Howard B. Rockman - Intellectual Property Law for Engineers, Scientists, and Entrepreneurs

1 Cover

2 Foreword

3 Foreword to the First Edition

4 Preface THE PROPER PERSPECTIVE—A FABLE OVERTURE

5 Acknowledgments

6 Top Ten List of Intellectual Property Protection

7 SECTION I: The Intellectual Property Universe Eli Whitney – THE COTTON GIN Charles Babbage – THE DIFFERENCE ENGINE 1 Overview of Intellectual Property Law1.1 DEFINING “INTELLECTUAL PROPERTY” 1.2 SPECIFIC INTELLECTUAL PROPERTY VEHICLES 1.3 WHICH FORM OF INTELLECTUAL PROPERTY PROTECTION TO USE? Frank J. Sprague – THE ELECTRIC STREETCAR Mary Anderson – WINDSHIELD WIPER BLADE 2 Brief Overview of the Law2.1 INTRODUCTION 2.2 DEVELOPMENT OF THE LAW AND LEGAL PRINCIPLES 2.3 DIVINE LAWS 2.4 THE FOUR TYPES OF LAW 2.5 CIVIL LAW SYSTEMS 2.6 ENFORCEMENT OF LAWS 2.7 CHANGES IN THE LAW 2.8 EQUITY 2.9 U.S. COURTS, STATE AND FEDERAL 2.10 THE FEDERAL COURT SYSTEM 2.11 STATE COURTS 2.12 JURISDICTION

8 SECTION II: Patents Charles Goodyear – VULCANIZATION OF RUBBER John Boyd Dunlop – PNEUMATIC VEHICLE TIRES 3 Introduction to Patents3.1 BRIEF HISTORY OF PATENT PROTECTION 3.2 TYPES OF PATENT COVERAGE 3.3 HOW TO DETERMINE WHAT TO PATENT AND WHAT NOT TO PATENT 3.4 BROADLY, WHAT DATA GOES INTO A PATENT 3.5 WHAT A PATENT IS NOT 3.6 INVENTIONS RELATING TO ATOMIC WEAPONS 3.7 THE U.S. GOVERNMENT’S RIGHT TO PRACTICE YOUR PATENTED INVENTION George Westinghouse – STEAM‐POWER BRAKE DEVICES AND ALTERNATING CURRENT Gideon Sundback – ZIPPER 4 Introductory Comments on Patentable Subject Matter and Utility4.1 WHAT CONSTITUTES PATENTABLE SUBJECT MATTER? 4.2 UTILITY — THE INVENTION MUST BE USEFUL John Deere – HORSE‐DRAWN PLOW Erastus Brigham Bigelow – POWERED CARPET‐MAKING LOOMS 5 Novelty—The Invention Must Be New5.1 STATUTORY REQUIREMENTS 5.2 PRELIMINARY COMMENTS ON PROTECTING FOREIGN PATENT RIGHTS 5.3 ADDITIONAL COMMENTS ON EXPERIMENTAL USE VERSUS ACTUAL USE OF THE INVENTION Alfred Nobel – DYNAMITE 6 Requirement of Non‐Obviousness for Patentability6.1 DEVELOPMENT OF THE STANDARD OF NON‐OBVIOUSNESS 6.2 HISTORICAL BACKGROUND 6.3 SUPREME COURT CASES PREDATING THE 1952 PATENT LAW SECTION 103 NON‐OBVIOUSNESS TEST 6.4 THE 1952 PATENT STATUTE AND THE CASE OF GRAHAM V. JOHN DEERE COMPANY (1966) 6.5 THE 2007 U.S. SUPREME COURT CASE OF KSR V. TELEFLEX 6.6 ILLUSTRATIVE NON‐OBVIOUSNESS ANALYSIS Louis Pasteur – PASTEURIZATION PROCESS Elisha Otis – SAFETY ELEVATOR 7 The Patenting Process7.1 WHO MAY OBTAIN A PATENT: INVENTORSHIP AND OWNERSHIP OF PATENT RIGHTS 7.2 PROPER DOCUMENTATION OF THE INVENTION 7.3 THE INVENTION DISCLOSURE, AND THE INVENTION DISCLOSURE MEETING 7.4 ADDITIONAL MATTERS DISCUSSED DURING THE INVENTION DISCLOSURE MEETING BETWEEN THE INVENTOR AND THE PATENT PROFESSIONAL 7.5 INVENTION DISCLOSURE FORM Alexander Graham Bell – TELEPHONE 8 The Patentability Search, Freedom‐To‐Use Search, and Other Searches 8.1 SEARCHING THE CONTENT OF THE PRIOR ART TO DETERMINE PATENTABILITY OF THE INVENTION 8.2 PATENTABILTY SEARCH PARAMETERS 8.3 ADDITIONAL TYPES OF SEARCHES 8.4 DATABASE SEARCHES 8.5 U.S. PATENT AND TRADEMARK OFFICE PATENT CLASSIFICATION SYSTEM Thomas Alva Edison – THE LIGHT BULB 9 The Patent Application9.1 INTRODUCTION 9.2 REGISTRATION SYSTEM EVOLVING INTO AN EXAMINATION SYSTEM 9.3 GOAL OF A PROPERLY PREPARED PATENT APPLICATION 9.4 PROVISIONAL PATENT APPLICATIONS 9.5 REGULAR, NON‐PROVISIONAL PATENT APPLICATION; NO NEW MATTER 9.6 CONTENT OF A REGULAR NON‐PROVISIONAL PATENT APPLICATION 9.7 YOUR REVIEW OF THE PATENT APPLICATION 9.8 EXECUTION OF THE DECLARATION, POWER OF ATTORNEY, AND ASSIGNMENT UPON COMPLETION OF THE PATENT APPLICATION George Eastman – PRACTICAL PHOTOGRAPHY Emile Berliner – DISC SOUND RECORDING 10 Claims of a Patent Application10.1 INTRODUCTION TO PATENT CLAIMS 10.2 HISTORICAL DEVELOPMENT OF PATENT CLAIMS 10.3 WHAT CLAIMS ARE 10.4 YOUR REVIEW OF THE CLAIMS OF YOUR PATENT APPLICATION 10.5 DISTINGUISHING DIFFERENT TYPES OF CLAIMS 10.6 MORE ON METHOD OR PROCESS CLAIMS 10.7 COMPOSITION OF MATTER CLAIMS 10.8 DESIGN PATENT CLAIM 10.9 DEPENDENT CLAIMS 10.10 HOW TO READ AND UNDERSTAND PATENT CLAIMS DRAFTED BY YOUR PATENT ATTORNEY Ottmar Mergenthaler – THE LINOTYPE® HOT‐TYPE COMPOSING MACHINE Theodore Maiman and Gordon Gould – LIGHT AMPLIFICATION BY STIMULATED EMISSION OF RADIATION (LASER) 11 Examination and Prosecution of a Patent Application11.1 U.S. PATENT EXAMINATION PROCESS 11.2 THE PATENT EXAMINATION SYSTEM—A LITTLE MORE HISTORY 11.3 FILING THE PATENT APPLICATION WITH THE USPTO 11.4 EXAMINATION OF THE PATENT APPLICATION 11.5 RESULTS OF THE EXAMINATION—THE “OFFICE ACTION” 11.6 YOU AND YOUR ATTORNEY’S RESPONSE TO THE OFFICE ACTION 11.7 FURTHER PATENT PROSECUTION 11.8 GRANTING THE PATENT 11.9 INFRINGEMENT DURING EXAMINATION OF THE PATENT APPLICATION 11.10 ADDITIONAL PROBABLE PATENT PROSECUTION EVENTS 11.11 RE‐EXAMINATION OF AN ISSUED PATENT BY THE APPLICANT, THE INFRINGER, OR THE COMMISSIONER OF PATENTS 11.12 RE‐ISSUE PATENTS Nicolaus Otto – THE INTERNAL COMBUSTION ENGINE Rudolf Diesel – THE INTERNAL COMBUSTION ENGINE 12 Design Patents12.1 COVERAGE OF DESIGN PATENTS 12.2 THE DESIGN PATENT APPLICATION 12.3 INFRINGEMENT OF A DESIGN PATENT 12.4 IMPORTANCE OF DESIGN PATENTS 12.5 EXAMPLES OF DESIGN PATENTS 12.6 DESIGN PATENTS ON COMPUTER SCREEN ICONS 12.7 DESIGN PATENTS CONTRASTED WITH COPYRIGHTS 12.8 DAMAGES FOR DESIGN PATENT INFRINGEMENT 12.9 THE HAGUE AGREEMENT CONCERNING THE INTERNATIONAL DEPOSIT OF INDUSTRIAL DESIGNS (THE HAGUE SYSTEM) Nikola Tesla – AC INDUCTION MOTOR AND RADIO Clarence Birdseye – FROZEN FOOD 13 Protection of Computer‐Related Inventions13.1 INTRODUCTION 13.2 THE TORTUROUS PATH THROUGH THE COURTS 13.3 RECENT COURT DECISIONS AND USPTO GUIDELINES ATTEMPTING TO DEFINE PATENT‐ELIGIBLE SUBJECT MATTER REGARDING COMPUTER‐RELATED INVENTIONS 13.4 THE USPTO EXAMINATION PROCESS TO DETERMINE SUBJECT MATTER ELIGIBILITY OF A COMPUTER‐RELATED INVENTION 13.5 RECOMMENDED STEPS TO OBTAIN PROPER PROTECTION OF COMPUTER‐RELATED INVENTIONS 13.6 STATUTORY SUBJECT MATTER 13.7 THE COMPUTER‐RELATED INVENTION MUST STILL BE NOVEL AND NON‐OBVIOUS 13.8 COMPUTER PROGRAMMING AND A SUFFICIENT DISCLOSURE 13.9 THE PROTECTION OF SOFTWARE THROUGH CONTRACTS 13.10 PATENT ELIGIBILITY OF SOFTWARE AND COMPUTER‐RELATED INVENTIONS IN EUROPE Hedy Lamarr – SPREAD SPECTRUM TECHNOLOGY Herman Hollerith – TABULATING MACHINE 14 Biotechnology Inventions14.1 INTRODUCTION TO BIOTECHNOLOGY 14.2 HISTORY OF BIOTECHNOLOGY PATENT PROTECTION 14.3 PATENT‐ELIGIBLE SUBJECT MATTER AND BIOTECHNOLOGY 14.4 BIOTECHNOLOGY AND THE WRITTEN DESCRIPTION REQUIREMENT 14.5 BIOTECHNOLOGY AND PATENT EXHAUSTION 14.6 BIOTECHNOLOGY AND GOVERNMENT REGULATION 14.7 PHARMACEUTICAL PATENT STRATEGIES 14.8 MEDICAL PROCEDURES Rosalind Franklin, James Watson, Francis Crick, and Maurice Wilkins – DISCOVERY OF THE MOLECULAR STRUCTURE OF DNA Stanley N. Cohen and Herbert W. Boyer – RECOMBINANT‐DNA (rDNA) 15 The Patenting of Business Methods15.1 THE EVOLUTION OF PATENTS FOR METHODS OF DOING BUSINESS 15.2 THE STATE STREET CASE 15.3 THE BILSKI CASE 15.4 WHAT IS A BUSINESS METHOD INVENTION? 15.5 THE USPTO GUIDELINES 15.6 RECOMMENDATIONS 15.7 UNDERSTANDING A SAMPLE BUSINESS METHOD PATENT CLAIM 15.8 THE COVERED BUSINESS METHOD REVIEW Yvonne Brill – SATELLITE PROPULSION SYSTEM Luther Burbank – PLANT BREEDING 16 Foreign Patent Protection16.1 INTRODUCTION 16.2 THE TRADITIONAL SYSTEM OF OBTAINING FOREIGN PATENTS 16.3 THE PATENT COOPERATION TREATY (PCT) 16.4 NATIONAL PATENT LAWS AND THE PCT: DIFFERENCES AND ALTERATIONS 16.5 THE EPC 16.6 THE EUROPEAN UNITARY PATENT AND UNIFIED PATENT COURT 16.7 PRIVILEGED COMMUNICATIONS BETWEEN A U.S. PATENT ATTORNEY AND A FOREIGN NON‐ATTORNEY PATENT AGENT Wilbur and Orville Wright – CONTROLLED POWERED FLIGHT 17 Enforcement of the Patent Right17.1 THE PATENT CLEARANCE PROCESS 17.2 THE ATTEMPT TO DESIGN AROUND THE CLAIMS OF A PATENT: MOST INFRINGERS DO NOT SLAVISHLY COPY THE PATENTED INVENTION 17.