IPR and patents Yaakov (J) Stein CTO IPR and patents Slide 1 Types of property Real property Personal property Intellectual property (IPR) IPR and patents Slide 2
4 ways to handle technological IPR Secrecy e.g., Karmarkars algorithm Idea: keep the competition in the dark Protection e.g., patenting sensitive technologies Ideas: claim ownership, directly block competitors Standardization e.g., participation in standardization bodies Ideas: grow market, influence final technology Publishing (releasing to the public domain) e.g., articles in professional journals, lectures at open conferences Ideas: expert recognition, keep others from blocking you IPR and patents Slide
3 Types of IPR utility patents (inventions) design patents (industrial designs) copyrights
trademarks trade secrets trade dress (distinctive packaging) publicity rights (of celebrities) geographical indications (terroir, e.g., of wine) database rights (EU) ... IPR and patents Slide 4 Why IPR ? IPR creates an artificial monopoly why is this justified ? utilitarian (economic) theory promote innovation and incentivize progress in arts and sciences labor desert theory
natural rights Lockean proviso (there is enough left in common for others) moral rights Note that all forms of IPR are limited in term in jurisdiction in scope IPR and patents Slide 5 IPR law Unauthorized use of someone elses IPR is called infringement Infringement may be the subject of civil law or criminal law Infringement does not necessarily require knowledge but willful infringement may be more serious (e.g., triple damages) IPR rights
are always limited in time duration are usually limited to a given jurisdiction sometimes require registration and/or examination in a jurisdiction There are ways to legally use someone elses IPR assignment exclusive license non-exclusive license A license is an authorization/permission by the IPR owner to exercise a privilege that otherwise would constitute infringement License terms often involve payments IPR and patents Slide 6 Utility patents promote progress in science and technology rights are per jurisdiction each country has national patent office (e.g. USPTO)
in EU - European Patent Organization (EP) Paris convention Patent Cooperation Treaty (PCT) - WIPO grant exclusivity to inventor against infringement making, using, selling, offering for sale, exporting not against researching, drawing, thinking about note - unlike copyright, infringement does not require copying exclusivity is for a limited period of time in US: 20 years from filing (once was 17 years from grant) priority and first to file IPR and patents Slide 7 Requirements Utility must be industrially/commercially useful Novelty
must not be previously known/used/published/patented in US, inventor may publish up to 1 year before application elsewhere no prior disclosure is allowed applications are usually published after 18 months Non-obviousness to a person well versed in the art once required creative spark sufficiently different from existing knowledge only real advances are awarded patents IPR and patents Slide 8 Why patent ? There are many reasons to apply for a patent offensive licensing and royalties monopoly
NPE (trolls) defensive protect market share freedom to operate balance of fear valuation IPR is a significant fraction of value of technology companies >80% of value of S&P500 companies is intangible upon acquisition may add M$ per issued patent to company value IPR and patents Slide 9 What can be patented? Given Utility, Novelty, and Non-obviousness
the following types of inventions can be patented machines (man-made products) processes (including some algorithms) In the US, the machine or transformation test was often used is the invention implemented by a particular machine ? does the invention transform an article from one state to another ? IPR and patents Slide 10 What can not be patented? Some examples : abstract ideas natural phenomena, law of nature, scientific theories mathematical facts and methods methods for performing purely mental acts computer programs
presentations of information purely aesthetic creations (literary works, music compositions) forms of energy naturally occurring genetic material (DNA sequences) IPR and patents Slide 11 Software Algorithms may be protected by patents Databases may be protected (in the EU) by the database directive Source code may be protected by copyrights Some history (in the US) will help explain 1974 Commission on New Technological Uses of Copyrighted Works decided that computer programs, to the extent that they embody an author's original creation, are proper subject matter of copyright 1980 US Congress added computer program to copyright law
1983 Apple vs. Franklin: Court of Appeals decides that even object code is subject to copyright 1986 Whelan v. Jaslow, Broderbund v. Unison: extended software copyright to structure, organization, look-and-feel 1997 No Electronic Theft Act raises criminal penalties (even w/o monetary gain) to 5 years + 250K$ + higher civil damages, closing the LaMacchia loophole IPR and patents Slide 12 How much is a patent worth ? Patents can be sold, so patents have monetary value How can this value be estimated ? compare to price of similar patents recently sold
often hard to know, since price is frequently not released a consortium offered 1.3M$ for Orckits close to 200 patents about $7.5K per patent RAD just purchased a patent with 5 years left to run for $60K RAD once sold a patent for $250K IPOfferings LLC says that the average paid for issued US patent is $375K Google acquired Motorola Mobility, essentially for its 17,000 patents, for $12.5B, i.e., about $735K per patent Rockstar consortium (Apple/Ericsson/Microsoft/Sony) paid 4.5B$ for 6000 patents from bankrupt Nortel (easily trumping Google that bid a mere 900M$), i.e. $750k per patent! how much is it worth to a NPE (troll)? number of potential infringers royalties (Georgia-Pacific factors) how much is it worth to a PE?
save litigation costs (average $5M per suit) save royalty payments freedom to operate technical valuation IPR and patents Slide 13 Stages in patenting The following need to be performed in each jurisdiction Prior art search in the US - you may want to file a provisional application Drafting Filing (from now on patent pending) Publication (usually after 18 months) Prosecution (office actions, final office action, RCE, appeals) Allowance
Fees Issuance (patent number) Marking Maintenance (periodic fees) Expected expense to receive a US patent $10K-$20K Expected expense to receive worldwide family coverage $50K-$100K Yearly maintenance on a worldwide family $5K IPR and patents Slide 14 Provisional patent applications Since 1995, the US PTO allows filing a provisional application Provisional applications have lower fees are simpler to prepare (do not even require claims) do not require filing Information Disclosure Statements capture a priority date
allow the filer to mark products patent pending but are never examined and thus never become patents there is no such thing as a provisional patent ! only last for 1 year and can not be extended all rights are lost if you dont file a nonprovisional patent application So, it is worthwhile filing a provisional patent applications if you are unsure of the usefulness of the invention if you are waiting for funding to develop the invention (and pay fees) IPR and patents Slide 15 Where to file? Patents are per jurisdiction and each patent office has its own requirements
US Canada EPO common examination, but need to file in each country! PCT (Patent Cooperation Treaty) no protection by itself! Japan China To decide, consider where are your competitors? where are your customers? IPR and patents Slide 16
Patent families There are often many related patents in a family similar patents in different jurisdictions may be different due to different requirements and details of prosecution process in various patent offices continuation additional claims to previous patent must be filed before issuance of original patent divisional distinct variant often filed following examiner restriction relating to multiple inventions must be filed before issuance of original patent Continuation In Part adds subject matter not in original patent
retains priority date (and term) of original patent must be filed during lifetime of original patent IPR and patents Slide 17 Format of US patent First page number, title, dates, inventors, assignee, search codes, references, credits, abstract, figure Drawing sheets Description Background (including field of invention and prior art) Summary Brief description of drawings Detailed description of preferred embodiment(s) Claims
independent dependent claim language is not plain English IPR and patents Slide 18 First page IPR and patents Slide 19 Drawing sheets ... IPR and patents Slide
20 Description IPR and patents Slide 21 Claims claims define the patent coverage must define technical features (description defines terms used) IPR and patents Slide
22 Claim language A claim consists of Preamble An apparatus, A device ... A method ... A system ... ... according to claim X independent vs. dependent claims Transitional phrase comprising ... having at least one ... Limitations describing how desired result is achieved Purpose (Optional) describing the inventions goal wherein ... whereby ... IPR and patents Slide
23 Claim types There are many types of claims: method/process/use claim mathematical computer-aided process product/apparatus claim system claim means plus function business method (Bilski, Alice) Consider who will infringe the end user a competing vendor a component manufacturer Consider how infringement will be proven IPR and patents Slide
24 RADs issued patents TDMoIP family US 6,731,649 TDM OVER IP (IP CIRCUIT EMULATION) DE 60125107 TDM ber IP (IP-Schaltungsemulation) France 1,176,774 TDM OVER IP (IP CIRCUIT EMULATION SERVICE) UK 1,176,774 TDM OVER IP (IP CIRCUIT EMULATION SERVICE) EP 1,176,774 TDM OVER IP (IP CIRCUIT EMULATION) Timing family US US 8,068,430 HIGH QUALITY TIMING DISTRIBUTION OVER DSL WITHOUT NTR SUPPORT US 8,660,150 HIGH QUALITY TIMING DISTRIBUTION OVER DSL WITHOUT NTR SUPPORT divisional US 8,971,356 TIMING OVER PACKET DEMARCATION ENTITY US 9,525,502 TIMING OVER PACKET DEMARCATION ENTITY divisional SFP functionality family US 8,851,929 SFP FUNCTIONALITY EXTENDER
US 8,641,429 SFP SUPERCAGE US 8,982,726 NETWORK DEVICE US 9,025,490 NETWORK DEVICE MiCLK family US 9,276,689 PLUGGABLE MASTER CLOCK JAPAN 5,833,799 EP 2,901,587 DE 13,801,768 Switzerland/Lichtenstein Finland France UK Italy Austria DSL US 6,829,246 SYSTEM AND METHOD FOR EXTENDING THE RANGE OF XDSL SERVICES OAM family US 9,369,362 TRIANGLE LOOPBACK IPR and patents Slide 25 RADs wall of patents
IPR and patents Slide 26 Searching Google patent search www.google.com/patents US-PTO www.uspto.gov/patent WIPO www.wipo.int/patents/en/ EPO Espacenet www.epo.org/searching/free/espacenet.html EP patent wrappers register.epo.org/regviewer US-PTO wrappers portal.uspto.gov/pair/PublicPair Latest patents www.latestpatents.com/ IP marketplace www.ip-marketplace.org/ Note many companies do not allow R&D to look at patents in order to avoid willful infringement and triple damages IPR and patents Slide
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