Chapter 4: Patents and Trade Secrets in the Information Age

1. Chapter 4: Patents and Trade Secrets in the Information Age

2. 4.1 • 4.2 • 4.3 • Explain the scope of patent protection for Internet patents and what is meant by obviousness • Describe the requirements for patentability. • Explain the patent application and appeals process.

3. 4.4 • Describe the process for protecting assets as trade secrets.

5. 4.1 • Explain the scope of patent protection for Internet patents and what is meant by obviousness

6. 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

7. 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

8. 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

9. 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”

10. 4.2 • Describe the requirements for patentability.

11. 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

12. 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

13. 4.3 • Explain the patent application and appeals process

14. 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

15. 4.4 • Describe the process for protecting assets as trade secrets.

16. 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)

17. 4.4 • Protecting Trade Secrets • Owner must take reasonable precautions to protect the secret • Examples: firewalls, user monitoring, encryption, confidentiality agreements

18. 4.1 • 4.2 • 4.3 • Explain the scope of patent protection for Internet patents and what is meant by obviousness • Describe the requirements for patentability. • Explain the patent application and appeals process.

19. 4.4 • Describe the process for protecting assets as trade secrets.