What are Novelty and Non-obviousness?
Novelty and non-obviousness are requirements for a utility patent to be granted in the United States.
This post explains the meaning of novelty and non-obviousness. I have based this on my answer to a Quora question. Please see What exactly defines novelty and non-obvious in regards to patenting?
USPTO on Novelty and Non-obviousness
I have copied, below (emphasis added), portions of what the U.S. Patent and Trademark Office says about these criteria. For more information, please see General information concerning patents. (more…)
How to Perfect an Intellectual Property Security Interest
Copyright Office Document Cover Sheet
Last week I explained what a security interest is and how it can be perfected, i.e., made effective against third parties. (See What is a Security Interest, and Why Should I Care?) This post discusses how to perfect an intellectual property security interest.
To recap, a security interest is an interest in an asset (the “collateral”) intended to secure performance of an obligation. Typically, that obligation is payment of a debt. Perfection typically consists of filing, with one of more secretaries of state, documents that identify the debtor, the creditor and the collateral. (more…)
I’m One of Several Inventors – Who Owns the Patent?
A recently-acquired client is one of three inventors of a device that received a U.S. patent. She asked me whether she can freely license to an LLC owned by two of the inventors the right to manufacture products covered by the license. I replied “yes” – here’s why.
35 U.S.C. Section 262 says:
In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.
Present Assignment is Important for Patents, Too
In “Copyright: Why You Need Presence of Mind about Present Assignments“, I wrote about why copyright assignments should be expressed as present assignments (e.g., “I hereby assign”) rather than obligations to assign in the future (e.g., “I hereby agree to assign”). This suggestion applies to assignment of patents, too.
A researcher at Stanford University, in collaboration with Roche predecessor Cetus, developed methods for quantifying Human Immunodeficiency Virus in human blood samples, and correlating those measurements to the therapeutic effectiveness of antiretroviral drugs.
How to Assign a Patent Application to Your Startup
Detail from an illustration of a machine by Leonardo da Vinci
Your invention is so novel and non-obvious that you have submitted a patent application to the U.S. Patent and Trademark Office. Good for you!
Furthermore, you have formed a legal entity to turn the patent, once it issues, into a revenue stream. (See Should I form an LLC or a corporation?)
This post explains how you can assign the patent application to your new entity so your startup company can begin conducting business. (more…)
Professors Confirm Limits on Startup Interest in Patents
Last November, I wrote You Can Have a Successful Business Even if You Don?t Have a Patent. Many of the points that I made in that post are reiterated in an article that will be published this summer in the Berkeley Technology Law Journal.
The article, “High Technology Entrepreneurs and the Patent System”, is available as a Free Download on the Downloads page. Among the findings presented in the article:
- Whereas life sciences companies see patents as critical, software and Internet companies rely more on copyrights and trademarks.
- Patents are used to reduce competition and to attract capital; they do not provide strong incentives to innovate.
- The major reason why companies do not apply for patents is that they are expensive to obtain and to enforce.
- Many companies find it is more important to be the “first mover” than to obtain patents.
Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.
Where to File Your Patent Case? Probably NOT Where You Think
Stanford Law School Professor Mark A. Lemley has published a draft paper, Where to File Your Patent Case.
Lemley started with the assumption that plaintiffs frequently look for forums that favor patentees, where cases go to trial (summary judgments strongly tending to favor defendants), and that move cases along quickly. Defendants are likely to want the opposite, a forum that is unlikely to send cases to jury trial, that regularly rules for defendants, and that takes a long time to do both.
I’m One of Several Authors – Who Owns the Copyright?
Let’s assume that several authors co-write an article or a book. Who owns the copyright in the jointly-created work?
The answer is that the authors are equal co-owners of the copyright (17 U.S.C. Section 201[a]). Each copyright co-owner can exploit the copyright as he or she wishes (for example, by granting one or more nonexclusive sublicenses). However, each is obligated to share any profits from such activities with the other co-owners (see, e.g., Thomson v. Larson).
You Can Have a Successful Business Even if You Don’t Have a Patent
I recently met a software developer who wants to start a business. He immediately started talking to me about obtaining a patent. Condensed a bit, our conversation went roughly as follows:
- Dana: Without giving away information that would jeopardize your ability to obtain a patent, what would the software do?
- Developer: It is enterprise customer relationship management (CRM) software.
- Dana: What is novel and non-obvious about it?
- Developer: It will be based on a unique algorithm.
- Dana: You cannot patent an algorithm.
- Developer: I can get a patent on software that implements an algorithm.
- Dana: Perhaps. But there are other means, such as trade secrets, that might adequately protect the software [cut off in mid-sentence]….
- Developer: VCs want to invest in companies that have patents.
Leaving aside the singular focus on VC funding – something that few entrepreneurs obtain (see Realistic Financing Options for Startup Companies) – the would-be entrepreneur was similarly myopic in focusing on a patent as the only type of intellectual property that matters.
Eminent Domain: The U.S. Giveth, the U.S. Taketh
A fundamental tenet of patent law is that the owner of a patent can preclude others from using or manufacturing inventions that the patent covers. Because of eminent domain, however, that there is a major loophole regarding the U.S. government.
Section 1498(a) of Title 28 of the U.S. Code says, in part:
“Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be action against the United States in the United States Court of Federal Claims for recovery of his reasonable and entire compensation for such use and manufacture.”
(Section 1498(b) provides similarly with respect to copyright infringement by the United States.) (more…)
Third-party Patent Infringement: Let the Licensee Beware
After months of effort, you have successfully negotiated a nonexclusive license under an important patent. The license agreement allows you to make, use, sell, offer for sale, and import products that are covered by the patent. Much to your horror, your arch-competitor starts making and selling competing products that use the licensed technology, pricing its products substantially below your planned price. When you inquire, the licensor says that the competitor does not have a license. What can you do to stop this “third-party” infringement of the patent?
You examine the license agreement but see nothing about third-party infringement of the licensed technology. Can you stop your competitor from using the technology? Can you force your licensor to stop the competitor? The short answer is “no”.
Patent Licensing for Licensors: Know Your Industry
Over the past few years, several of my clients who had obtained patents wanted to license their rights to third parties. Only one client achieved patent licensing success.
The reason: The successful client was intimately familiar with the industry where his technology had its greatest value. He had worked in that industry for many years. He knew highly-placed executives in the most important companies. He was familiar with the companies’ product development plans.
(more…)
Licensing 101
I am pleased to make available as a Free Download on the Downloads page “Licensing 101,” an article that provides information about licensing in FAQ format. Here are some of the questions that are answered:
- What is a license?
- How much does a license cost?
- Can license terms be negotiated?
- Are some provisions unique to patent licenses?
- Are there special rules where the U.S. government is the licensee?
- What should I look out for in international license agreements?
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
Negotiation: When What You Hold Can Make the Other Guy Fold
A couple of years ago I had one of my greatest thrills as an attorney.
My client owns several patents covering ways to improve the efficiency of certain types of lasers. We had succeeded in licensing a large company for one field of use. We were trying to sign up another company for a second field of use.
All business and legal issues had been resolved when, at the last minute, the licensee’s General Counsel demanded that my client convey, in addition to the patent license, certain broadly-defined rights to my client’s know-how. We refused, explaining that know-how never was part of the discussion, and if my client ever was interested in conveying know-how, it would come at a price. The parties then reached final agreement without the know-how provision.
Top Ten IP Mistakes of Small to Mid-Size Tech Companies
On June 18, I will make a presentation to the East Bay MashEx. The title: “The Top Ten Intellectual Property Mistakes of Small to Mid-Size Technology Companies”. (The handout is available as a Free Download on the Downloads page.)
Here are the mistakes that I will talk about:
- Failing to use employee invention agreements
- Assuming that the company owns contractors’ work product
- Using another company’s license agreement
- Thinking that patents are the only IP that matters
- Filing for a provisional patent before the scope of the invention is clear
- Treating the federal government like non-government infringers
- Neglecting to identify and protect trade secrets
- Believing that “open source” means “no restrictions”
- Giving the “family jewels” to an overseas supplier
- Registering the wrong entity as the owner of IP
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
Intellectual Property Blogs
Here are some intellectual property blogs that I like and some of the reasons why they impress me:
- Patent – Patently-O – Professor who says a lot without being too wordy or abstract.
- Copyright – Exclusive Rights – In-house attorney with a sense of humor.
- Trademark – The Trademark Blog – Private-practice attorney who provides case documents. Been blogging since 2002!
- Trade secret – Trade Secrets Blog – Law firm that includes an eye-catching graphic with almost every post.
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
