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Patent Law for Engineers

Patent Law for Engineers. Sean D. Burdick, P.E. Patent Attorney. What I’m Gonna Tell ‘Em:. 1. About me. Career Paths in Law. 3. Law School. 4. Overview of U.S. Patent Law. 5. Patent-Related Issues Facing Engineers. 1.1 About me. ▪ Idaho Falls High School Class of 1983.

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Patent Law for Engineers

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  1. Patent Lawfor Engineers Sean D. Burdick, P.E. Patent Attorney

  2. What I’m Gonna Tell ‘Em: 1. About me • Career Paths in Law 3. Law School 4. Overview of U.S. Patent Law 5. Patent-Related Issues Facing Engineers

  3. 1.1 About me ▪ Idaho Falls High School Class of 1983 ▪ B.S.E.E., University of Idaho, 1989 ▪ Ten years in commercial nuclear power ▪ P.E. License, California, 1999 ▪ U.S. Patent Bar, 2002 ▪ J.D., University of San Diego, 2003 ▪ California State Bar, 2003 ▪ Patent Attorney, Snell & Wilmer L.L.P.

  4. 2.1 Careers in Law Careers in Law United States Patent & Trademark Office James Madison Bldg., Alexandria, Virginia

  5. 2.2 Careers in Law You Can Be A Patent Examiner! ▪ B.S. from ABET accredited school ▪ Higher pay for GPA > 2.95, upper 1/3 class rank, honor society membership, graduate level coursework ▪ Recruitment bonus, flexible schedules, tele-commuting, reimbursement for law school ▪ Specialized training provided ▪ Review applications for compliance with rules and legal standards for patentability ▪ Electrical/Computer Engr: $63k to $83k See: www.uspto.gov/go/ac/ahrpa/ohr/jobs/qualifications.htm

  6. 2.3 Careers in Law You Can Be A Patent Agent! ▪ No law degree needed to prosecute patents ▪ You just need to pass the Patent Bar ▪ Only engineers & scientists are qualified to take the Patent Bar ▪ B.S. from an accredited school, or passing the E.I.T. qualifies you to take the Patent Bar ▪ Computer-based exam offered every month; cost is $200 plus $40 application fee ▪ Patent Bar review course highly recommended ▪ Electrical/Computer Engr: $90k to $100k See: www.uspto.gov/web/offices/dcom/gcounsel/oed.htm; See: www.prometric.com

  7. 2.4 Careers in Law You Can Be A Patent Atty! ▪ Only lawyers who pass the patent bar can call themselves patent attorneys ▪ B.S. & LSAT score (+ $) gets you into law school ▪ engrs well-equipped for rigors of law school ▪ night school programs in law school ▪ $160k starting salary at top IP firms ▪ get into the highest ranked law school possible; check out U.S. News Rankings ▪ take electives in IP law ▪ pass the Patent Bar while in law school ▪ male-to-female ratio at law school about 50/50 TIP: don’t take the LSAT until serious; study for 2 months prior TIP: file a patent application – publication at 18 months is guaranteed

  8. 2.5 Careers in Law You Can Practice Law! ▪ Must pass a state Bar Exam ▪ Must pass Character & Fitness ▪ Continuing legal education ▪ Products liability ▪ Construction defects ▪ Energy ▪ Licensing / contracts ▪ Patent litigation

  9. 3.1 Law School Basic Requirements for Law School ▪ B.A. or B.S. from an accredited school ▪ Halfway decent GPA ▪ LSAT score 150 or better for top tier schools ▪ Tuition avg.: $12k to $15k per year Law School Admissions Test (LSAT) ▪ 4 times per year: June, September/October, December, February ▪ Five 35-minute multiple choice sections + One essay question ▪ Logical reasoning / Reading Comprehension / Analytical Reasoning ▪ Scored on a 120 to 180 scale

  10. 3.2 Law School Core Studies in Law School ▪ Contracts ▪ Property ▪ Torts ▪ Constitutional Law ▪ Civil Procedure ▪ Criminal Procedure ▪ Criminal Law ▪ Evidence

  11. 3.3 Law School The Socratic Method ▪ Professor asks questions to the student ▪ Every student will eventually be called on ▪ You learn by having to orally defend your position Costs / Rewards ▪ 3 years full time / 4 years part time ▪ $50k to $100k in total costs ▪ Juris Doctor (J.D.) degree ▪ research, writing, oral skills

  12. 4.1 Overview of U.S. Patent Law What is Intellectual Property (IP)?

  13. 4.2 Overview of U.S. Patent Law Constitutional Origin The Congreff shall have the Power … to promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. Article I, Section 8 ▪ Title 35 USC §§ 1 to 376 (three volumes) ▪ 37 CFR §§ 1.1 to 1.995 (about 200 pages) ▪ MPEP (two volumes, 27 chapters, seven appendices ▪ thousands of decisions in the federal courts

  14. 4.3 Overview of U.S. Patent Law A Patent is a Legal Monopoly 1. right to exclude others from making, using or selling a product covered by the patent claims 2. enforceable only within the country that grants the patent right 3. the patent claims define the scope of the patentee’s rights • does not protect a patentee against infringement

  15. 4.4 Overview of U.S. Patent Law Some Basic Patent Law: ▪ anyone can apply for a U.S. patent ▪ property rights vest initially in the inventor ▪ the date of invention is the actual date of conception followed by diligent reduction to practice, not the filing date ▪ one year grace period to file your patent application after initial public disclosure ▪ there can be multiple claims to a single invention ▪ there can be multiple inventors in a single patent ▪ the enforceable life of a patent is about 17 years

  16. 4.5 Overview of U.S. Patent Law What is patentable subject matter? Ans: Anything under the sun made by man that is a 1. new, 2. useful, and 3. non-obvious 4. process, machine, manufacture, or composition of matter

  17. 4.6 Overview of U.S. Patent Law The first U.S. Patent:

  18. 4.7 Overview of U.S. Patent Law Form of a U.S. Patent 1. Cover page (no., title, term, Abstract) 2. Drawings 3. Field & Background 4. Summary 5. Drawing Descriptions 6. Specification 7. Claims

  19. 4.8 Overview of U.S. Patent Law Example of a U.S. Patent

  20. 4.9 Overview of U.S. Patent Law Example of a U.S. Patent

  21. 4.10 Overview of U.S. Patent Law Example of a U.S. Patent

  22. 4.11 Overview of U.S. Patent Law Example of a U.S. Patent

  23. 4.12 Overview of U.S. Patent Law Example of a U.S. Patent

  24. 4.13 Overview of U.S. Patent Law Patent Facts: ▪ over 7 million patents have been granted in the United States since 1790 ▪ 426,000 utility patent applications were filed in the USPTO in 2006 (48% foreign) ▪ 196,000 utility patents were granted in the USPTO in 2006 ▪ it takes about 3 to 4 years to get a patent ▪ 5,500 patent examiners at the USPTO ▪ there are now over 760,000 patent applications pending at the U.S. Patent & Trademark Office

  25. 5.1 Patent-Related Issues Facing Engineers Patent–Related Issues Facing Engineers

  26. 5.2 Patent-Related Issues Facing Engineers Is My Idea Patentable? ▪ novelty and obviousness are the toughest hurdles ▪ any prior publication anywhere in the world can defeat novelty ▪ obviousness is based on a combination of references and the knowledge of “one skilled in the relevant art” ▪ before filing a patent appl., you may want to conduct a prior art search* yourself or hire a searching firm * See: http://www.uspto.gov/patft/index.html

  27. 5.3 Patent-Related Issues Facing Engineers Am I Infringing Somebody Else’s Patent? • 1. Constructive Knowledge • - the Marking statute: 35 USC §287 2. Actual Knowledge - cease and desist letter - lawsuit - failed licensing negotiation or other correspondence 3. No damages prior to knowledge 4. Treble damages for willful infringement: 35 USC §284 5. Costs and attorneys fees: 35 USC §285

  28. 5.4 Patent-Related Issues Facing Engineers If the product is patent-protected … How Do I Avoid The Monopoly? 1. get permission from owner or assignee (in writing!) - locate the current owner via: http://assignments.uspto.gov/assignments/q?db=pat 2. obtain a license - reasonable royalties – 2½ to 3½ % of sales? - you only need to license from a single owner 3. purchase the patent 4. work outside the jurisdiction 5. design around the claims

  29. 5.5 Patent-Related Issues Facing Engineers Designing around the claims ▪ the claims define the limits of the patent monopoly ▪ If the patent claims elements A + B + C • ▪ you infringe if your product contains element A + B + C regardless of the presence of additional elements • ▪ you don’t infringe if your product is missing any one of elements A or B or C ▪ e.g., a product comprising A + B + C + D infringes ▪ e.g., a product comprising A + C + D + E does not

  30. 5.6 Patent-Related Issues Facing Engineers What is a trade secret? ▪ not generally know to the public ▪ confers economic benefit to the holder ▪ holder makes reasonable efforts to maintain the secret The antithesis of a patent: ▪ legal protection is possible without disclosure of the secret ▪ secret maintained through NDAs and “Proprietary” designations ▪ theoretically indefinite life – perpetual monopoly ▪ BUT, no legal protection if someone else legally discovers the secret

  31. 5.7 Patent-Related Issues Facing Engineers Misappropriation of Trade Secret ▪ industrial espionage ▪ breach of NDA ▪ unauthorized disclosure of PROPRIETARY document Is there a legal way to discover a trade secret? ▪ holder fails to take reasonable efforts to maintain the secret ▪ REVERSE ENGINEERING !!!

  32. What I Told ‘Em: 1. About me • Career Paths in Law 3. Law School 4. Overview of U.S. Patent Law 5. Patent-Related Issues Facing Engineers

  33. Patent Law For Engineers Sean D. Burdick, P.E.Patent AttorneySnell & Wilmer, LLP600 Anton Blvd. Suite 1400Costa Mesa, CA 92626-7689(714) 427-7000sburdick@swlaw.com

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