Ethics for Engineers, Patents, Copyrights, and IPR

PATENT!!
 Patent Litigation

In simple terms, patent litigation is the legal

process that unfolds when someone who owns
the patent for a particular invention enforces
their right by suing another for manufacturing
or selling the invention without permission
 Patent Litigation: Key Facts and Figures
• Very few patents are litigated
• Less than 1%
• Litigation occurs years after the invention

• Patent litigation is extremely costly, time consuming

• Typical cost of litigation: $6.5M per side for cases with more than $25M
at stake; $4M per side for smaller cases

• A “hunting license” that can be revoked

• The invalidity of the patent is a defense to infringement
• Estimates suggests that 25-40% of litigated patents are found invalid
Strategic Decision-Making
 Acts of Patent Infrigement

 Making
 Using
 Selling
 Offering to Sell
 Importing
 Filing an A.N.D.A (Abbreviated New Drug
Application for pharmaceuticals)
 Case Study : The Super Soaker
Claim Elements Accused
(Simplified) Device? (The
Super Soaker)
A pump for building up pressure ?
in said chamber for ejecting a
stream of liquid there from
substantially forward
Means for controlling the ejection ?
An elongated housing having a ?
chamber therein for liquid

Accused Device
 Case Study : The Super Soaker
Claim Elements Accused
(Simplified) Device? (The
Super Soaker)
A pump for building up pressure 
in said chamber for ejecting a
stream of liquid there from
substantially forward
Means for controlling the ejection ?
An elongated housing having a ?
chamber therein for liquid
 Case Study : The Super Soaker
Claim Elements Accused
(Simplified) Device? (The
Super Soaker)
A pump for building up pressure 
in said chamber for ejecting a
stream of liquid there from
substantially forward
Means for controlling the ejection 
An elongated housing having a ?
chamber therein for liquid
 Case Study : The Super Soaker
Claim Elements Accused
(Simplified) Device? (The
Super Soaker)
A pump for building up pressure 
in said chamber for ejecting a
stream of liquid there from
substantially forward
Means for controlling the ejection 
An elongated housing having a ×
chamber therein for liquid
Doctrine of Equivalents
 Doctrine of Equivalents
But what if we have a ball
shaped eraser?
Doctrine of Equivalents:
• Prevent people from making trivial or
minimum changes to the invention
• Expands the analysis of patent infringement
a little bit, even if it’s not actually present,
is it equally present?
• But how do we know that an eraser ball is
equivalent to a cylinder?
 Doctrine of Equivalents
• The doctrine of equivalents is one of the
most complex issues in patent law.
• Its existence makes analyzing infringement
difficult without litigation
• May be the chamber for holding the water
isn’t inside the housing of the gun, may be
it’s equivalent: It still holds water?
• But court found significant structural
differences between an external tank and
holding the water entirely inside the squirt
gun: not an equivalent structure
 Patent Disclosure Requirement
Patent Description
• Sufficient description to show the possession of the invention
• Possession means you “actually invented it”
 The Subject Matter Requirement
• Products of nature or natural phenomena
(Like you discover a new plant)
• Man-made versions of nature can be patented
(Genetically engineered plant, animal, material)
 The Subject Matter Requirement
• Abstract Ideas:
- Inventions that are too fundamental (Equations)
- Well-known activities or mental steps (concepts
that are mental steps)
The US Patent and Trademark Office
Examiner Responses:
• Office Actions – “Rejections”
(Or Revisions)
• Other Notices – Fees
required
• Interview
• Notice of Allowance : Claims
are finalized and ready for
patent
• Final Rejection: No longer
response
 The US Patent and Trademark Office
• Final Rejection :
a) Continuation Application: (Do-over) Take prior application,
re-date and re-file it
Another go-round with the examiner (Adding more information
and re-filing)
 Types of Patent

Plant based Patent

Utility based Patent

Design Patent
 Types of Patent: Plant based Patent
• A plant patent can be obtained to protect new and distinctive
plants.
• A few requirements to obtain this type of patent are that the
plant is not a tuber propagated plant (i.e., an Irish potato), the
plant is not found in an uncultivated state, and the plant can
be asexually reproduced.
• Asexual reproduction means that instead of being reproduced
with seed, the plant is reproduced by grafting or cutting the
plant. Plant patents require asexual reproduction because it's
proof that the patent applicant can reproduce the plant.
 Types of Patent: Utility Patent
“How it works” 
A utility patent protects the way an invention functions and/or the way the invention is
used. A utility patent protects an invention that is novel, non-obvious and useful and
that falls under at least one of the following four categories:
Article of Composition
Process Machine
manufacture of matter
• Eg: methods of • Machine claims • Includes claims • Composition
treating diseases, are directed to directed to claims are
methods of devices or articles that are directed to
performing an combinations of manufactured chemical
algorithm to devices in such as ceramics, compositions or
protect software systems. chairs, shoes etc. biological
functioning, compositions
methods of using
devices etc.
Types of Patent: Design Patent
“How it looks” 
 Utility Vs Design Patent
Question Design Patent Utility Patent 
Protects How it looks How it works
Attorney’s fees for initial filing less than $1,000 more than $7,000 (more costly)
Allowance rate / Office Action rejections 86.4% allowance 90% rejection (1st round),
(7 out of 8 allowed) followed by 50% chance of 2nd
round
How much time does it take? (average 20 months 33 months
pendency to issuance or abandonment)
Patent term 15 years from grant date (in US) 20 years from filing date
10 years from the grant date (in India)
How to determine infringement drawings written claims
(point of reference)
 Share your thoughts

Questions ? Can a company apply for

both Design patent and
Answer
Utility Patent?