Last week’s column was the first of two columns discussing some of the most common misconceptions or myths about patents.  Here is the second part, starting with number five on my list.

5.            A Patent Does Not Give the Patent Owner the Right to Practice the Invention.

Inventors and patent owners often assume that a patent gives them rights to practice the patented invention, i.e., freedom from infringement.  Not true.

A patent is a grant to its owner of the right to exclude others from making, using, offering to sell, and selling the patented invention in the United States, or importing the invention into the United States.  These rights are called exclusionary rights.  A patent does not provide its owner with the rights to do these things.  An invention may be patentable but still infringe another person’s patent.  In such a case, the patent owner may have a patent on the invention but cannot make or use the invention unless they obtain a license from the owner of the patent that is infringed.

6.            Patents Do Not Infringe Other Patents.

A patent cannot infringe another patent.  Only a machine, article of manufacture, composition of matter, or process can infringe a patent.

As stated above, a patent gives its owner the right to exclude others from making, using, offering to sell, selling, or importing the patented invention.  The patent is infringed if any of these acts are committed in the United States without the patent owner’s permission.  Thus, there is no infringement unless someone makes, uses, offers to sell, or sells the invention in the United States, or imports the invention into the United States.  An invention described in a patent may infringe another patent, but only if it is made, used, offered for sale, sold, or imported in the United States.  The patent itself is not an act of infringement.

7.            Patentability and Patent Infringement are Not the Same Thing.

Inventors often think that if their invention is patentable, then it cannot infringe other patents.  Not so.  Patentability and patent infringement are two different things.  An invention may be both patentable and infringe an existing patent.  In both cases, the starting point of the analysis is the claims.

To determine if an invention is patentable, the invention, as it is claimed, is compared to what is known in the field (the prior art).  In general, prior art includes written documents (such as other patents, published articles, catalogs, and websites), as well as actions by the inventor and third parties, that exist before the patent application is filed.

The first requirement of patentability is that the claims must be novel (new or different) over the prior art.  The test for novelty is performed by looking at each element of the invention as claimed. If all of the elements of the claimed invention are present in a single prior art reference, then the invention is not novel and is said to be anticipated by the prior art.  The invention is not patentable.

The second requirement of patentability is that the claims must be nonobvious over the prior art.  The invention is obvious if the differences between the invention and the prior art are such that the invention, as a whole, would have been obvious at the time it was made to a person with ordinary skill in the art.  Unlike the test for novelty, the test for obviousness is not limited to a single prior art reference – any number of references can be combined to render an invention obvious.  For obviousness to be found, every element of the claimed invention must be present or suggested in the prior art, although not necessarily in the same reference.

To determine if an invention infringes an existing, in force (not expired) patent, the claims of the patent in question are compared to the invention (in a patent infringement action, the district court first interprets or construes the claims to determine their meaning and scope).  If each element of a claim is present in the invention (literally, or in some cases, by an equivalent), that claim is infringed.  Only one claim need be infringed for the patent to be infringed.

Thus, although it sounds counter-intuitive, an invention can be patentable over a prior art patent and, at the same time, infringe the same patent.

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts.  Patents themselves are sometimes almost unintelligible and, if intelligible, may require many hours of reading to understand.  It is no wonder that there are a lot of misconceptions or myths about patents.

 

This is the first of two columns in which I will discuss a few of the most common aspects of patent law that are misunderstood.

 

1.       Ideas Are Not Patentable.

Clients often want to patent an idea.  Ideas are not patentable – inventions are patentable. Continue Reading Patent Myths Corrected – Part One

By: Audrey A. Millemann

Over the last 15 years, the United States Patent and Trademark Office has issued many business method patents.  Many of these patents seem overly broad or obvious, and the tech industry has been strongly critical of the PTO for issuing these patents.

Congress has been listening.  Under a new program enacted as part of the America Invents Act (“AIA”), business method patents can be challenged in a specific procedure in the PTO.  The program, called the “Transitional Program for Covered Business Method Patents” and referred to as CBM Review, is set forth in section 18 of the AIA.  CBM Review went into effect in September 2012 and has a sunset provision of September 2020.

Under the CBM Review program, a defendant accused of infringement of a patent covering a business method may challenge the validity of the patent in the PTO.  CBM Review is conducted before a new administrative law board, the Patent Trial and Appeal Board (“PTAB”).     Section 18 (d)(i) of the AIA defines a covered business method to be a method or apparatus directed to data processing or other activities used in financial products or services.  The statute excludes patents covering “technological inventions,” which the PTO has defined as inventions that solve a technical problem using a technical solution.

The purpose of CBM Review is to provide a quick and less costly alternative to federal court litigation for determining the validity of business methods patents.  Under the CBM Review program, a patent may be challenged as invalid on any number of grounds, including that the claims are directed to unpatentable subject matter under 35 U.S.C. section 101, in particular, abstract ideas.  Business method patents can also be challenged on the basis or prior art.  Continue Reading Challenging Business Method Patents

The U.S. District Court for the Central District of California handed a big victory to Warner Bros. when it ruled that Gotham Garage violated Warner Bros.’ intellectual property rights in the iconic Batmobile.  There was a question whether Warner Bros.’ rights in the Batman franchise would prohibit the production of an automobile designed like the Batmobile since the Copyright Act does not protect automobile designs.  The Court found that the Batmobile was a protectable character of the Batman franchise and the replicas manufactured by defendant were infringing derivative works.

Gotham Garage manufactured and produced custom cars modeled after vehicles found in various television shows and movies. It had been producing and selling replica vehicles based on the 1966 and 1989 Batmobiles. Gotham Garage also manufactured automobile parts featuring the Batman trademarks and did business in a manner utilizing various Batman trademarks. Warner Bros. filed a lawsuit In May 2011 alleging that Gotham Garage infringed the copyrighted versions of the 1966 and 1989 Batmobile and infringed various Batman trademarks in the marketing and selling of its custom vehicles.

The court made easy work of the trademark claims. The Court noted that Gotham Garage did not contest Warner Bros.’ trademark claims, and did not dispute that it manufactured and distributed parts and accessories featuring the Batman trademarks and used the Batman trademarks in connection with the operation of its business.  The Court found that Gotham Garage’s use of the Batman trademarks caused a likelihood of confusion; that consumers were likely to be confused as to the source of the products.  The defendant admitted that “most of his potential customers ask if he had a relationship with Warner Bros. or was licensed by Warner Bros.”   The Court found that this initial interest and confusion impermissively capitalizes on the goodwill associated with the Batman trademarks. Continue Reading Holy Lawsuit Batman

Most law students learn early in law school the old maxim: “Bad facts make bad law.” A recent Ninth Circuit case, Garcia v. Google, Inc., seems certain to test this propositionwith its incredibly sympathetic facts.

Ms. Garcia, an aspiring actress, was paid approximately $500 to appear in a minor role that she believed to be an Arabian adventure movie titled, “Desert Warrier.” Instead, a clip of her performance was used in an anti-Islamic film titled, “Innocence of Muslims,” which was posted to YouTube. (Google is the owner of YouTube.) Not only was her performance included in this movie, but her lines had been “dubbed over” so that the line audiences heard her say was “Is your Mohammed a child molester?” The film and this line provoked anger worldwide and an Egyptian cleric issued a fatwa calling for the killing of everyone involved with the film. Shortly thereafter, Ms. Garcia began receiving death threats.

Continue Reading A Bit Part, A Fatwa and Copyright Infringement