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Abandoned Patents

With the passage of time, the value of the utilization of patents will be increased but some patents will lose their original value and may not need to be kept anymore. On the other hand, although annual fees have become remarkably high over the past several years, annual fees from the tenth year are the same due to a revision of the patent law. However, since the number of patents registered is increasing each year, it is only natural that the accumulating patent rights will also increase correspondingly. As a result, annual fees are continuing to increase.

Thus, it is desirable that patent rights be evaluated and reviewed on a regular basis, for example, every three years, so that those rights that are no longer required to be maintained can be abandoned to reduce expenses. As patent rights are automatically revoked if the annual maintenance fees are not paid, enterprises need not undertake any special transactions to dispose of them.

However, patent rights, once revoked, cannot be recovered except during the period for late payments. Therefore, enterprises should be careful when making decisions to abandon patents by setting up, for instance, in-house standards. The basic concept of the standard of the patent rights which should be continuously maintained and those which may be abandoned are given below.

Abandoning patent rights
Patents which could be disposed of are:

  • Patents which are not used and have no prospects for the future.
  • Patents which have lost their value due to the development of alternative technology, and would not bring any disadvantages to the enterprise even if they were used by others.
  • Patents which are deemed to have lost any prospects of earning profits through licensing or assignment.
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Patentability/Novelty

Patentability:

The patent laws usually require that, in order

  • for an invention to be patentable, it must
  • be of patentable subject matter, ie a kind of subject-matter that is eligible for patent protection
  • be novel (i.e. at least some aspect of it must be new)
  • be non-obvious or involve an inventive step and
  • be useful

Novelty:
Novelty is a patentability test, according to which an invention is not patentable if it was already known before the date of filing, or before the date of priority if a priority is claimed, of the patent application.

Note:
Filing & Priority date – The filing or priority date of a patent application is the date the patent application was filed in one or more patent offices.
However, if you have filed previous applications for your same invention (either domestic or  foreign), then this date can become the date that any one of those earlier applications was filed so long as you make a proper claim of priority to those earlier applications. This date can be absolutely critical with respect to opposing a novelty or other prior art type rejection that you receive from the PTO.

Why patentability/Novelty?

  • Patentability searches are typically performed before a patent application is prepared in order to determine whether or not the invention will be patentable based on the published prior art that currently exists.
  • Patentability searches cover all of the granted and published applications of the major patent offices; as well as domain relevant non-patent literature.

Patent Invalidation

A defense against the charge of infringing a patent claim is to show that the existing patents is invalid and was granted in error; due to the existence of previously undiscovered prior art which proves that the claimed invention is not novel or non-obvious.

Why invalidate?

  • Invalidity searches can be useful as a defensive tool when a company is concerned about infringing a particular patent
  • An invalidity search attempts to uncover issued patents or other published prior art that may render a patent partially or completely invalid.
  • In contrast, validity searches can also be used to invalidate an in-force patent thereby allowing a company to practice that technology without paying royalties to the firm that holds the rights to the patent in question

What is required to invalidate?

  • Active or lapsed or expired patent/publication
  • Non-patent literature
    • Scientific literature
    • Old sales catalogs
    • Trade journals
    • Conference etc…
  • The most importantly the priority date of source document should be prior to the priority date of the patent to be invalidated, in case of US
  • In case of German, the publication date of source document should be prior to the priority date of the patent to be invalidated

Summary

A validity search can serves as a basis for

  • A legal opinion against infringement
  • As a due diligence prior to selling or license a patent
  • Practice technology without paying royalties, if invalidated

How Patent Rights Can Be Lost?

Patent rights can be lost if:

  • Fees required to keep the patent in force (maintenance fees) aren’t paid
  • It can be proved that the patent doesn’t
    • adequately explain how to make and use the invention
    • improperly describes the invention or
    • contains claims that are inadequate
  • One or more earlier patents or other publications (prior-art references) are uncovered which show that the invention wasn’t new or wasn’t different enough to qualify for patent rights
  • The patent owner engages in certain defined types of illegal conduct, that is, commits antitrust or other violations connected with the patent, or
  • The patent applicant committed “fraud on the Patent and Trademark Office (PTO)” by failing to disclose material information, such as relevant prior-art references, to the PTO during the period when the patent application was pending.

In short, the patent monopoly, while powerful, may be defeated and is limited in scope and time.

Freedom-To-Operate

What does “Freedom to Operate” mean?

  • “Freedom to operate”, abbreviated “FTO”, is usually used to determining whether a particular action, such as Testing or commercializing a product, can be done without infringing valid intellectual property rights of others.
  • A freedom to operate search involves searching the claims language of third-party in-force patents to determine if the claims of the any prior art read on aspects of the technology that is to enter the marketplace.
  • Freedom to Operate research is typically conducted as a due diligence effort to prevent potential infringement.
  • Since IP rights are specific to different jurisdictions, a “freedom to operate” analysis should relate to particular countries or regions where you want to operate.

When can I have freedom-To-Operate?

  • If you want to commercialize a new variety of lentil seed in your own country, for example, you might have complete freedom to operate if there are:
  • No patents (product or process)
  • No plant variety rights,
  • No trademarks or other IP rights covering the seed

How to determine FTO?
Determining whether there is freedom to operate in any particular jurisdiction is a major reason why patent databases are so important.

If you discover a patent application or patent in the database that seems to relate to the action for which you are seeking FTO, you can’t immediately conclude that there isn’t FTO, because for a variety of reasons the matter claimed in the patent could be available to use. For example:

  • Patents may not have been applied for in many countries; the claimed matter is protected only where there is a patent.
  • Patents may not have been granted in some of the countries where applications were made; laws about what is patentable vary between countries.
  • Patents that were issued may not still be in force if the patentee has not made regular payments due.
  • Patents are a limited monopoly and they do expire (check expiration dates!).
  • Some countries have exemptions for certain actions (for example, Germany is enacting a research exemption, and New Zealand has an exemption for certain types of clinical trials).
  • Patents that were issued in different countries may have broader or narrower claims—so it is really important to look at the claims to see what they read on.

What if there isn’t any FTO possibility?

  • Option 1: Invalidate
  1. Most commonly, claims in a particular patent could be invalid because there is prior art
  2. Perhaps a publication or a
  3. Public presentation about the matter claimed in the patent

Which could have possibly been missed during patent examination process. In some countries a patent could be vulnerable to challenge because an inventor wasn’t properly named.

  • Option 2: Design around
  1. Claims may be construed to cover some actions and not others,
  2. Narrowing down the claims
  • Option 3: Licensing
  • If there are valid intellectual property rights of others that would be infringed by the action you want to take, you may be able to obtain freedom to operate with respect to any one of those rights by negotiating for a license with the owner of the IP rights.

Summary:
To ensure that the company or individual is free from any threat of infringement of third party rights a freedom to operate (or infringement clearance) study needs to be undertaken on each and every aspect of the

  • Process
  • Product
  • Its formulation and
  • Its use

These studies need to be carried out early in development of any product/process/use, etc.
If patents are identified which may affect freedom to operate strategies one can

  • Challenge the patents i.e. Invalidate
  • Obtain licenses
  • Design or work around the patents to devise non-infringing processes & formulation of product which are free from potential infringement problems
  • Avoid wasted investment

Patent Basics

Purpose:
A patent gives you, the inventor, the exclusinve right to make, use, or sell your invention. The entire rationale for granting inventors patents is “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,” as stated in Article 1, Section 8 of the U.S. Constitution.

What is an Invention?
Inventions are solutions to specific problems in the field of technology.

Types of Patents:

  • Utility – A utility patent protects the way an article is used and works. (U.S.C.,Title 35, Sec. 101.). A utility patent, the most common type of patent, covers inventions that function in a unique manner to produce
    a utilitarian result. Examples of utility inventions are Velcro fasteners, new drugs, electronic circuits, software, semiconductor manufacturing processes, new bacteria, new animals, plants, automatic transmissions,
    and virtually anything else under the sun that can be made by humans. This book is devoted primarily to utility patents.
  • Design – A design patent covers the unique, ornamental, or visible shape or design of a useful object. Thus if a lamp, a building, a computer case, or a desk has a truly unique appearance, its design can be patented. Even computer screen icons can be patented. However, the uniqueness of the design must be purely ornamental or aesthetic; if the shape is functional and aesthetic, then only a utility patent is proper. A useful way to distinguish between a design and a utility invention is to ask, “Will removing the novel features substantially affect the function of the device?” For example, removing the carved wood design in the headboard of a bed would not affect how the bed functioned and could be protected as a design patent. On the other hand, a baseball bat and fishing rod may have pleasing designs but unless they have non-functional aesthetic features, their shape is purely functional and suitable only for a utility patent.
  • Plant – Protects the discovery of new varieties of plants. A plant patent covers plants that can be reproduced through the use of grafts and cuttings such as flowers. These are referred to as asexually reproducible
    plants. (35 U.S.C. § 161.) The Plant Variety Protection Act covers those plants that use pollination (sexually reproducible plants). (7 U.S.C. § 2321.) Under some circumstances, utility patents can cover sexually and asexually reproducible plants.

What is Patentable?
There are four categories of inventions that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. (U.S.C., Title 35, Sec. 101.)

  1. Process means a process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
  2. Process inventions consist of a series of steps or acts to be performed, namely a model of treating certain materials to produce a given result.
  3. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.
  4. A process requires that certain things be done with certain substances, and in a certain order.

What is not Patentable?
While the Supreme Court stated that “anything under the sun that is made by man is patentable,” this famous quotation does have limits. First, the United States Code requires that the subject matter sought to be patented be a “useful” invention. (U.S.C., Title 35, Sec. 101.). Second, you cannot patent the following:

  • Frivolous or obvious inventions.
  • Inventions which could be contrary to law or morality or injurious to human, animal or plant life and health or to the environment.
  • Mere discovery of the scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature
  • Mere discovery of any new property or mere new use for known substance or the mere use of a known process, machine or apparatus- unless results to new products or employs one new reactant.
  • Producing a new substance by mere admixtures of substances.
  • Mere arrangement / rearrangement or duplication of known devices functioning independently.
  • Method of agriculture and horticulture
  • Any process for the medicinal or surgical, curative prophylactic, diagnostic, therapeutic or other treatment of human beings, animals to render them free of disease or to increase their economic value or that of their products.
  • The biological processes for production or propagation of plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species (new plant varieties can be protected by the protection of plant varieties and farmers act 2001).
  • A mathematical or business method or algorithms.
  • A Computer Programme per se other than its technical application to industry or a combination with hardware.
  • Aesthetic creation including cinematography and television production.
  • Method for performing mental act or playing game.
  • Presentation of information.
  • Topography of Integrated Circuits.
  • Invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known components.
  • Inventions relating to Atomic Energy.

What are the requirements for obtain a patent?
The patent laws usually require that, in order for an invention to be patentable, it must

  • be of patentable subject matter, ie a kind of subject-matter that is eligible for patent protection
  • be novel (i.e. at least some aspect of it must be new)
  • be non-obvious or involve an inventive step and
  • be useful

What is a Novelty?
Novelty is a patentability test, according to which an invention is not patentable if it was already known before the date of filing, or before the date of priority if a priority is claimed, of the patent application.

Note: Filing & Priority date – The filing or priority date of a patent application is the date the patent application was filed in one or more patent offices. However, if you have filed previous applications for your same invention (either domestic or foreign), then this date can become the date that any one of those earlier applications was filed so long as you make a proper claim of priority to those earlier applications. This date can be absolutely critical with respect to opposing a novelty or other prior art type rejection that you receive from the PTO.

What is Obviousness?
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented.

What is Utility?
Utility is a patentability requirement that makes sure your claimed invention has an actual real-world use. In most cases, this will not be a concern to you as most novel inventions are useful to someone in this world. However, utility becomes an issue in the less predictable arts.

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