’s AdWords: ads displayed along with
search results when someone searches Google
using certain keywords
•Appeals Court held that Google’s AdWords did
not infringe on Bid for Position’s patent for “Online
Auction Bid Management System and Method”
9
Learning Objective
After this lecture, you should be able to:
4.2
Describe the requirements for
patentability.
10
4.2
Novelty Requirement for
Patentability
•
Invention must have occurred before
anticipation by prior art or reference
•
Prior art: knowledge, usage, patents, and
descriptions relating to an invention in
existence before the invention
4.2
First o Invent Doctrine
•
Patent ownership based on “first to invent”
rather than “first to file” a patent application
•
“interference: administrative proceeding in the
USPTO to determine who is entitled to the
patent when two or more applicants claim the
same invention
12
Learning Objective
After this lecture, you should be able to:
4.3
Explain the patent application
and appeals process
13
4.3
•
•
Patent Application
Patent prosecution: process of applying for a
patent with USPTO and negotiating with the
patent examiner
Patent agent: specialized legal professional
– Not necessarily a licensed lawyer
– Who prepares and prosecutes patent
applications before the USPTO
Learning Objective
After this lecture, you should be able to:
4.4
Describe the process for
protecting assets as trade
secrets.
15
4.4
Trade Secrets
•
Trade Secret: formula, process, device, or other
business information that is kept confidential to
maintain an advantage over competitors
•
Governed by state law – Uniform Trade Secrets
Act ( UTSA)
4.4
Protecting Trade Secrets
•
Owner must take reasonable precautions to
protect the secret
•
Examples: firewalls, user monitoring,
encryption, confidentiality agreements
Chapter Summary
4.1
Explain the scope of patent protection for
Internet patents and what is meant by
obviousness
4.2
Describe the requirements for patentability.
4.3
Explain the patent application and appeals
process.
12
Class Name
Instructor Name
Date, Semester
Cont’d
Chapter Summary
4.4
Describe the process for protecting assets as
trade secrets.
Class Name
Instructor Name
Date, Semester
12