Donch Jr. John C. - Intellectual Property in Consumer Electronics, Software and Technology Startups
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Part I Overview of Intellectual Property Rights -- Patents -- Trade Secret Protection -- Trademarks and Trade Dress -- Copyrights -- Domain Names -- Intellectual Property Issues in Labeling and Marketing -- Part II Implementing Intellectual Property Practices, Procedures and Strategies -- Seven Basic Steps to Getting Started -- Deciding Between Patent or Trade Secret Protection -- Intellectual Property Strategies for Software: Patent and Copyright Protection -- Developing and Managing an Intellectual Property Portfolio -- Part III Monetization of Intellectual Property Portfolios -- Intellectual Property Portfolio Acquisition.;This book provides a comprehensive guide to procuring, utilizing and monetizing intellectual property rights, tailored for readers in the high-tech consumer electronics and software industries, as well as technology startups. Numerous, real examples, case studies and scenarios are incorporated throughout the book to illustrate the topics discussed. Readers will learn what to consider throughout the various creative phases of a products lifespan from initial research and development initiatives through post-production. Readers will gain an understanding of the intellectual property protections afforded to U.S. corporations, methods to pro-actively reduce potential problems, and guidelines for future considerations to reduce legal spending, prevent IP theft, and allow for greater profitability from corporate innovation and inventiveness. Offers a comprehensive guide to intellectual property for readers in high-tech consumer electronics, software and technology startups; Uses real case studies to illustrate concepts covered; Discusses most recent changes to the U.S. patent laws, such as the America Invents Act; Describes specifics of protections offered, as well as benefits and shortcomings of each type; Provides guidance on IP implementation, procedures for protecting IP and which types of protections are necessary.
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Part 1
Overview of Intellectual Property Rights
Overview of Intellectual Property Rights
Gerald B. Halt, Jr. , John C. Donch, Jr. , Amber R. Stiles and Robert Fesnak Intellectual Property in Consumer Electronics, Software and Technology Startups 2014 10.1007/978-1-4614-7912-3 Springer Science+Business Media New York 2014
Gerald B. Halt, Jr. , John C. Donch, Jr. , Amber R. Stiles and Robert Fesnak Intellectual Property in Consumer Electronics, Software and Technology Startups 2014 10.1007/978-1-4614-7912-3_1 Springer Science+Business Media New York 2014
1. Patents
Gerald B. Halt Jr. 1
(1)
Volpe and Koenig, P.C., 30 S. 17th Street, Suite 1800, United Plaza, Philadelphia, 19103, USA
(2)
Fesnak and Associates, LLP, 1777 Sentry Parkway West, Dublin Hall, Suite 300, Blue Bell, PA 19422, USA
Gerald B. Halt Jr. (Corresponding author)
Email:
Robert Fesnak
Email:
John C. Donch
Email:
Amber R. Stiles
Email:
Abstract
A U.S. Patent is a contract between the United States and the inventor(s) in which the owner is granted a limited monopoly to exclude others from making, using, selling, offering for sale, or importing a patented invention into the United States during the term of the patent. In exchange for these exclusive rights, the inventor is required to disclose the full and complete details of the invention to the public. The theory behind the patent system is that if the public has access to complete inventive disclosures, it will develop new and better ways of solving the same problems.
1.1 Why Apply for a Patent and How Will it Help my Business?
Congress shall have power 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.
United States Constitution, Article I, Sect. 8.
A U.S. Patent is a contract between the United States and the inventor(s) in which the owner is granted a limited monopoly to exclude others from making, using, selling, offering for sale, or importing a patented invention into the United States during the term of the patent. In exchange for these exclusive rights, the inventor is required to disclose the full and complete details of the invention to the public. The theory behind the patent system is that if the public has access to complete inventive disclosures, it will develop new and better ways of solving the same problems.
The patent monopoly has some limitations. A patent does not give an owner the right to make, use, or sell an invention. For example, a patent owner can be prevented from selling its patented invention if a competitors earlier patent covers some part of the patented invention. Further, a U.S. Patent is not enforceable outside the United States; each country offers its own patent protections within its borders.
The patent right to exclude others from making, using, selling, offering for sale, or importing the patented invention creates barriers for competitors to enter the market. Such barriers often facilitate licensing arrangements where some of the patent rights can be separated in licensing arrangements. For example, a company can grant a license to one company to make a patented invention, while granting a second license to a second company to use or sell the patented invention. Developing a strong portfolio of patent rights (i.e. barriers to entry) can be attractive to investors or may create new business opportunities by reducing the risks of competition.
Example : Apple holds patents on much of the technology incorporated inside of its iPad and iPhone products. However, the centerpiece for each of these devices lies in the core processor. For many years Apple has licensed the technology for the core processor chip from ARM Holdings. ARM is an IP holding company that focuses on semiconductor technology. The chip that is used in iPad 2 and the iPhone 4S is based on ARMs dual-core ARM Cortex-A9 MPCore central processing unit and a dual core PowerVR SGX543MP2 graphics processing unit.
While Apple has the right to exclude others from making, using, selling, offering for sale, or importing iPads and iPhones within the scope of Apples patent rights, Apple in turn needs a license from ARM to use ARMs processors in Apple products. If Apple were to obtain the core processor from another source for use in new models of the iPad or iPhone, Apple will want assurances from its vender that the new processors are covered by an appropriate license.
1.2 Patentability Requirements
In order for something to be patentable, it must be: (1) patentable subject matter; (2) useful; (3) novel; and (4) non-obvious.
1.2.1 Patentable Subject Matter
Pursuant to the patent statute, [w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
A process is a way to produce a result. For example, a process may consist of mixing certain ceramic elements at a particular pressure and temperature to create a new ceramic composite. Not all processes are patentable. For example, a pure mathematical algorithm is not patentable. However, a mathematical algorithm included in a process used to determine a useful, concrete and tangible result will in most circumstances be considered patentable subject matter. A machine is a device with assembled parts that move to perform a desired operation. A manufacture or article of manufacture is typically regarded as a man-made, tangible object that is not naturally-occurring. A composition of matter is any compound, substance, mixture, etc. that is the result of combining two or more ingredients.
Based on the above definitions, it is no surprise that patentable subject matter has been said to include anything under the sun that is made by man. There are, however, some recognized exceptions including: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
Inventions may often encompass more than one category of patentable subject matter. Accordingly, patents will often have more than one type of claim.
Example : Consider the following hypothetical situation. During product testing of a new battery, a senior engineer discovered that the battery would operate at a cooler temperature, thus reducing the risk of the battery reaching interrupt temperature and improving battery life, if an impurity were introduced into the chemical cells of the battery during manufacture process of the battery. The engineer/inventor decides to patent the invention.
In this example, the engineer may be able to pursue protection for both the battery and the method of making the battery. A patent with product claims may give the inventor broader protection because the claims would give the inventor the right to exclude competitors from making the product according to any method claimed in the patent. Method claims are often desirable because even if the product is not held to be novel, the method of making the product may still be novel.
1.2.2 Utility Requirement
A patent application must also demonstrate that the claimed invention is useful for some purpose to meet the utility requirement. In most technical fields, this utility requirement has a low threshold easily satisfied by demonstrating any useful result. For a patented invention to fail to satisfy the utility requirement it must be totally incapable of achieving a useful result, which is rare in applications for processes, machines, and articles of manufacture.
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