Transcript Document

Getting Your Startup to Work
for You
How Innovators Can Use US Patent Law to
Protect Their Startups
Shelly Rosenfeld
Lewis Brisbois Bisgaard & Smith LLP
213.580.3912
[email protected]
SPEAKER INTRODUCTION
Shelly Rosenfeld focuses her practice
in the areas of Intellectual Property
and Technology and Entertainment.
Prior to joining Lewis Brisbois, Ms.
Rosenfeld previously served as a
Prosecutor. She first-chaired
misdemeanor criminal trials, and had a
perfect record. Before becoming an
attorney, Ms. Rosenfeld was an awardwinning journalist. She worked as
a television anchor and reporter for an
NBC affiliate. Ms. Rosenfeld is fluent in
Hebrew and frequently visits Israel.
INTELLECTUAL PROPERTY
• Trade secrets: Information that provides a
commercial advantage and is kept confidential.
• Patentable inventions: machines, products,
compositions, processes and improvements that
have utility.
• Copyrightable works: original works of authorship
reduced to a tangible medium.
• Trademarks: marks used to identify the source of
goods or services.
UTILITY PATENT
• Novel, non-obvious processes, machines,
articles of manufacture and compositions of
matter.
• Good for 20 years from the date of the
priority application, with certain exceptions.
UTILITY PATENT
Highly complex prosecution process between
inventor and patent examiner determines the
breadth of patents. Patent application requires
the known embodiments of the invention and its
best mode with sufficient detail to permit one
“skilled in the art” to make and use the
invention.
DESIGN PATENT
• Protects the “ornamental” and nonfunctional
features (i.e. the way a product looks).
– e.g. – shape of Coca Cola bottle, design of
a tire tread.
• Good for 14 years from the date of issuance.
• Relatively inexpensive to obtain compared to
utility patents and potentially very powerful
tool to keep competitors away.
Utility Patent
So What Can You Actually Patent?
Patentable Subject Matter definition:
• “Whoever invents or discovers any new and
useful process, machine, manufacture, or
composition of matter, or any new and useful
improvement thereof, may obtain a patent
therefor, subject to the conditions and
requirements of this title” 35 USC§101
(emphasis added).
Machine or Transformation Test
An invention was a “process” only if:
• (1) it was tied to a particular machine or
apparatus, or
• (2) it transformed a particular article into a
different state or thing.
PATENTABLE SUBJECT MATTER
Bilski v. Kappos, 130 S. Ct. 3218 (U.S. 2010).
• Bilski filed a patent application for an invention
that explained how buyers and sellers in the
energy market could protect against the risk of
price changes.
• The Supreme Court rejected the patent
application and said that it was an attempt to
patent an abstract idea.
PATENTABLE SUBJECT MATTER
Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 132 S. Ct. 1289 (U.S. 2012).
• Prometheus Labs developed a method of testing
for metabolites to determine the proper effective
dose for a drug.
• The Court held that Prometheus had not
provided enough additional features to provide
practical assurance that it did not try to
monopolize laws of nature.
Mayo Collaborative Servs. v.
Prometheus Labs, cont’d
• The Supreme Court held that because one
cannot patent a law of nature, then a process
stating the law of nature is not patentable,
UNLESS:
– The process has “additional features that
provide practical assurance that the process
is more than a drafting effort designed to
monopolize the law of nature itself.”
PATENT INFRINGEMENT
Direct Infringement (35 U.S.C. §271(a))
One infringes a patent if:
• During the term of the patent
• The person makes, uses, offers to sell, or sells
the patented invention in the US or imports the
patented invention into the US.
PATENT INFRINGEMENT
Indirect Infringement (35 U.S.C. §271(b))
• It is another way someone can be sued for
patent infringement
• A type of indirect infringement is contributory
infringement
CONTRIBUTORY INFRINGEMENT
One infringes a patent if: (35 U.S.C. §271(c))
• Offers to sell/sells in or imports into the US
• A component of a patented machine, or a
material to use for a patented process
• That is a material part of the invention
• Knowing that the component is especially made
to be used in infringement
• Item not suitable for substantial noninfringing use
• E.g.: a TV screen is claimed in a patent for a TV
set and a 3rd party sells the screen which can only
be reasonably used to make the claimed TV set
PATENT INFRINGEMENT REMEDIES
Patent cases are traditionally some of the
most expensive cases to prosecute and
defend because the issues are often
complex and the exposure significant.

Consult with insurance broker to see if
insurance available to protect against claims.

Before making or selling something “close”,
get clearance from patent counsel.
Hatch-Waxman Act
Also known as: Drug Price Competition and Patent
Term Restoration Act of 1984
• Amended the Federal Food, Drug, and Cosmetic
Act (“FDCA”) and the Patent Act to more quickly
get lower-cost generic drugs to market.
• It also preserves the pharmaceutical patentees’
rights by compensating the, for the market time
lost in satisfying FDA safety/efficacy
requirements.
Hatch-Waxman Act
• When a generic drug achieves the Abbreviated
New Drug Application (ANDA)’s “Paragraph IV”
certification, it provides a 45-day period where a
patentee can decide to file suit against the
generic manufacturer.
• Once the patentee files suit against the generic
drug manufacturer, it delays the approval of the
ANDA drug by 30-months.
AMERICA INVENTS ACT (“AIA”)
Changed US Patent system from First to Invent to
First Inventor to File
• Went into effect in March 2013.
Expanded definition of prior art
• Prior art now includes anything on sale or
disclosed publicly anywhere in the world.
USEFUL WEBSITES
• Patent and Trademark Office:
http://www.uspto.gov/
• Free Patent Searching and PDF Copies:
http://www.freepatentsonline.com/
• Copyright Office: http://www.copyright.gov/
‫תודה‬
Shelly Rosenfeld
Lewis Brisbois Bisgaard & Smith LLP
213.580.3912
[email protected]