This course assumes no prior knowledge in law, business or engineering. However, students with backgrounds in all three areas will find useful concepts or ideas in the course on how to protect business innovations using patents. The approach taken in this course is practical and commercial rather than theoretical. A combination of lectures and case studies help to illustrate the concepts and make the course more interesting. After completing this course, students should be able to understand how patents are issued and protect innovations, including: What is a patent? What do they protect? How do we get a patent? Where are patents valid? How much do they cost? In addition to basic concepts the course also deals with advanced topics such as: software patents, business process patents, patenting life, patent trolls and multiple case examples of large and small companies using patents and patent lawsuits. We also expect you to have fun in this course. So go forth and enjoy!
2.4 Step 4: Going to court
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来自 The Hong Kong University of Science and Technology 的课程
Protecting Business Innovations via Patent
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从本节课中
PROCESS OF GETTING A PATENT
This week we will look at the process of getting a patent in terms of the time, cost and effort required for each step of the patenting process. Here's where you plan your assault on the buffet.
与讲师见面
Theodore Henry King CLARKAssociate Professor
Information Systems, Business Statistics and Operations Management Department
Welcome back.
We're going to be talking today in our session on
protecting business innovations via patents about going to court.
This is the fourth step in this process of getting a patent.
And you might ask, "What do you mean?
Don't you go to court after you get a patent to sue someone for violating it?"
And the answer is, yes you do.
So this is a part of a process that happens after you get a patent but you
may also have to go to court in order to get your patent.
And if you do get your patent,
you may have to go to court to defend
your patent even before you get a chance to sue someone else.
So it's part of the process of getting the patent issued,
getting it formally approved and defending it once it is issued.
So going to court happens for multiple reasons.
Now once your patent has been rejected,
you can appeal that rejection after you've done everything
you can with the Patent Trademark Office to try and negotiate.
You've reached the end of your work.
The negotiations have not been fruitful.
Now you can appeal to court and you can say the government,
meaning the Patent Trademark Office was wrong to reject this patent,
and Your Honor we want you to overturn that rejection.
So the government fights the government.
The courts are not part of the Patent Trademark Office,
they're part of the judiciary.
They're Federal Court jurisdiction in the US,
they have some kind of technical background.
They have a lot of money that they can throw at this for
experts the government has money, you have money,
it can cost a lot of money to go to trial
because you do have a lot of experts, a lot of testimony,
a lot of lawyer time,
and so you can easily spend a million dollars or
more in going to court to appeal a rejection.
So, you don't want to do it if you're not sure you want
the patent or it's not that important,
but if it is important to your company,
it's worth spending the money on going to court to fight this rejection.
And some companies have a reputation that they always go to court.
They always fight, which helps them in negotiating with the Patent Trademark Office,
so that they're more likely to get their patent approved.
You know, IBM or Apple will always fight you in
court and so even if they really don't care that much about the patent,
they still have to go to court,
because it's part of their reputation for being tough.
After you obtain a patent you still have to go to court,
because the only thing a patent gives you is the right to sue.
So, if your patents valuable and other people infringe it,
in order to have any rights under that patent you have the right to sue.
You don't have the right to call the police and say
this guy violated my patent, go arrest him.
They won't do that. You have the right to go to court.
Sometimes you have to go to court because people will
say actually we think your patent is invalid.
We want to change it.
We want to challenge it.
We want to have it revoked.
These lawsuits can be against someone else
infringing your patent or someone else suing you and saying your patent's invalid.
They take time. They take money.
They're expensive and can take years of time and millions of dollars.
An example of a patent being rejected and then
appealed and successfully awarded was Merck getting a patent on B12,
that patent has expired since then,
but B12 is a vitamin which occurs in nature
and the Patent Office rejected it by saying B12 occurs in nature,
you can't patent a naturally occurring substance.
The Supreme Court overturned this rejection,
they said the patent should never have been rejected,
and they said that B12 exists in nature,
but the way that Merck,
refined it and concentrated it,
they took something that has never before been seen in the composition and concentration,
and they made something which exists in nature,
and turned it into a product which you never had before existed in
that form or packaging substance and concentration in nature.
So the patent should not have been rejected,
it should have been issued. Merck got the patent.
Another example, the computer was used to
help automate a factory with software and hardware to trigger alarm limits,
to make an automated factory and they filed for a patent on their approach.
Their approach to manufacturing a specific product they
said we want a patent on our approach.
The Patent Office said not patentable,
this is just general software mathematics and ideas.
We don't see anything worth patenting here.
The court overturned they said,
that a process can contain ideas or it can contain math and still be
patentable if the overall approach or process is novel.
And they can say the math the software or the ideas could
be not patentable entirely on their own,
they're part of common knowledge,
but the way that it's combined is patentable.
Sometimes patents can be overturned,
Amazon got a patent on one click,
one click is the idea that you could just click one thing and buy it,
your credit cards already there,
your address is already there,
you can go see a book on Amazon click,
one click and you bought it.
You can do the same thing on Apple's iTunes or App Store.
You can go in and click and buy,
or on an Android phone, click and buy.
You would say well how do they do that?
Amazon has a patent.
Amazon had a patent.
The Supreme Court overturned it,
they said it's invalid.
It's too close to an idea.
So, Amazon lost their patent,
and that meant that they no longer have a patent,
anybody can do that now.
Another example, that's kind of humorous in hindsight is
Microsoft in the early days of e-commerce or early days of the internet,
I should say got a patent on something called e-commerce,
and Microsoft said we want to get a patent on any form of commerce,
or commercial transaction involving the internet.
When the internet was young this seemed like a rather novel idea.
It seemed pretty impressive you could do business on the Internet.
Today, we look and say,
of course you can do business on the internet, it's big money.
But at the time Microsoft got this patent issued it was a new idea.
The Patent Office said, yeah sure we'll give you a patent.
The Supreme Court said,
I don't think so,
too close to an idea,
too broad, too much against public policy.
We're not giving Microsoft a monopoly on all of e-commerce.
If that patent had been upheld,
there would be no Amazon today unless they were a licensee of Microsoft,
so it's a good thing that patent was overturned.
But that's an example. You get a patent,
doesn't mean you get to keep it.
In one case, the Supreme Court overturned
a patent with a big case about a small invention.
It's a big case because it changed patent law.
In this particular case the Supreme Court said,
that this Electronic Gas Pedal Adjuster which
made you able to make your gas pedal bigger, or shorter,
or longer, closer or further from you with a button just like
you can change your steering wheel or you can change your side mirrors.
They said, well this is an invention for changing the height of your gas pedal.
The Supreme Court said, that's a trivial change.
They said, well nobody's published it,
nobody's done it and based on your rules of what it takes to say something is obvious.
It has to be published,
nobody's published it or done it,
there's no example of this and the court said,
this is a trivial invention.
In some countries like China,
you might have been able to get a patent for a petty patent,
or a business model patent,
or a innovation model patent, utility model patent.
But no, here, the US doesn't have such a thing.
You're either a great insight or you're nothing.
The Supreme Court said, you're nothing.
Now, the dilemma of this for
many patent attorneys is they estimate that about half of all US patents
are of this modest incremental innovation
of nature that could be challenged and overturned.
So if you get sued in America for a patent,
that patent was issued more than 10 years ago,
you may be able to challenge it and overturn it.
So it's worth fighting,
or it may be worth fighting,
at least talk to your attorney.
You don't have to lay down and play dead.
So you may go to court to appeal being rejected.
You may go to court to defend from someone else trying to revoke your patent.
You may go to court to attack someone else's patent and try to get it revoked.
The opposite of defending,
or you may go to court to enforce your patent rights against an infringer.
There are lots of reasons to go to court.
It's an important part of the patenting process and having a patent. Thank you.
