Fundamentals of

Patent and Copyright

Law
for
Florida State
By: Bill Needle
University
Atlanta, Georgia
Telephone: (404) 688-0770
E-mail:
bneedle@needlerosenberg.com
http://www.needlerosenberg.com

Web Sites for Patents,

Trademarks and
Copyrights
www.uspto.gov
(Patents and Trademarks)

www.loc.gov/copyright
(Copyrights)
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Patent Power
Immediately following the U.S.
Court of Appeals decision on
August 9, 2000 that Eli Lillys
patent on Prozac was invalid,
shareholders dumped $36 billion
in Lilly stock, roughly a third of
the pharmaceutical giants
market capitalization.
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Patent Power
Royalties from inventions earn an
estimated $150B/year worldwide
and are expected to grow 30%
annually over the next 5 years.
Trying to Cash in on Patents. New York Times, June 7, 2002.

Patent Power
$1.5B in licensing revenue for IBM in
2001 (over 11% of pre-tax profit).
Hitachi had $428M in patent
licensing revenue in 1996.
Canon had $127M in patent
licensing revenue in 1997.
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Applications Filed and

Patents Issued
350,000

300,000

250,000

200,000

150,000

Patent Applications
100,000

Patents Issued
50,000

Patents Issued

0
1790

1850

1900

1950

1990

2001

Patent Office Statistics

Patents Issued:
66,000 in 1980.
176,000 in 2000.
168,000 in 2002.
*Source U.S.P.T.O. Numbers
rounded to nearest 1000.

Patent Office Statistics

Each week, the Patent
Office issues
approximately 3,500 new
patents.
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Patent Office Statistics

1998: 260,889 applications
filed.
2002: 333,688 applications
filed.
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Patent Office Statistics

Last year, 333,688 new
applications joined a
backlog of 355,000 older
applications with only
3,538 Examiners.
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Patent Office Statistics

Filing of patent
applications for biotech
inventions jumped 24% in
2000 and 2001.
11

Patent Office Statistics

About one-half of the
examiners in the organic
chemistry/ biotech/
pharmaceutical groups
have Ph.D.s.
12

Percentage of Examiners by
Technical Discipline
Design
2%
Electrical
44%

Mechanical
26%

Chemical
28%

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U.S. Patent and Trademark

Office

As seen from National Airport

14

A Glimpse Inside the PTO

USPTO Public Search Room

(main work area)

15

A Glimpse Inside the PTO

USPTO Public Search Room

North Stacks Area

16

PTO Search Room

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Patentability Tests
The Supreme Court
has said that patents
cover anything under
the sun that is made
by man.
Diamond v. Chakrabarty, 447 U.S. 303 (1980)
(genetically-engineered bacteria that broke down
crude oil)

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Patent Theory
A patent is a contract
between the inventor and the
Government (Patent Office).

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Patent Theory
Consideration for the
contract:
Inventor agrees to
disclose fully the invention
to the public fully is
the operative word.
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Patent Theory
In exchange, the
Government grants for a
limited time a limited
monopoly on the invention
to the inventor if certain
patentability tests are met.
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Patent Theory
What is the limited
time or life of a patent?
20 years from the filing date
of a utility application
(no rights during pendency)
14 years from issuance for a
design patent
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Patent Theory
Why a limited monopoly?
An inventor does not have a
guarantee that he can make,
use or sell the patented
invention. A third partys
dominating patent may exist.
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Patent Theory
Patents grant their owner the
right to exclude others
from:
Making the invention
Using the invention
Selling the invention
Offering the invention for sale
Importing the invention
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Patentability Tests
What are the patentability tests?
I.

Usefulness 35 U.S.C. 101.

II.

Novelty 35 U.S.C. 102.

III. Non-Obviousness 35 U.S.C.

103.

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Patentability Tests
I. Usefulness/Utility
Does the invention really
do anything and, if so,
does it solve the problem
it is designed to solve?

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Patentability Tests
II. Novelty
Novelty and non-obviousness are
determined by comparing
claimed invention to the prior
art:
Prior patents/publications
Prior public uses
Prior commercial offers to sell
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Patentability Tests
II. Novelty
Is the claimed invention
disclosed anywhere in
the prior art?

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Patentability Tests
III. Non-Obviousness
Even if new and novel,
would the claimed invention
have been obvious to one
skilled in the art at the time
of the invention?
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Requirements for
Patentability
WARNING:
The One-Year Statutory Bar Rule

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Requirements for
Patentability
Public Use/Offer for Sale/Sale Before U.S.
Applications Filed No Foreign Filings

File in U.S.

Public Use/Sale

ONE YEAR

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Requirements for
Patentability
U.S. Application Filed Before
Public Use/Offer for Sale/Sale
Foreign Filings Preserved
File in U.S. Public Use/Sale

File Foreign

ONE YEAR

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 Do Not

Do Any of the Following

You may forfeit your right to patent an invention
if there is a public disclosure of your invention
more than one (1) year prior to filing a patent
application.
Therefore, you should not do any of the following
without determining whether patent protection
should be sought for the technology:

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 Do Not

Do Any of the Following

Display or discuss the invention at a seminar,
lecture, workshop, poster presentation or trade
show open to the public, or
Disclose the invention without a signed
Confidentiality (or Non-Disclosure) Agreement,
or

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 Do Not

Do Any of the Following

Disclose the invention on inventors or
Universitys web site, or
Submit an article to a journal for publication, or
Publish a manuscript, letter, note or chapter in
format available to the public, or

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 Do Not

Do Any of the Following

Offer for sale or sell the invention,

or
Distribute samples of the product
to customers or collaborator, or
Consumer or market test a new
product, or
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 Do Not

Do Any of the Following

Distribute advertising brochures about the
invention, or
Demonstrate a prototype to a public group.

THE GOAL: to prevent

unnecessary loss of patent rights
due to premature use, sale or
publication of patentable
technology.

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Please Do the Following:

Consult with the Universitys Technology
Transfer Office before any public
disclosure of the invention.
Stamp CONFIDENTIAL on every page
of the technical portion of any grant
proposal.
Use laboratory notebooks.
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Documenting Invention
Why? - important to prove date of invention
corroboration in interference proceeding.
All experimental protocols and data should
be entered in a notebook.
Notebook pages should be numbered and
bound.
All entries should be dated and witnessed
by someone who understands entry but is
not a co-inventor.
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Whats An Invention?
Conception
+
Reduction to Practice =
Invention
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Whos An Inventor?
Inventorship cannot be determined
until the patent application claims
are drafted.
Inventor is one who contributes
significantly to either the
conception or reduction to practice.
Co-author does not necessarily
mean co-inventor.
41

Provisional Patent
Application
No specific Patent Office
format required. No claims or
formal drawings.
Not examined in Patent Office.
Requires complete description
of invention and best mode.
42

Provisional Patent
Application

Cheaper and quicker to file than

utility application.
Use Patent Pending marking.
However, have to file utility
application within one year or
provisional becomes abandoned.
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Utility Patent Application

Requires specific Patent Office format:
formal drawings, specification and claims.
Examined for utility, novelty and
non-obviousness.
Issues as patent (2 years minimum).
20-year term starts from filing date of
utility application.

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Process for U.S. Utility

Patents
Patentability
Search

Gather information
on invention

Examiner Issues
Office Action

USPTO Examiner
conducts
patentability search

Publication of
Application 18
months from filing

Pay Maintenance Fees at

3 , 7 and 11 years
after patent issues

Inventor Signs
Declaration, POA,
Assignment

Prepare
Application

USPTO Advises
serial number and
filing date

N&R Files
Application in
Patent Office

Response to Action
Filed

Patent Application
Receive Notice of
Allowance

Patent Issues

Pay Issue Fee

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Patent
Example

46

Utility
Patent

47

48

49

50

Design
Patent

51

52

Copyright
s
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What is Copyright?
A form of protection for
original works of expression
fixed in a tangible form,
including
literary,
musical,
pictorial,
graphic,
sculptural,
audio/visual works.
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What is Copyright?
Examples of Copyrightable
Subject Matter:
Software
Songs
Movies (but not (sequence of
coded
their titles)
instructions
Games
which direct the
Jewelry
process steps)
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Cabbage
Patch Kids
Babies

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Copyright
Original works of
expression
Originality Novelty
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Idea vs. Expression of

Idea
Original works of expression
Copyright does not protect
an idea, only the expression
of the idea.
58

Idea vs. Expression of

Idea

59

Idea vs. Expression of

Idea
A copyright owner has
no right to prevent the
independent creation of
the same expression of
an idea.
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Rights of Copyright
Owner

Copyright owner has the exclusive right:

1. To reproduce the work,
2. To perform the work publicly,
3. To distribute copies of the work,
4. To display the work publicly,

and

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Rights of Copyright
Owner
5.To make derivative works
based upon the work.

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Copyright Protection
How to obtain copyright
protection?
Arises automatically with
fixation of the work in a
tangible medium.
63

Copyright Protection
Dont have to register the
copyright.
Only need to register if
suing for infringement.
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Copyright Protection
However, its recommended
to seek registration within 3
months from first publication
to collect statutory damages
(up to
$100,000/infringement) and
attorneys fees.
65

How to Register a
Copyright?
Download the appropriate
form at the Copyright Office
website:
www.loc.gov/copyright
and follow the simple
directions.
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Copyright Notice
[year date of creation]
[owner]
or
Copyright [year date of
creation] [owner]
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Work for Hire

1. A work prepared by an
employee within the scope of
his/her employment (i.e., it
was part of the job duties of
the creator to create the work)
or

68

Work for Hire

2.A work specially ordered or
commissioned for use as:
A.a contribution to a collective
work;
B.as a part of a motion picture or
other audiovisual work;
C.as a translation;
D.as a compilation;
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Work for Hire

E. as an instructional text;
F. as a test;
G.as answer material for a test; or
H. as an atlas
if the parties expressly agree to a
written instrument signed by
them that the work shall be
considered a work made for hire.
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Work for Hire

Moral:
Always have the author
of the work sign an
agreement under which
the copyright in the work
is assigned to you.
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Duration of Copyright
Life of the author plus 70
years.
If work for hire: shorter of
95 years from publication
or 100 years from creation.
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Thank You!
Atlanta, Georgia
Telephone: (404) 688-0770
E-mail:
bneedle@needlerosenberg.com
http://www.needlerosenberg.com

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