Why Every Engineer Should Learn Patent Law

Why Every Engineer Should Learn Patent Law

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>> We can go ahead and get started. So welcome to this EP Distinguished Speaker Series event. I'm super excited about this, and it's my pleasure to introduce our speaker who is Lawrence Husick.

And his experience as a technology consultant, computer system designer, and software author, as well as his career as an intellectual property lawyer and serial entrepreneur give him a unique perspective. And he currently serves as a Foreign Policy Research Institute Senior Fellow and as co-director of its Wachman Center program on innovation. I hope I pronounced that center name correctly there, Lawrence, but I'm very excited to hear the presentation today and I will let Lawrence take it away. >> Thank you, Austin. I appreciate the introduction and welcome, everyone.

I'm going to share my screen. I do have some slides to share with you. There we go. So the too long, don't read summary of this is that engineers and engineering is a new term, relatively speaking, only came into use in the 19th century. Engineer's practice what patent attorneys and the patent law called useful arts, as opposed to the decorative arts or the aesthetic arts. And engineers work, too, as we all know, address novel problems and needs by employing technology. Patents are supposed to encourage innovation and do so by granting property rights to inventors.

And this is done in exchange, the theory goes, for early and full disclosure of inventions. But patents do a lot more than that. Patents serve a lot of functions. But each of those functions is useful to the working engineer, especially one who knows how the system works.

And in the next few minutes, I'm going to attempt to cover a little bit about the history and how we got to where we are in the patent system. And then the workings of the system, at least sufficient to give you a roadmap so that you will be able to exploit the patent system in your own work. Lastly, I'm going to finish up by talking about career paths in the patent system because they are a really interesting alternative for those who have technical degrees. So let's get started.

In 1787, in a very hot, sticky August Philadelphia afternoon, the drafters of what would become our Constitution were working very hard in what was then the Pennsylvania State House, which was about six blocks from the Delaware River. An inventor named John Fitch invited the delegates, all of whom were white male landowners, who predictably were fairly well-off, to come down to the river during the afternoon to see a demonstration of his new steamboat. His hope, of course, like that of every inventor before and since, was to find investors. He demonstrated this strange steam-paddling canoe.

And the way he demonstrated it convincingly was that he made it go upstream against both tide and current in the Delaware River. He didn't attract any investors that day. But instead, what he did was provide a spark in particular to some of the members of the Continental Congress.

And that spark matured into what we have in our Constitution in Article 1, Section 8, Clause 8, which is known as the patent and copyright clause. Now the patent side of that clause is some very specific wording, and we can ignore for a moment the copyright part of this. Counterintuitively, the word science does not pertain to the patent right, it pertains to the copyright because for Thomas Jefferson and his contemporaries, the word science came from the same root as our word conscience. It meant general knowledge. It did not mean the physical sciences. And so we can read the patent part of the clause as promoting the progress of the useful arts, that is what we call engineering and applied sciences, by securing for limited times to inventors exclusive rights to their discoveries.

And we call that document that secures the exclusive right a patent. Now there was precedent for copyright and patent in the British law before the formation of this clause, but this clause was unique in the world in that for the first time, a constitution document required that a Congress enact laws to protect inventions. Before that, it was the king who granted individual patent rights. Now, patents confer exclusive rights, and literally, an exclusive right is the right to exclude someone else from doing something.

That is if you get a patent, you have the right to keep other people from making, using, selling, offering for sale or otherwise, or importing your invention. But that right is yours, and no one will come along and help you to enforce that right. That is, getting a patent doesn't mean that the government all of a sudden steps in to protect you. You as the patent owner have that responsibility. So a patent is really a hunting license to go to federal court or to an administrative agency in order to enforce your exclusive right against others.

Now there are several theories of why we have patent rights. Those theories have quite a range. The first one is that a patent is an incentive to someone to invent something new. And if you've ever dealt with an inventor or been an inventor yourself, I think you will probably agree with me that this is not a very strong incentive, that you probably are scratching a particular itch when you invent something and you do it anyway, regardless of whether you could get a patent or not.

So that theory is a little bit weak. It may have been stronger in days gone by before we had things like large corporations and venture capital and so forth. But today, I think it's the least of the important theories. The second one is that a patent is an incentive to disclose an invention, and the idea here is that the world is better off if technical knowledge becomes known more quickly rather than later or kept secret and that it become known in full. And the idea here is that the government will trade you a certain period of exclusivity in your invention for that full, and fair, and early disclosure.

That's one of the reasons that patents form a rich technical library and we'll be discussing that in a bit. Another theory is that disclosure should be accelerated as much as possible. And the idea here is that once an invention is disclosed, even though it may be exclusive, it informs other innovators, and this leads to a general overall welfare that would not exist, were it not for the acceleration of disclosure, the timing separate from the disclosure itself. Another one is that patents perform an incentive to commercialize an invention. And this I think is pretty much indisputable.

The idea is that if you can have an exclusive right, this provides your investors the ability to coalesce capital around an advance in technology, and that capital can be used to go to market, to perfect the invention, to market the invention, to produce the invention. This is covered very well in Rosen's book the most important idea in the world, which discusses the history of the Watt's steam engine. The Watt's steam engine was a very advanced steam engine, but the real secret was that the British patent system provided James Watt with an ability to gain investment capital behind his idea. And that did not exist in other places where steam engines had been tried.

And finally, patents provide for the creation of markets for intellectual property. That is, intellectual property, the patent right can be bought, it can be sold, and it can be, in effect, rented or licensed, and that this creates an economic engine in and of itself. Now, all of these theories are all overlaid on the subject matter of what may be patented. And Congress defined what may be patented in the patent statute 35 United States Code Section 101 in 1952.

You can read the quotation from the statute there. This quotation is generally taken to mean that anything that man invents or people invent under the sun can be patented. In addition to this, anything under the Sun idea, Congress also provided that the important thing is the invention and not how the invention comes to exist. Patentability is not negative, that is not degraded by the manner in which the invention is made. So there's a whole class of some of my favorite inventions which are accidental in nature. And among those are synthetic indigo, which is the result of a laboratory experiment gone bad.

The breaking of a thermometer. The microwave oven, which resulted from the accidental melting of a Hershey's chocolate bar in the pocket of a technician working on a radar installation, which is why the very first microwave ovens from a man were known as the radar range. Post-it notes, where a 3M chemist was assigned to make a super sticky glue and instead failed and made a glue that is barely sticky. One of his colleagues used that glue, put it on some small pieces of paper to have bookmarks that would not fall out of his Sunday hymnal. The result is that in the United States today we use over 13 trillion post-it notes per year.

We probably all know the story of penicillin and have experienced it for ourselves opening-up that bottom drawer in the refrigerator and finding a bunch of blue fuzzy stuff on your bread. Valium is the result of some dirty beakers in a laboratory in New Jersey where when the chemists went to clean out the closet, they did what chemists at drug companies like to do rather than simply clean up the flasks, they took the white crystals in the bottom of the flask, fed it to the rats, who became pretty happy and fell over and that became Valium once they had figured out what was in the bottom. X-rays of course, with Rankin and the original images of his hand. Viagra, which started out as a heart medication. PlayDoh, which originally was a cleaning material used to clean soot off walls when we heated and cooked with coal in our homes. Once coal became a fuel that was no longer in fashion, the company that made PlayDoh had to figure out what to do with its product.

And there you have it, it became a toy. Silly Putty was simply silicone oil with some additives, mostly boron. Teflon was a failed experiment, aspartame similarly, LSD similarly, and insulin.

And my favorite accidental invention, saccharin. Saccharin was accidentally discovered at Johns Hopkins by Remsen and Fahlberg in 1878. They were working on oxidation materials of coal tar, and Fahlberg recorded in his journal, I had discovered some coal tar substance, which out-sugared sugar. I dropped my dinner and ran back to the laboratory. There in my excitement, I tasted the contents of every beaker and evaporating dish on the table, luckily for me, none contained any corrosive or poisonous liquid. Let this be a lesson to all of our chem undergraduates.

This is not the way to make a discovery. Remsen, it turns out, in my researchers was the founder of our engineering school, the second President of Hopkins. But Fahlberg went on after his postdoc at Hopkins, obtained patents internationally on this compound, manufactured it, and became really very rich for his time. It's still with us in the form of Sweden law, the pink stuff. So you might ask, okay, I understand what the law says, but what's really patentable? How do I know if something is patentable? Well, there are a few qualifications for something to be patentable. The first is, that the invention must be a composition of matter, a method, or a process.

But, and this is a big but, the court say, you can't patent a law of nature, a mathematical algorithm, or an abstract idea. More on that later. The second qualification is that the invention must either be useful in order to obtain a utility patent, or it must be decorative and aesthetic if you want a design patent. Now, these are two distinct types of patents.

Neither is more important than the other and the best way to demonstrate that is, that utility patents have been issued on things like the telegraph and the telephone, and so forth. But an aesthetic or design patent was issued on the rectangular shape of the iPhone and this has dominated the market since 2007 and come to be the most important single aspect of that device. Now an invention to be patentable has to be novel, which is the fancy word for new. No one can have done it before.

But in addition to being new, it has to be what the law calls unobvious. Now that's a very complicated way of saying that it has to be some way inventive. Courts have had a very hard time defining this. And generally what they turn to is a hypothetically constructed person having ordinary skill in the art. Now that is not a particular person and it's not an expert. The courts define someone by nature of education and experience and then ask the hypothetical question, would this person have thought that the advance that's being patented would have been obvious that is just a combination of what went before? The number of court opinions on this question alone range into the hundreds of thousands and cover the walls of legal libraries.

It is perhaps one of the most difficult questions in patent law. And then, provided that you've satisfied these criteria, there are formalities to be observed. Of course, this is a government program run by a fairly large government agency, the United States Patent and Trademark Office. So it would be necessary to pay appropriate fees for filing and examination, and publication.

The application for patent is not a form that one fills out. Rather, it's much more like a technical paper or specification because the application for patent must fully disclose the invention so as to allow that person of ordinary skill to make and use the invention. Finally, the invention is defined at the end of the application by a set of patent claims. And those claims are very specialized structured sentences that function in many ways, like the metes and bounds description of a property in a property deed. They define the boundaries of the invention and that allows us to say whether someone has violated the exclusive right, by trespassing across the boundary of the invention, something that we call infringement.

Now as I said, the Supreme Court has now said that despite the anything under the Sun language of 35 United States code 101 that you read, there are some things that just can't be patented. So the court has engaged in what we call judge-made exceptions. The first two are that the court says you cannot patent a law of nature or a physical phenomenon.

Those existed before. So the theory goes, and therefore, what you are trying to patent was known before or knowable, and therefore not new. Laws of nature are things like the relationships that govern metabolism and so forth. And in fact, the quotation that you have on your screen is from the case of Mayo versus Prometheus. And that was a case that dealt with knowing how to provide a dosage of a particular medication in light of a particular person's metabolism and ability to metabolize the drug. What the court said is that's not an invention, that's a law of nature and a physical phenomenon.

No patent is available. Now, separately from that, the courts have also said that one cannot patent an abstract idea. The difficulty with that is that in the decision in 2014 that set out this exception made by the judges, Justice Thomas refused to define what an abstract idea meant. And the quote that you see here, in any event, we need not labor to delimit the precise contours of the abstract ideas category has bedeviled patent lawyers ever since. How do you know that an idea is abstract? Well, at the bottom line, one has to take it to the court and ask a judge whether that judge thinks that the idea is abstract or not.

It's a very difficult thing and it's currently under consideration for revision in Congress. So if you know that your invention is patentable, that is you've climbed over those criteria, what does the process of getting a patent look like? In most cases, you will be inventing something either in the context of your employment or on your own, but you will have some decisions to make about whether to proceed with the application for patents. And I should mention here that patents are uniquely national in scope.

So if you want to protect an invention in the United States you apply for a US patent, but then if you want to protect that invention in some other country, you have to also apply in that country. Now there are a couple of exceptions to that. There are some regional patent offices in which one can apply in several countries at once and there are a couple of treaties that govern the filing sequence for these patents. But the general rule is that if you want to protect an invention somewhere, you have to apply for a patent separately there. What I'm about to discuss pertains mostly to the United States.

So the first step will be to prepare what is called an invention disclosure document. An invention disclosure is just that. It's a document that talks about your invention. And generally, it describes what the invention is and how it works. It then discusses why you would invent this and perhaps describes the problem you are trying to solve and possibly even the other ways in which other people try to solve the same problem. And then you'll probably talk about the advantages of the way that you've solved the problem.

That will be in turn handed off usually to your patent attorney or to the intellectual property department or responsible officers within your organization. And the first step that will be taken is the search for what is called prior art. Now remember that you are practicing as an engineer the useful arts, and so the prior art is all of the technology that came before your invention. The purpose here in doing a search for prior art is of course to answer the question, is this novel and is it unobvious? And generally, a collection of older technology references, both patent and non-patent, will be revealed from that search and then evaluated to answer those questions.

Is it novel and is it unobvious? Now, a subsidiary question will be adressed as well usually and that is, is it valuable? Is it worth investing time and money in getting a patent in order to protect this? Usually, that involves some market research as well. If the process of evaluation comes back positive, then the next step will be to draft an application for patent. And as I said, that application is not a paper form. It is more in the nature of a scientific paper or engineering specification, because its objective is to teach that person of ordinary skill how to make and use the invention.

Now notice that teaching someone how to make and use the invention doesn't necessarily involve teaching how the invention actually works. That is a mechanism of action. It's sufficient to be able to replicate the invention without understanding what's going on scientifically. The application as I said must also include one or more claims and those claims have to be drafted to define the invention.

And they also by defining the invention, define what is outside the scope of the invention. That application will then be filed in the patent office. And once it is filed it will be assigned to a patent examiner, and patent examiners are people who have particular technical training in a narrow field of technology to which your invention pertains as well as training in the patent law. The patent examiner's job is to make sure that your invention is novel and not obvious, that you have in fact disclosed it in the right manner and that you are claiming that which you are entitled to and no more.

And this means that the examiner will generally reject the first application, and then you will go back and forth amending the application until you have negotiated to a position where the examiner believes you have a proper right to a patent. There are methods of appealing the decisions of examiners, and those appeals can go through the patent office and then out to the federal courts as well, but eventually in many cases you will reach that agreement, you will be entitled to a patent, the patent examiner will give you a notice of allowance and upon a payment of a fee, your patent will issue. And at that point, your patent becomes enforceable. You now have an exclusive right. Now, that's not all that goes on in the patent office because when your patent issues and you get that patent document which by the way, is now a PDF and not printed on paper like it used to be.

Once you get that document, then any member of the public may challenge your patent in the patent office through a series of post-grand challenges, where they try to convince the patent office that it has made a mistake by granting you a patent. And there are certain limited grounds on which those challenges go forward, but the most important of those is the statement that the patent office missed an important piece of prior art. And that by missing that, they have mischaracterized your invention as being either novel or non-obvious or both. And had they known about this prior art, they would not have given you the patent.

Those challenges can take 18-36 months. If you survive, you still have your patent. But during the course of those challenges, your patent may be invalidated or limited in some way. Assuming that you still have a patent after those challenges, you then move into a period of enforcement or doing transactions related to your new patent. Enforcement means that you have the right to exclude others from doing those things like making and using and selling and importing your invention.

And you can show them your patent, if they agree, that's fine. They will stop doing what they're doing. And many times they don't agree and that means that you will then go to federal court to enforce your rights against that patent infringer. Transactions may be that you would license your patent to someone else so that, that other person may legally do those things, the making and using and selling and importing and so forth. And you may choose to do that exclusively or non-exclusively. Your patent will generally last 20 years from the date on which you first filed your patent application.

Although, there are certain exceptions to that that can extend the period if the patent office took a great deal of time in examining your patent. And so that's the process that you go through. As you can see it's a long and drawn-out process. And in general, in many high technologies, the 20-year period is way too long, but in some fundamental technologies and in the pharmaceutical field it's generally considered not long enough. So Congress has tried to thread the needle there by setting that term.

That term, by the way, is also set under international treaty agreements. Almost all countries in the world use that 20-year term. Now, understanding what you have to do, what that process is, you should also understand that there are some things that you should not do before filing a patent application. That's because either in the United States or in foreign countries, doing some of these things could cause you to lose your right to apply for a patent. The first one is that you should not disclose your invention to a third party, that is someone not in your organization and under an obligation of confidentiality without a written non-disclosure agreement. That is an important qualification.

Here in the United States, that is not as important as in the rest of the world because in the rest of the world, the mere disclosure or divulgation of an invention means that you forfeit your right to apply for patent forever. In the United States, you have a little bit of time, but it is still safest to have a non-disclosure agreement. Obviously, if you should not disclose your invention, you also should not publish your invention before you have applied for a patent. You should not use it or demonstrate it in public, because that could be a disclosure or a publication. You shouldn't offer to sell or actually sell the invention. Those are also activities that can cause the invalidation of a patent or the forfeiture of the right to have a patent in the first place.

And so the watchword that patent attorneys use is early file often. If you think you have an invention that is worthy, that is valuable, take the steps that are necessary to do the research to find out, is this patentable, and if so file the application before undertaking any of these activities. Now, I'm often asked, do I really need a patent attorney? Why? Patent attorneys are expensive? And the answer to that, that I would give is the patent system is a very complex institution because the patent system is made up of the statutes, the laws passed by Congress, the regulations in 37 code of federal regulations that are promulgated by the patent office itself. A series of administrative rulings from the patent trial and appeal board that further define the law. Judicial opinions of courts, both Courts of Appeal and the Supreme Court.

And a number of traditions or unwritten laws about how things work and how things are worded. And this requires some pretty intensive study to master all of this and how it fits together. Add to that the fact that each component of this system is in a constant state of change.

Congress has constantly tinkering with the laws. The regulations are constantly being changed by the patent office. There are new rulings and judicial opinions that come down every single week. As an example, even the word the article "a" may not mean what you think it means when it's used in a patent claim.

A case that was decided in the last two weeks changed the meaning that is ascribed to the article a, when the patent claimed a microprocessor. And the question was, did that mean only one? Or did that mean there might be more than one? The courts completely turn that one on their head. [BACKGROUND] So the problem is that making an error in any of these things may cost a great deal of money and may cost years of lost effort.

And that is why having a patent attorney or agent to guide the activity is important. So then I'm asked, what is a patent attorney or patent agent? What's so special? Or in the words of a former law partner of mine, you're an intellectual property lawyer. What makes you so smart? And the answer is, maybe not smart, but maybe having some qualifications that are not usual for lawyers.

And the first is that you must have a bachelor, master, or PhD in a recognized scientific or engineering subject, or the ability to prove equivalent coursework. If you have that or can prove that experience to the patent office, you are allowed to sit for the registration examination, which is called the agent's exam. The agent's exam is generally thought to be one of the toughest professional exams in the world. It's 6 hours long. It is 100 questions about the patent laws, rules, and procedures that is intended to demonstrate that you understand this complex mixture that makes up the patent system.

And historically, the pass rate for this exam is about 50%. You are allowed to take it multiple times within reason. Now, if you have a Juris Doctor degree, a law degree, and you pass the agents exam, you become a registered patent attorney. If you don't have a law degree and you pass it, you become a Patent Agent.

And the difference there is that patent attorneys may appear before the patent office in representing their clients, but they may also go to court to represent their clients. While patent agents may only appear before the patent office. And when it comes time to go to court, you'll have to have an attorney to do that. Now the career path for patent attorneys and patent agents is a pretty wide open one. Presently, there are 13,338 active US patent agents and 36,891 active US patent attorneys. That's out of a total of 1.3

million attorneys in the United States. A staggering number, I can't believe we have that many lawyers and sometimes think it's not real healthy that we do. But patent lawyers and patent agents work in law firms, both in general firms that have a department that deals with intellectual property, and boutique firms that only deal with intellectual property, such as the firm that I'm part of. They work in corporate law departments.

They work in universities and in research laboratories. They work for the government and for the military, including at the patent office itself. And they also work for non-profits and non-governmental organizations. Though, the world is really wide open in terms of where patent attorneys can work.

But bear in mind that just because you're a patent attorney doesn't mean that you can't do other legal work as well. So it's a very open field. I'm often asked, what is my job description? How did I get here? And this is a little bit of the highlights of what I have done. I have been in private practice in law firms ranging in size from one myself to 185 lawyers. That was a general firm in which we had five intellectual property lawyers.

I've represented individuals, startup companies, established companies up to Fortune 500 size, universities, and non-profits. I've drafted and prosecuted patents both in the United States and overseas. I've registered trademarks for clients. I've registered copyrights and worked on other types of intellectual property matters. I've litigated cases from the trial level all the way to the Supreme Court. I've been in-house counsel that is worked at corporations, not for law firm, been Pro Bono Counsel to both charitable foundations and a museum.

And I am now Counsel to the American Helicopter Museum and Education Center here in Pennsylvania. I've been part of the founding team at 13 startup companies. And I've taught at both the University of Pennsylvania and Hopkins. All with the bag of tricks that comes from being a patent attorney. People ask me to describe why I like being a patent attorney and my answer is pretty simple.

My job involves working with people at the cutting edge of their particular field. They have to teach me everything about the most important advance that is going on with them right now, their latest invention. And I have to be a quick study in order to learn things that I never learned in school.

And they pay me to do this. So it's like getting a new graduate degree every couple of weeks. And if you like tinkering with technology, if you like new toys, I can't think of a better job. In terms of what technologies I've had the pleasure to work on, this is just a very short list, probably less than 20% of what I've dealt with.

But it has ranged from hydraulic systems to semiconductor design, to colorization of movies, new chemical compositions, working with leeches in order to extract anticoagulants from their salivary glands. Software systems, artificial intelligence, environmental inventions, computing, you name it. I've gotten a chance to work on it and work with some of the smartest people in the field. So with that, I will welcome your questions and hope to have a great discussion. Hope to fill in some of the blanks. >> Thank you so much, Lawrence.

What a fascinating talk. I really appreciate it. And I feel you have the absolute best career trajectory for attending a networking event or a cocktail party, you must have so much experience to just share with folks. I really appreciate your time today.

And we have a couple of questions already in the Q&A. The first one is, if you file a patent for x plastic, can you file a patent under a specific claim or use? For example, there's currently a patent for x plastic use the aircraft industry, can I file a specific claim for x plastic use in the automobile industry? >> The answer to that is that in order to have a claim that is specific to a given use, you have to convince the patent office that, that use results in some unexpected or surprising quality that would not have been anticipated in either the general capabilities and characteristics of the material or in its use in a particular other field. >> That's a lot of sense. Thank you.

And I should say too, if anyone wants to ask their question verbally, just raise your hand in Zoom and I'll allow you to unmute and ask your question. Another question here. Once the patent is published, it becomes public knowledge and other entities can start trying to circumvent the patent.

Have you seen this in your experience? >> Yes. Under present United States law and most international law, your patent application is published 18 months after it is filed. And as you can tell from the timeline that I laid out, you're not going to have an issued patent or even a Notice of allowance in almost all cases in that 18-month period. And so others can begin trying to work to circumvent. One of the jobs of your patent attorney is to format your claim toward your claim in such a way that it is broad enough to cover any such circumvention attempts. So you will work iteratively with your patent attorney who will say, what about this element? Are there more generic ways to state this particular element? Is there perhaps a way of stating the chemical structure where you can have a broad range of radicals that is substituted in this position in the molecule? So that's simply changing one atom in the molecule does not avoid the claim.

If you have a mechanical element, you may discuss that mechanical element in broader terms in order to do what we call a picket fence, the invention that is, you may have a structure in the middle of your piece of land. It may have walls, but the patent attorney's job is to expand out a little bit from that and establish a picket fence to give you that defendable zone around it. >> Thank you. Another question we had was about code, and whether code can be patented. And then as a follow-up, what the role of patents can be in dealing with open-source software. >> Excellent question. As you saw,

you are allowed to patent processes or methods. However, almost all code that has been patented falls into that undefinable realm of what is abstract. And at this point, what the courts have come down to say is, that code which improves the function of a computer itself, will be allowed for patent. But that code which implements business systems or merely provides some useful function without reference to the way the computer actually works is going to be called abstract. Now, I will tell you that there are senators and congressmen who are actively considering legislation that will overturn the decisions that led to that standard of abstractness. And I don't know if that will go through.

If it does, we will be back to the way we were before 2014 when most code was evaluated for the question, is it novel and unobvious? And there are a great many things that are both novel and unobvious that are implemented in code. I come from the school that says that anything that can be implemented in code can also equivalently be implemented in hardware. And if you could implement it in hardware and get a patent on it, there is no reason in my mind, and this is my view and I don't have a judge's role or gavel, but my view is that if you could implement it in hardware as well as in software, just because you chose the cheaper and more efficient way of doing it in software, is no reason to forfeit a patent.

>> Right. Makes sense. And I wonder too, if sometimes the legal arguments where it comes down to semantics. The idea of abstraction, for instance, and it seems quite a subjective thing to define.

>> It is and we often find ourselves lamenting the fact that of the nine Supreme Court Justices, none of them who have a degree in science or technology. And in fact, to my knowledge, only one took any substantial coursework in either a hard science or a related technology field. And so we have people who are making decisions where they could really use some specialized knowledge and some help. The law permits them to ask for that help in the form of court-appointed experts, which the Supreme Court almost never does, and which lower courts rarely do. >> Interesting. I wonder how one becomes

such a consultant for judges in that way. We had another question. What's the issue with public display of an invention? Why would that invalidate the patent claim? >> Well, specifically, because the law provides that. The law has specific exclusions that if something has been in public use or disclosed for a period of time, and there are some time limits associated with this, at least in the United States, then one may not apply for a patent if one has exceeded those time limits.

Those are just hard and fast. Those are what we call bars to patentability. And they are written into the law because, recall, one of the things that the patent law is supposed to do is encourage early disclosure.

>> Makes sense. This is an interesting question, could derivative works from AI generated tools like ChatGPT potentially be patented? >> There is currently a battle going on in the courts about whether an inventor may be non-human. It is well-settled in the copyright world that an author must be human. And there is, in fact, a famous case from a number of years ago where an ape took a photograph that was widely distributed. The ape stole the camera from the photographer and snapped the picture.

And the question was, who is the author of the photograph? And the answer is, for copyright purposes, no one. Because an ape is not eligible to be an author. There's currently a case that is a test case from an Australian inventor who specifically put in a patent claim, which he says was invented by his AI. The AI has a name.

I think the name of the AI is DABUS, D-A-B-U-S. And the courts so far, the patent office first said, no dice. Inventors are human. And the courts have agreed with the patent office, but this case may go further. This case may end up in the Supreme Court.

The question is when the patent law says that an inventor is an individual, and only people be individuals. And you are right, it's all semantics. >> Yeah. That sounds like a really interesting case.

I'll have to look that up. We have a follow-up question about computers and software. This person is asking how you can "reference how the computer works". Do you have to describe how the chips work, for instance, or what are the ways you could articulate that? >> Recall that the patent document is supposed to inform one of ordinary skill in the art. And one of ordinary skill in the art who would, for instance, purchase a particular type of computer, might know in general how the computer functions and how the operating system interacts with the hardware, but might not know at the gate-level how that hardware works, and might not have to know that. The disclosure is always with reference to the person of ordinary skill in the art.

That also, by the way, informs how we do our patent searching. Recall that after the patent expires, the material in the patent becomes public domain that is free for everyone to use. So the patents, the file of expired patents, and there are now more than 11 million United States patents alone, most of which have expired. That file is a tremendous engineering resource and underexploited one. I always recommend that my clients use the results of my patent searches because they may be solving a novel problem. But just because the problem is novel doesn't mean that some particular technique or advanced that was available 20 years ago might not be the right technological solution today.

In fact, I'm working on a system right now where one of the advances in this particular AI implementation is that we are using an expert system technology that was prevalent during the 1980s coupled with a machine learning system. And so sometimes the old technologies are still valuable, and a great place to find them is these patent documents. >> Yeah, makes sense. We have

time probably for one more question here. How about if it's a prototype that was used once to attract investors? In that case, how long would you have until you can not file a patent anymore? >> That case depends upon whether you had in place non-disclosure agreements, and also the degree to which the invention could be discerned and understood from the prototype, versus from any description of it. So for instance, I could have a prototype where it was essentially a black box where there were some material inputs and a finished product came out the backside, but nobody could see inside the thing and know exactly how it was functioning. In that case, as long as I was not offering the invention to the investors, I was merely saying, I want you to invest money in the company, that might not ever be considered to be a disclosure of the invention.

On the other hand, if to one of ordinary skill in the art, it was obvious what was going on inside that box just by looking at the inputs and outputs, that might be an invalidating public use. And so this is another reason why having a skilled patent attorney at your side who can say, do this, don't do that, and please have these agreements signed before you go try, is an important protection. >> Certainly seems like an advisable move to employ someone very familiar with this so they can navigate it or help you navigate it. >> This is a trap for the unwary at every turn.

And so as with anything that complicated, I often tell people if you needed open heart surgery, you probably wouldn't want to go do it yourself. Patents are very similar. >> Absolutely. Well, thank

you Lawrence so much. It's been a pleasure to listen to this talk and thank you for your thoughtful answers to these questions. The recording will be available on the EP website soon, so we'll get that up for anyone who wants to revisit. But thank you so much, Lawrence, for your time, and thanks to all of our attendees.

Appreciate it and look out for more of these Distinguished Speaker Series talks coming up. Have a good day, everybody.

2023-05-17 03:59

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