Professor Yaniv Heled Answers All Your Patent Related Questions
I’ve written a bit about why most are wrong about Apple v. Samsung and patent law in general, but I’ve been reticent about laying the foundation for patent law so that you can have a better grasp about what is taking place in the various litigation and why it is happening. I’ve been hesitant to do so because a.) I don’t even have that firm a grasp on patent law after two law-level courses and b.) I feel such an article should come from an authority on the subject. So, I brought in a ringer. I figured the best way to get you up to speed was to interview the man who taught me, Professor Yaniv Heled.
Professor Heled is a really bright guy – you can see just how bright here. So, instead of reading what someone who hasn’t worked or studied in the field has to say about patent law, listen to what he has to say about it instead. Without any further ado, here’s a portion of the chat we had on September 12th, 2012 about patent law in general, and a bit about Apple v. Samsung in the end. (This is an excerpt of the 45-minute interview).
How does a patent begin life?
A patent begins life with an invention. The inventor (or group of inventors) come up with something which is useful and wanting to protect their invention from competition they would seek a patent agent to help them patent their invention. The agent is a person who is licensed by the Patent Bar to partake in this kind of activity.
What are those requirements?
They have to undergo an examination and they have to have a scientific background in science or engineering…generally speaking they have to have a Bachelor’s Degree at least in science or engineering, and they have to take an exam called the Patent Bar which is administered by the patent office, this is not an easy exam. Passage rates are nowhere near passage rates of most state bars.
And once they have the patent agent?
Once they have the patent agent they will file a patent application. The agent will write the application usually based on the information given to her by the inventors. But before they do the patent agent will normally run what is known as a prior art search. The patent agent will use various techniques and search engines to see what is the state of technology in that particular area. In most cases that would entail looking up scientific literature and of course looking up online to see what is out there. And the reason for that is when you file the patent application you want to make sure that the application complies with the numerous requirements of the Patent Act, the most important of which are that the invention be novel and not obvious.
Those terms of art, and they also have common meanings. Explain how they are used when it comes to patents.
As you said in law words are not just words, they are often times tools. In the patent context when we say novel we usually mean what that word means in english, which is that they should be new. Generally speaking for an invention to be new it would need to be unknown and not in general use for at least a year prior to the application. The other requirement that I mentioned, obviousness, put in lay person’s terms is pretty close to anticipation, and what it essentially means is that even if the invention itself as a whole is not known or in use it could still still be un-patentable if a person having ordinary skill in the art (in the technical field of the invention) would view it as obvious.
How quick is the process once you submit an application to the USPTO?
That depends on a lot of things. The PTO is often accused of being pretty slow and having a very long backlog of patent applications, so some inventions can be prosecuted for many years. It would hardly ever take you less than one to two years, but when you’re talking about, for instance, biotechnology patents I think the average time from application to the issuance of a patent or a rejection is four-and-a-half-years. In defense of the patent office despite the fact that its an agency that actually makes money for the government it is constantly underfunded and understaffed. And that’s because Congress simply takes what the agency is making and is throwing it into the general budget. The PTO has come up recently with programs that allow applicants to have their applications examined on an expedited process.
..and what are the qualifications of an examiner in the patent office?
When you talk about qualifications of a patent examiner you need to understand that the patent office is not a single entity with a single set of rules. You have a variety of examination divisions based on their area of technology. You have the software division, the biotechnology division, and each of those functions for purposes of recruiting, if I understand correctly (and I’m not an expert on this), as a separate entity almost. So they recruit based on their needs.
…so there’s not a general guy who works at biotech who may examine a software patent application?
Oh you never have the same person looking at all of those. You have to have someone who has a good grip of the particular area that they are examining. You would not see software engineers examining biotechnology patents, or vice versa. All examiners must have technical qualifications. From my experience I don’t think that I ever saw a patent examiner, at least in the pharmaceutical area, who was not a Ph.D. In chemistry, or bio-chemistry, or chemical engineering, etc. I don’t know if that was a requirement in that particular division, but I wouldn’t be surprised if it is.
Going back to the prior art search, you mentioned that the agent will self-report. Do they conduct their own prior art search in the USPTO once they get the application.
..and how does that process work? Is it similar to the process done by the agent?
From what I know I think is pretty similar process. They would use various tools and search engines to educate themselves about the state of the art in the particular invention. In addition the applicant is subject to broad disclosure requirements. So they actually have to disclose to the PTO any prior art that they are aware of that is relevant to the application. And patent agents are subject to an ethical requirement to do so.
So if they don’t disclose and this comes out at trial, will that invalidate the patent?
Absolutely. That would amount to something that is known as inequitable conduct during the patent prosecution, and that might actually not only invalidate the patent itself, well it wont invalidate it, it would make the patent unenforceable (the result is going to be the same), and it might actually sometimes cause what is know as contagious un-enforcabilit. If the patent is a part of a family of patents, then inequitable conduct during the examination of one of these patents may be contagious with respect to the rest of the patent family so that they might be all unenforceable. I believe that this was previously referred to as the nuclear weapon of patent litigation, so patent agents are very weary of that possibility.
After 18 months a filing becomes public, can interested parties submit their own prior art references to the USPTO?
Yes they can starting March 2013. In the past they could on a limited basis, but with a recent reform that passed last year there are a variety of proceedings where interested parties have the opportunity.
How likely is it that a given patent will be approved?
I think it depends on the field. These statistics are available on Patently O for each examining divisions. I think the issuance rates vary dramatically between the divisions. It also depends on the state of the art. If its what’s know as crowded art then patents will be more and more difficult to attain, and they are going to claim very narrowly, or not to use too many terms of art the scope of protection is going to be narrower.
When reading a patent you look to the specification to see what’s claimed. Can you explain this generally?
Patents in their current form have a certain format. We start with an abstract and continue with a specification, and at the end there are always claims. Claims are phrases or sentences that describe what the patentee views as and wishes to protect as his own invention. These claims usually try to define the invention in general and broad terms, and the claims are always read in the context of the entire patent document which is supposed to describe the background to the invention, what problem the inventions is trying to solve, and what is the invention (whats new about it, whats good about it, how it may be used, and sometimes future applications of the invention).
How does this work with design patents?
Design patents, as opposed to utility patents which are what we have discussed up until this point, are somewhat of a different creature. Design patents grant protection for a period of only 14 years [instead of the usual 20] and they cover something which is both functional and also ornamental. So in order to be protected under a design patent an item or product needs to have an ornamental aspect to it, not just a functional aspect.
…and when determining the limitations of a design patent do you look at the drawing? Must a the (potentially infringing product) match the drawing exactly?
As you mentioned design patents must have drawings. And the scope of the protection afforded to design patents is determined by the drawings. So yes you must look at the drawings to determine whether the invention will be protected against an alleged infringing item.
So for infringement of a utility you have to have infringement for all the claims…
No, absolutely not. For infringement of a patent you only need to have infringement of a single claim. Now a claim may be dependent, there may be contingencies, but it still needs to be read as a single claim.
…and for design patents how does that work? Are there claims?
A design patent does not have claims, they have the drawings. Now the process with design patents is different, the comparisons are different. Its a different form of intellectual property.
You can design around pretty much any patent, but there’s also the Doctrine of Equivalents. How do these two concepts coexist?
Its a balancing act. The Doctrine of Equivalents seeks to encompass inventions that are substantially the same as the patented invention so that people wouldn’t be able to make insubstantial changes to an invention and escape the language of the claim. Design around is a term that is used to describe reaching a solution to the same problem or reaching the same desirable result of the invention in a way that is sufficiently different from the patent so as to be considered as going beyond or falling outside the boundaries of the patent claim.
How does patent reform come about?
Usually what you’d have is some new form of technology that is insufficiently protected under patent law. And when I say insufficiently protected what I mean is that Congress is going to come to a conclusion that patent law does not provide sufficient motivation to inventors in that technologic area to do their magic, to invent. So they provide those inventors with a separate regime of protection that is meant to provide a supplement to their incentives to invent, which is really the point of patent law in general. Patent law is a pact between society and inventors: you tell us about the invention, disclose the invention to us, tell us how to use it, give us the technical details and we will give you exclusivity for up to 20 years in that invention so that you can recover your research and development expenses and possibly make a profit to stay in business.
Are there any ongoing discussions about patent law reform?
No. I should not say that there are no discussions going on about new patent reform. You have quite a few very prominent patent practitioners and scholars including, for instance, the former chief justice of the federal circuit (the court that hears the majority of appeals cases that involve patents) saying that the patent reform that was passed last year was a good start, but it was completely insufficient to cure or remedy all the problems that plague the patent system now. Patent reform clearly could use some rounding and/or work; there are elements that will likely require further clarification and supplementation. However, from what I hear Congress is apparently currently fed up with patents, and believes that the previous most serious patent reform took place in 1952, and that maybe we should wait another 60 years before we can get another patent reform [it was over 100 years since it had last been changed when it changed in 1952]. I don’t think it can take that long. I don’t think that it should take that long. I think that with the current rate of paradigm shifts in technology that it should take that long. I cannot recall any currently pending bill that is meant to supplement the patent reform.
How common or uncommon is patent litigation in major industries?
That depends on the industry. In some industries litigation will be very common because the parties are just in the business of suing each other out of business. In some industries litigation is just a part of doing business in that industry, for instance pharmaceuticals. Specifically generic pharmaceuticals. You cannot be in the business of making generic pharmaceuticals without being sued. Some generic pharmaceutical companies say that they are in the business of being sued. And the law when it comes to pharamaceutical law is constructred in such a way.
Do you think a jury can adequately rule in complex patent litigation?
This is the eternal question of patent law, and I shouldn’t presume to answer it with a yes or no. The answer lies in the question itself. There are many disadvantages of allowing a jury to decide patent law especially when it involves technically complicated subject matter. On the other hand the jury system is there for a reason.
Finally, the role of a jury in a patent law case: is it to apply the law as they’ve heard it explained from counsel or is it to go into the deliberation room and teach it to themselves?
I think it really depends on the case and on the technology. Its not unheard of that juries would ask for a clarification, especially on technical matters.
…but its not necessarily required that they do?
I think that would really depend on the case. If they can’t reach a decision based on what they heard from counsel…you’re trying to see if the jury in Apple v. Samsung did the right thing, and I’m going to assure you that there will be books written about that. I don’t consider myself an expert on juries, and juries in patent law for that matter…the foreman for the jury was very straightforward about what he did, and what his jury did in this case. I’ll be waiting to see what the court thinks of it, and what the appeals court thinks of it because I think its pretty much certain that this case will be appealed.
That concludes the interview. Hopefully this provides you with a foundation to understand the issues involved in patent litigation involving Apple, and more importantly, understanding just how complex they are. There is no good guy, there is no bad guy, there’s just companies utilizing a system that has a foundation in the 1400s and one that many other major corporations use in exactly the same manner each and every day.
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