foundations

patent legal right granted by the federal government that permit it owner to prevent
others from making, using, selling or importing an invention.
3 types
1 utility patents
2 design
3 plant
vast majority - utility
4 basic req to be eligible for patent protection
1it must be a patentable subject matter as provided for by the statute (utility, design
or plant)
2 useful if utility - does the invention provide some beneft
3 invention must be novel - new
4 non-obvious -would a person having ordinary skill in the feld of that invention have
thought of that; if yes-obvious -most litigated
a utility patent is a process, machine, manufacture or any compositional matter
ideas- not patentee
process ok
- method of doing something
not subject to protection
-products of nature
-laws of nature
how long?
gen: 20 years
after this others are free to use, make, sell invention
AIA
US: frst to invent sys before
now: frst to fle
LIBERTY UNIVERSITY SOL
patent ownership, transfer and infringement
to receive patent protection: fle an application and be granted the patent by the US
PTO?
inventor=application=owner
multiple=all sign
dispute: ownership (mar 2013)
under america invents act (AIA): shift from frst to invent sys to frst to fle sys
-harmonizes with other foreign countries
if dispute:
-derivation proceeding
-purpose : w/n prior applicant derived the invention from a second applicant and w/o
authorization fled the application for the invention
Ee/ independent contractor:
typically- employment contract handles the issues- provide that Er own the invention
or discoveries achieved during the scope of employment
also Ee will efectuate any docs in order to make assignment efective
if no contract: Shop right?
- Ee will retain ownership of patent but Er will have non- exclusive royalty free, non-
transferable license to use the invention
patents have attributes of personal property they may be
transferred or assigned
transfer must be in writing
also of practice but not required to record the transfer instrument with the US PTO
licensing a patent: v assignment

ass: transfer ownership of the patent
granting a license: allows the licensee to use the invention subj to the terms of the
license
also they can customize the agg w/ regard to duration, scope, terms or territory
patent infringement
patent protection= owner ability to preclude others from making, using, selling or
importing the inv.
direct infringement when make, ofer to sell, use, imports patented inv w/o the
owner's permission
-very broad prohibittion
frst sale doctrine
- once the patent owner sells one of the inv (like a product) the buyer has the right to
sell the product as s/he sees ft (w/ch is dif from selling the actual patent)
indirect inf
- one encourages someone else to infr, among other things
def defenses:
-patent invalidity
-fraud
-patent misuse
- frst inventor defense
-laches
-estoppel
remedies:
-injuctive relief
-compensatory damages
-if willful: punitive damages
patent litigation:
-very expensive and time consuming
patent law- very technical- involves complicated subj matters
experts involved-very expensive to retain
so resolve out of court if possible
begin with cease and desist letter
also depend on circ also demand letter asking for fnancial compensation
if not succ
fle action with local federal district court
all appeals - us CA for federal circuit in washington DC